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 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 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, 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 Tue, May 25, 2010 @ 10:51 AM
We are pleased to announce our new office in Munich, Germany and the appointment of Wolfgang Danner as Senior Director, Business Development.
“Germany files more PCT applications than any other country in Europe – 15,000/year, which is on par with the US per capita,” said David Nelson, CEO of inovia. “We are delighted to have Wolfgang Danner, an experienced and respected IP industry executive, spearhead our presence and help bring inovia’s foreign filing efficiencies to the German market.”
Danner comes to inovia from Dennemeyer & Co., where he was Global Head of Sales and Marketing. He had previously co-founded IPAN, setting up their global partner network as its Head of Sales and Marketing. He also held a senior sales role at CPA Global and brings to inovia 25 years of experience in Sales management and the Intellectual Property (IP) field.
"I am happy to see further expansion into our national market," said Wolfgang Danner. "I look forward to working with inovia - and Fleuchaus & Gallo, our German associates - to offer both German and pan-European patent applicants our foreign filing products so they can cost-effectively take their innovations to the world."
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.