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 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 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 Elizabeth Golluscio on Mon, May 24, 2010 @ 11:20 AM
As we alluded to in our last blog post, the cost of translation work can be a crippling factor when it comes to seeking patent protection. When looking to outsource your translation work, you should remember that translating your claims is just as important as drafting them and should only be left to experts.
Here at inovia, we are pleased to announce iptranslator — our new patent translation product offering to support foreign filing.
What sets us apart from other translation firms is our “double certification” methodology: (1) each patent application is translated by a native speaker who is skilled in the relevant technical field and then (2) the translation is reviewed and approved by a local patent attorney.
Already used in conjunction with our PCT national phase entry and European validation products, we have been doing expert IP translations for over 8 years and have translated over 20 million words into 41 languages.
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 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 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 Shieh on Thu, Mar 18, 2010 @ 09:29 AM
Overall Decrease in PCT Filings
The World Intellectual Property Organization (WIPO) recently announced its statistics for PCT filings in 2009, and it's clear that international patent filings have not been immune to the global economic downturn.
Overall, the number of PCT filings dropped by 4.5% (155,900 PCTs filed in 2009 vs. 164,000+ in 2008). Additionally, sharper-than-average declines were seen in the number of filings originating from industrialized countries.
Country of Origin
| % Change
|
United States | -11.4 |
Germany | -11.2 |
Israel | -17.2 |
Sweden | -11.3 |
Canada | -11.7 |
Australia | -7.5 |
Italy | -5.8 |
A Silver Lining in Eastern Asia
Despite the current economic climate, several East Asian countries were able to buck the trend and increase their number of filed PCT applications.
Most striking is the 29.7% increase seen in PCT applications originating from China, which has now surpassed France as the 5th largest PCT filer.
Smaller increases in PCT filings were observed in Japan and South Korea (3.6% increase and 2.1% increase, respectively), though in today's economy, any growth at all is a refreshing departure from the norm.
Additionally, 6 of the top 10 PCT applicants are corporations based in one of these three countries.
Forecast for the Future
Insofar as patent filings are linked to the global economic state, it appears that at the very least, companies and individuals have been, and will continue be, examining their inventions with greater scrutiny in terms of marketability and profitability. The present economic climate has challenged applicants to reconsider the notion that filing foreign patents through traditional channels is the only option.
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.