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 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 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 Tue, Jun 01, 2010 @ 09:30 AM
IT Improvements
On May 5, 2010, USPTO director David J. Kappos testified before the Senate Judiciary Committee to discuss the USPTO's operations, programs and initiatives. In line with the USPTO's goal of increasing efficiency and reducing the average pendency for a patent application, Director Kappos focused, in part, on expanding and improving the IT infrastructure currently in place at the patent office.
Specifically, Director Kappos proposed an end-to-end system for the electronic processing of patent and trademark applications. The proposal calls for a system that will function independently of the current outdated system, thus allowing its design to be driven by the needs of the stakeholders and the desire to reach an efficient end product. More details can be found on page 10 of the prepared statement of Director Kappos to the Senate Judiciary Committee.
Quid Pro Quo for Reducing Backlog
The USPTO also announced the expansion of its "Project Exchange" program, which should take effect in the coming weeks following its publication in the Federal Register. At present, the Project Exchange program allows small entity applicants to receive expedited examination of one application in exchange for the withdrawal of another unexamined application.
With hopes of reducing the immense backlog currently clogging the USPTO, the Project Exchange program will now be open to all applicants. Greater detail on the expanded Project Exchange program can be found in the USPTO's press release. How many applicants take advantage of this program, and how successful it is in reducing the pendency of applications, remains to be seen.
If you would like to bump up examination for a certain application in exchange for abandoning an unwanted application, our US agents would be happy to provide you with further information on the Project Exchange program - just let us know at mail@inoviaip.com.
Posted by Elizabeth Golluscio on Fri, May 07, 2010 @ 09:01 AM
We are pleased to welcome the law firm of Arnason Faktor as our new Icelandic agent, expanding our global agent network to 63 countries now.
Sigurour Ingvarsson of Arnason Faktor said, "We are delighted to join the inovia network and help promote global patent protection into and from Iceland. We support both domestic and international clients with a range of IP-related consulting services and business development."
Arnason Faktor, established in 1969, is the largest IP consultancy firm in Iceland and has been ranked the top patent firm in Iceland by Managing Intellectual Property magazine. They specialize primarily in drafting and prosecution of IP rights for both the international business community and domestic clients requiring local and international IP services.
You can visit them online at Arnason Faktor.
Posted by Jeff Shieh on Wed, May 05, 2010 @ 12:36 PM
We have previously blogged about the emergence of China as a leader in patent filings. Recently, 28 members of the Ministerial Joint Meeting on National Intellectual Property enacted the 2010 National Intellectual Property Rights (IPR) Strategy Implementation Plan, which went into effect on March 26, 2010. Serving as a guide for China's IP protection program, the 2010 Implementation Plan focuses on the following objectives:
Elevating IPR creation capability
Spurring IPR transformation and utilization
Quickening IPR legal system construction
Raising IPR law enforcement levels
Enhancing IPR administrative management
Exploiting IPR agency service
Strengthening IPR talent construction
Boosting IPR cultural building
Enlarging IPR foreign exchange cooperation
Further details regarding the 2010 Implementation Plan can be found on the China IPR website.
On a related note, April 1, 2010 marked the 25th year since the birth of the Chinese Patent Law. In those 25 years, the Chinese Intellectual Property Office has received 5.95 million applications and granted over 3.17 million patents. We at inovia wish it a belated 25th birthday (and many more to come)!
Posted by Jeff Shieh on Mon, Apr 05, 2010 @ 11:41 AM
It seems that the deferred examination fee policy currently in effect in the Japanese Patent Office has caught the attention of the USPTO. The USPTO has just proposed a similar change that would effectively provide a 12-month extension to the provisional patent application period.
Currently, a nonprovisional application can be filed without filing fees or an executed oath or declaration. The applicant subsequently receives a Notice of Missing Parts of Nonprovisional Application requiring payment of the filing fees and submission of the executed oath or declaration.
Under the proposed change, the applicant would be permitted to file a nonprovisional application containing at least one claim within the 12-month statutory period after the filing of the provisional application, pay the basic filing fee ($330), and submit an executed oath or declaration. The application would need to be in condition for publication and the applicant would not be able to file a nonpublication request. The applicant would then receive a Notice of Missing Parts with a 12-month-from-filing deadline, at which point the applicant would pay the outstanding search and examination fees ($760) along with any excess claim fees, and a surcharge.
The benefits of this change are three-fold:
The deferred search and examination fees would grant the applicant additional time to "test the market" before deciding to continue with prosecution.
Applications which applicants decide not to prosecute are removed from the USPTO's workload
The public benefits by the increase in applications that enter the pool of prior art.
This proposed change is currently open for comment until June 1, 2010. Then it's a matter of if and when it gets implemented.
Posted by Jeff Shieh on Wed, Mar 31, 2010 @ 12:50 PM
As one of the largest filers of PCT national stage applications in the world, inovia often observes firsthand global trends occurring in the foreign filing industry. One noteworthy development in the past decade is the emergence of China as both a major source and destination for patent applications. For instance, China was the top national stage entry country in 2009 among our clients, surpassing Europe for the first time in our history.
Why File in China?
This is a common question we field from our clients. After all, applicants have historically associated China (and by extention perhaps other BRIC countries) with lax IP law enforcement, and many wonder whether patent protection there is worth the expense of its pursuit.
To aid in changing this global perception, China passed the Third Amendment to Chinese Patent law, effective October 1, 2009. The Third Amendment significantly strengthens protection of patent rights, including increasing infringement penalties, granting officials the authority to conduct investigations and patent infringement raids, and establishing an evidence preservation system. These new laws, along with the recognition of China as a commercial and industrial behemoth, help explain the surge of applicants seeking patent protection in China, even during these troubling economic times.
Increased Patent Applications Originating from China
Increased awareness of the need for IP protection and an environment fostering innovation will also designate China as a leading source of patent applications. In 2008, the top PCT patent filer worldwide was Huawei Technologies, a Chinese telecommunications company, with 1,737 applications. The next year, they were surpassed by another Chinese telecommunications manufacturer, ZTE Corporation, which filed 1,164 applications. Coincidentally, the one millionth PCT application was one filed by a Chinese corporation. Needless to say, we expect China's PCT momentum will only continue for the coming years.
Posted by Jeff Sweetman on Fri, Mar 26, 2010 @ 10:48 AM
In view of the high excess claims fees that apply to European applications, it's common for PCT applicants to reduce the number of claims on file at regional phase entry to Europe.
In the past, the EPO has taken a surprisingly (in my view) laissez faire approach to the format of such claim amendments. Simply submitting replacement pages with the regional phase entry documentation was generally sufficient.
It's always been desirable to show the nature and location of any amendments being made at regional phase entry. However, it's about to become compulsory to do this.
If the amendments are just claim deletions (presumably for the purpose of fee reduction) then it's acceptable to provide a marked-up copy showing the deletions and claim renumbering, along with a clean copy of the final version. For the marked-up version, most applicants use some form of "track changes" feature in their word-processing software, such that additions are underlined and deletions struck out.
If the features of certain claims are being combined, it will also be necessary to provide a summary of how the new claims relate to the old claims.
And finally, if subject matter from the description is being newly imported to the claims, it will be necessary to explicitly point out where the new claim language is supported in the detailed description.
A couple of other points to note:
The official fee for excess claims in Europe is €200 per claim after the 15th, and €500 per claim after the 50th. It therefore often makes sense to rationalize claims if there are many more than about 15 of them and costs are an issue.
It's worth remembering that the EPO allows multiple dependencies, and dependencies aren't counted for the purpose of claim calculations. No matter how many claims a particular claim refers to, it only incurs a single claim fee for the purposes of excess claims calculations.
As well as amending claims to reduce official fees, it may also be worth taking the opportunity to take into account the EPO's new approach to multiple claims in each claim category (we'll be posting more about this early next week).
Please feel free to contact us if you need more information about these (or any other) EPO rule changes.
Posted by Jeff Sweetman on Thu, Feb 25, 2010 @ 10:33 AM
We get this question fairly often.
Sometimes clients (even experienced patent attorneys) make the mistake of assuming the EPO is simply the patent office that caters to the countries of "Europe". It's actually a bit more complicated than that.
Without any additional context, the word "Europe" is generally used as shorthand for the European Union (the "EU"). The EU is a group of 27 member states that form a political and economic union with limited powers delegated to a central European parliament.
However, "Europe" for the purposes of patents is different. The member states of the European Patent Convention (the "EPC") include a number of countries that aren't members of the EU, such as Switzerland and Turkey.
Further complicating things is the fact that new countries are periodically added, either as full members of the EPC, or indirectly by becoming an extension state (extension states will be explained in another posting).
Simply looking up the list of EPO Member States on the EPO's website can potentially be misleading. This is because (for a PCT application) whether a particular country is covered by a European regional phase filing is based on the International Filing Date rather than when the regional phase is entered.
Interestingly, the Norwegian patent office experienced an unexpected fall-off in national phase filings immediately after 1 January 2008 when it became a member state of the EPC. Maybe it was the financial crisis that was in full swing by that time, but it's also possible some applicants made an incorrect assumption about Norway being included in all European regional phase filings after 1 January 2008.
So, what's the easiest way to determine whether a particular country will be included in a European regional phase application from a particular PCT application?
Look at the PCT bibliographic cover sheet, and find the field headed "(84) Designated States". After the word European, there is a bracketed list of country codes. This is the list of countries that will be covered by a European filing coming from this PCT application. If you don't already know it, look up the country code for the country of interest, and see whether it's in that list.