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 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 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 Tue, Mar 09, 2010 @ 10:40 AM
We recently gave a brief summary of the impending 1 April 2010 changes to European rules.
New Rule 62A: Independent Claims
Today, we're going to go into a little more detail about the changes to management of independent claims in Europe under the new regime.
Current practice
Under current European practice, typically only one independent claim is allowed in each claim category (apparatus, method, etc).
However, there are some exceptions:
Inter-related items (for example, a plug and socket; gene, gene construct, host, protein, medicament; intermediate and final chemical product).
Multiple different inventive uses of a product or device (for example, different second or further medical uses).
Examples of alternative solutions to a problem (for example, groups of chemical compounds; two or more processes for manufacturing a compound).
At the moment, the EPO searches all claims, and then raises an objection during examination if it is considered there are too many independent claims in each category.
Under new Rule 62a:
The EPO will no longer search all independent claims in each category. Instead, the new procedure will be to invite the applicant to select which claim in each category should be searched (and therefore examined).
The subject matter of the remaining independent claims may need to be made the subject of a divisional application if it cannot successfully be argued that an exception (such as one of those listed above) is appropriate.
If no claim is selected, the EPO will automatically search only the first claim in each category.
Which applications are affected?
For various technical reasons, the new rules will only affect cases where the International Search Report was not prepared by the EPO.
The rule applies to all applications where the European search report issues after 1 April 2010.
What needs to be done?
For PCT applicants entering the regional phase in Europe, there is an opportunity to amend the European claims either at regional phase entry, or following issuance of a rule 161 communication (we'll post about that soon). This is the last opportunity to get the most appropriate claims on file before the search process begins.
Need more information?
Our European agents, Kilburn & Strode, have prepared briefing papers summarising the main impending changes to European practice. The papers can be downloaded from their website.
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.
Posted by Jeff Sweetman on Mon, Feb 08, 2010 @ 03:27 PM
As you may know, the EPO generally implements fee and procedural changes on 1 April each year. I like to think of it as their way of making sure everyone has a little fun every April Fools' Day.
This year there are a number of important procedural changes that will apply to PCT applications entering the European regional phase from 1 April 2010.
We will soon provide greater detail about the changes, but in the meantime, important points to note include:
If the EPO was the International Search Authority (ISA), it will be compulsory for applicants to submit a response addressing the ISR and written opinion. The deadline for doing this is typically only a few weeks after regional phase entry, so applicants will need to act quickly.
We'll soon be posting in detail about these points, but please let us know if you have any specific questions in the meantime.