Posted by Jeff Shieh on Thu, Sep 02, 2010 @ 03:59 PM
The USPTO and the Federal Service for Intellectual Property, Patents and Trademarks of the Russian Federation (ROSPATENT) have announced the creation of a Patent Prosecution Highway (PPH) pilot program. The program commenced yesterday and will be in effect for one year.
Like the other PPH programs currently in place, an applicant receiving a favorable ruling from one nation's patent office on at least one claim may request that a corresponding application filed with the other nation be fast tracked for examination. The USPTO requirements for participation in this program can be found here.
Further information on the PPH can be found in our other blog posts here.
Posted by Jeff Shieh on Wed, Aug 25, 2010 @ 01:16 PM
Dr. Michael Blaine Brooks, of the Law Office of Michael Blaine Brooks, delivered a presentation on “Advancing US Cases via the PCT-Patent Prosecution Highway” to the Ventura County (CA) Bar Association last week. He was kind enough to share the material with us and we are pleased to have him author an article for the foreign filing blog this week.
Two very helpful things were announced this summer by the USPTO: (1) as of May 25, 2010, the petition fee for the Patent Prosecution Highway (PPH) was waived, and (2) as of June 1, 2010, the PCT Patent Prosecution Highway (PCT-PPH) includes the Korean Intellectual Property Office (KIPO).
This is good news. Now, an International Search Report (ISR) and written opinion that finds one or more claims of a PCT "international" application patentable can be used to advance a US counterpart non-provisional application in the USPTO’s examination queue.
However, there are a couple of restrictions:
(a) the claims of the US non-provisional patent application must correspond to, or be narrower than, the claims found patentable in the PCT application.
(b) the PCT International Search Authority (ISA) must be the European Patent Office (EPO), KIPO, or the Japanese Patent Office (JPO).
Presently, KIPO is selected as the ISA in about 30% of PCT applications originating from the US. In addition, KIPO is the least expensive ISA available to US PCT applicants. Moreover, it is fully competent to search all classes of US statutory subject matter (in distinction to the EPO, which won’t search in classes such as those relating to business methods and certain types of software).
Unlike the USPTO and EPO (at times), KIPO also provides relatively timely ISRs. Applicants can expect a search report and written (patentability) opinion either: nine months from the filing of the PCT application without a Paris Convention priority document; or within about sixteen months of the PCT application's earliest Paris Convention priority date.
If only a subset of the PCT application’s claims are found patentable by the EPO, JPO, or KIPO as the ISA, the US practitioner may consider conforming a previously filed counterpart US application via a preliminary amendment before filing the PCT-PPH request. A PCT Chapter II demand could be filed with amended claims, but the international preliminary examination report for the PCT-PPH request may not be available until 28 months from the PCT application’s Paris Convention priority date.
The US practitioner should be mindful that "102(e)-like" references are not used in determining PCT patentability (although they may be specifically mentioned in the search report), and means-plus-function claims will be read more broadly by PCT examiners than those at the USPTO. So, while the PCT application extends prospective international patent rights and the PPH provides a process for advancing a corresponding US application, the PCT-PPH advancement process is not a full faith and credit process of US claim allowance. That is, a favorable ruling of patentability for at least one claim of the PCT application does not provide a basis for automatic allowance of the corresponding US case.
Michael Blaine Brooks, PhD, PE(EE), holds his JD from Pepperdine University School of Law and BS, MS & PhD degrees in engineering from UCLA. Dr. Brooks actively participates in furthering excellence in intellectual property practice as Adjunct Professor of Patent Law at Pepperdine, and a member of the Ventura County and the San Fernando Valley Bar Associations. He heads a private intellectual property law firm in the Greater Los Angeles area. (http://www.brooksiplaw.com/)
Click here to read other blog articles on the PPH.
Posted by Elizabeth Golluscio on Fri, Aug 13, 2010 @ 01:40 PM
Last week inovia had the opportunity to participate in an audioconference sponsored by Technology Transfer Tactics entitled: International Patenting Strategies – Cost-Effectively Expand Your Market and Boost Your TTO’s Revenues.
During the 90-program, Jeff Sweetman, Head of Professional Services and a Patent Attorney at inovia, gave an overview of the PCT and European validation processes, shared foreign filing best practices, and highlighted results from inovia’s 2010 U.S. IP Trends Report. Susanne Hollinger, Ph.D., J.D. of Emory University then shared insights from the university perspective, including an overview of Emory’s patent filing practices and a discussion on licensee issues.
The program is now available for download on the Technology Transfer Tactics website. Click here for more information.
Posted by Jeff Shieh on Tue, Aug 03, 2010 @ 10:41 AM
I had the honor of speaking at the NAPP Annual Meeting recently.
My presentation focused on foreign filing best practices and ways to ensure that your US approach would not undermine your global patent opportunities. One attendee asked a question which I feel would be of interest to our blog subscribers.
A portion of my presentation discussed the strategy of introducing multiple dependent claims at the PCT national stage as a way of reducing excess claim fees in foreign countries. As you may know, in all countries except the US, multiple dependent claims are counted as only a single claim, and it’s possible to have nested multiple dependencies. Therefore, claims in multiple dependent form can sometimes be a useful tool in reducing claim fees while maintaining the scope of the claims.
The question that arose was why an applicant would choose to enter claims in multiple dependent form at the 30 or 31 month date rather than including them in the initial priority or PCT application.
In our experience, a decent proportion of US attorneys don’t even think about multiple dependent claims when drafting the initial application. Often, the client is not sure whether they want to enter the international arena anyway, so their attorneys tend to tailor the application with US filing and prosecution in mind.
Accordingly, I focused my presentation on the idea of amending claims to include multiple dependencies at national phase entry outside the US.
However, it’s definitely worth considering whether including multiple dependencies when initially filing the PCT application might reduce your client’s costs in the long run. If it’s likely the application will enter the national phase in several countries, it’s easier to start with multiple dependencies because you don’t need to then introduce them to each and every country (often at additional cost) during national phase entry or prosecution.
Even if you need to enter the national phase in the US, the cost of amending once to go back to single dependency form at US national phase entry is most likely outweighed by the savings in time and foreign attorneys’ fees in other countries that can use the multiple dependencies as filed with the PCT.
Of course, before you start taking this approach, you must be sure you understand how multiple dependencies work, including their advantages and disadvantages. In practical terms, sometimes it’s easier to start with a single dependency approach then add in multiple dependencies after the claims are drafted, but sometimes it works better the other way.
However, sensibly used in the right circumstances, multiple dependencies are a great way of increasing the scope-to-cost ratio.
Posted by Elizabeth Golluscio on Wed, Jul 28, 2010 @ 10:41 AM
In response to the growth of IP in Africa and client requests, inovia is happy to announce today that Spoor & Fisher has joined our global agent network and will handle our PCT national stage entries into ARIPO. With the addition of this award-winning law firm, inovia is now able to handle PCT national stage entry into 43 countries and regions.
Some quick facts about ARIPO:
- ARIPO stands for African Regional Intellectual Property Organization.
- It was created by the United Nations Economic Commission for Africa (UNECA) and the World Intellectual Property Organization (WIPO) via the Lusaka Agreement on December 9, 1976.
- ARIPO's current 16 member states are: Botswana, Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Namibia, Sierra Leone, Somalia, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe.
- ARIPO is governed by the Harare Protocol for patents, utility models and industrial designs and the Banjul Protocol for trademarks.
- ARIPO may be designated both under the PCT or the Paris Convention.
Further information on ARIPO can be found at www.aripo.org and also on the WIPO website. You can run an estimate of filing into ARIPO with our online PCT calculator.
Posted by Jeff Shieh on Mon, Jul 12, 2010 @ 04:34 PM
Validation costs for granted European applications can easily spiral out of control due to the translations required for many countries at this stage. Translation costs can make up over 75% of the total cost for validation, and as a result, applicants can often only validate in a limited number of Member States.
The London Agreement, which went into effect on May 1, 2008, helps reduce validation costs by easing translation requirements in the signatory countries. However, its benefits only apply to the 15 Member States who are currently participants.
In a bid to further simplify the translation requirements for European patents, European Union Commissioner Michel Barnier recently introduced a proposal that would basically expand the London Agreement to all countries.
Under this proposal, applications would be examined and granted in one of the three official languages (English, French or German). Upon grant, the claims of the patent would need to be translated into the other two official languages. No further translations would be required, except in the case of subsequent legal disputes.
In an example where the applicant wishes to validate in 13 countries, this proposal could potentially reduce overall costs from over €20,000 to about €6,000.
Historically, larger European countries such as Spain and Italy have been unhappy with the idea of their languages being pushed aside in this way. This is a key reason for the London Agreement covering such a limited number of countries. Convincing these countries will therefore be the key to this proposal becoming successful. Whether Commissioner Barnier’s proposal can garner the required unanimous support among non London Agreement Member States remains to be seen.
In the meantime, there other ways to minimize translation costs and maximize European patent protection.
Posted by Elizabeth Golluscio on Thu, Jul 08, 2010 @ 03:56 PM
Our inovia agent in China, AFD China Intellectual Property, has sent us two interesting news updates on patent examination quality and filing of IPR criminal cases:
SIPO survey shows patent examination quality improved
Results of a recent SIPO survey show that patent examination quality in 2009 increased over the prior year in China, by both 'correctness of examination' and 'examination efficiency' measures. Notably, the examination efficiency of PCT applications entering national phase was also assessed: 85.7% of interviewees said the first office action issued by SIPO was received no later than those issued by the US, Japanese or European IP offices.
China lowers threshold for filing IPR criminal cases
On May 18th, new standards on filing and prosecution for 85 kinds of economic criminal cases were issued. It lowered the filing and prosecution standards on intellectual property cases involving infringement of two or more patents, to 100,000+ yuan turnover or 50,000+ yuan illegal gains. It also included a new provision for filing and prosecuting cases of counterfeiting just one patent, with 200,000+ yuan illegal turnover.
As we've previously noted, this is more good news coming from China, showing their desire to strengthen both the SIPO and local IPR measures.
Posted by Jeff Shieh on Thu, Jul 01, 2010 @ 10:38 AM
Looks like we're not the only ones conducting surveys on US IP trends. Researchers at the Berkeley Center for Law & Technology, the University of San Diego Law School and the Georgia Institute of Technology released a paper detailing the results of a 2008 survey where they polled over 1300 start-up companies on their patent strategy; one of the researchers recently commented on some major findings here. The paper in its entirety can be downloaded here. We found the following results to be of particular interest.
Page 1299 lists the motivation of respondents for pursuing patent protection. In order of importance, the reasons cited were to:
Prevent others from copying their products or services;
Improve chances of securing investment;
Improve chances / quality of liquidity (e.g. IPO / acquisition);
Enhance company reputation / product image;
Improve negotiating position with other companies (e.g. cross-licenses);
Prevent patent infringement actions against themselves; and
Obtain licensing revenues.
Based on the above, it's clear that many start-ups rely on patents not just for the obvious purpose of protecting their intellectual property, but also for numerous secondary benefits as well.
The Berkeley poll also asked respondents, taking the scenario where they chose not to patent their last major technology innovation, why they decided not to pursue patent protection. Not surprising given the economic climate, nearly 57% of respondents cited the cost of getting a patent as the deciding factor for not seeking a patent.
This strategy, however, comes with long-term consequences. Companies must remember that patents last for 20 years and letting their right to seek patent protection expire opens the door forever to their competitors.
If costs are a concern, sounder strategies exist which can allow a company to pursue patent protection while minimizing costs.
Posted by Jeff Sweetman on Wed, Jun 23, 2010 @ 10:43 AM
During the week of 14 to 18 June 2010, PCT Member states considered proposals to improve the PCT potential contribution to higher quality and more efficiently granted patents at the national/regional level.
The recommendations that came out of the meeting were based on a WIPO study entitled, "The Need for Improving the Functioning of the PCT System."
Some practical steps endorsed by the meeting's attendees include the development of computer systems that:
At inovia, we are always delighted to see news like this - in line with the general momentum we've seen building towards getting patent offices working smarter together.
Whether it's the ever-expanding Patent Prosecution Highway (PPH) programs or the Vancouver Group (the UK, Canadian and Australian patent offices sharing search and examination outcomes), there's clearly no going back to the days when patent offices worked alone.
Whether any of this will be enough to get backlogs under control is yet to be seen, but at least there seem to be some steps in the right direction.
Posted by Jeff Shieh on Thu, Jun 17, 2010 @ 11:15 AM
Many companies are hesitant about pursuing patent protection in China based on a perception of toothless IP protection and that patents there are not worth the paper they're printed on. After all, this is the country where bootleg and knock-off goods can be found on nearly every street corner.
However, recent data indicates that many of these assumptions may be incorrect (or at least exaggerated).
For starters, it seems China is increasingly recognizing the importance of strong patent enforcement, both to protect its domestic innovations and to encourage foreign investment. In fact, in the last decade, China has replaced the United States as the country with the largest volume of IP litigation.
Additionally, the win ratio of plaintiffs has increased over the past few years, as have average damage awards:
| Year | Win Ratio
| Average Damage Awards
|
| 2008 | 86%
| 91,080 |
| 2007 | 85% | 70,208 |
| 2006 | 83% | 89,809 |
Many applicants worry that Chinese courts will favor domestic parties in litigation - "home field advantage", if you will. However, the data refutes this as well. Median damages in foreign vs. Chinese cases are higher than those awarded in Chinese vs. Chinese cases (117,500 vs. 90,000 respectively). Furthermore, foreign plaintiffs win more patent litigation cases than native plaintiffs (77% vs. 71%, respectively).
Finally, as we've mentioned before, China is increasingly a source of inventive output itself. Year-on-year initial filings by Chinese companies are growing faster than those of just about any other country. China is now in the top five countries for numbers of PCT applications filed, and Chinese telecommunication company HUAWEI TECHNOLOGIES CO., LTD is a strong supporter of the PCT, taking first and second spots for applications filed in 2008 and 2009 respectively.
These numbers illustrate China's recognition of the importance of beefing up its IP protection. In deciding whether to file for patent protection in China, applicants should not only consider the gains China has made in recent years, but the advances it seems almost certain to continue making in the years to come.