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 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 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 Tue, May 18, 2010 @ 09:52 AM
With IP budgets experiencing significant cutbacks in the last year, many applicants have struggled to maintain the same level of global protection they were able to achieve in “fatter” times. As a result, many applicants must grudgingly reduce the number of countries selected for national stage entry for their PCT applications.
In many countries, translation of the PCT application is a major component of the cost for national stage entry. As such, translation costs certainly play a key role when applicants decide where to seek patent protection.
Aside from outsourcing your translation work, another tip for stretching your IP budget is to file in countries which use the same translation. For example (assuming an English specification), the translation into Spanish required to enter into Mexico can also be used for entry into Colombia and other Spanish-speaking South and Latin American countries.
Similarly, a Chinese translation prepared for use with a Taiwanese filing can often be used as a basis for the translation needed for China (though note that Taiwan is not a PCT country, so the translation would have been prepared earlier for direct filing there, often at the same time the PCT was lodged).
Given that translation costs can run into the thousands of dollars, applicants exercising this strategy can realize significant savings, albeit in narrow country combinations. Especially in today’s economic climate, every little bit counts!
Posted by Elizabeth Golluscio on Wed, Apr 14, 2010 @ 11:50 AM
Our survey results are in!
And it looks like belts have been tightened as far as they will go... with IP budgets now stabilizing for 2010. 72% of respondents (US companies, primarily small to medium-sized enterprises) plan to maintain or increase foreign patent filings for 2010. This is a bit of bright news after a difficult year: over 40% of respondents filed fewer patent applications in 2009 as compared to 2008, according to our survey results.
Other key findings include:
For those who did reduce foreign patenting costs in 2009, the measure most cited was to reduce the number of foreign countries entered. Specifically, the average was 6.6 countries in 2008 and 6.3 countries planned for 2010.
Of course at inovia we know foreign filing can be costly, but filing less is not the only solution! (The phrase "cutting off your nose to spite your face" comes to mind...) Run our PCT calculator for an fast and accurate estimate.
From here you can download the complete, 6-page report.
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.