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 Shieh on Thu, Mar 25, 2010 @ 04:13 PM
Proposed Changes in the USPTO
In 2009, the USPTO faced both an 8% budget decrease from the previous year ($1.43 billion vs. $1.31 billion) and the pressure of reducing an ever-growing backlog of applications.
In response, the USPTO has three proposed plans to increase its funding.
a 15% increase for nearly all fees,
allow the USPTO to set its own fees, and
allow the USPTO to retain and spend all its collected fees even if it is over-budget, rather than diverting a portion to the general budget.
Currently, these proposed plans are set forth in President Obama's $2.3 billion budget request for the U.S. Patent Office for the 2011 fiscal year.
Deferred Examination Fee Payment at the JPO
In contrast to the USPTO's proposed fee increase plans for 2011, the Japanese Patent Office has instituted a policy which delays the initial financial impact for patent applicants. Aimed at increasing the number of patent applications filed during this time of economic distress, applicants now have the option of filing a request to defer payment of the examination fee by a period of one year. Since examination fees in the Japanese Patent Office can average well over $2000 US, many applicants are embracing this opportunity to avoid payment, at least for the time being.
This new policy went into effect on April 1, 2009 and applies to all applications with examination fees due up to March 31, 2011. Furthermore, payment of the deferred examination fee is not required should the applicant choose to abandon the application during this initial year.
So What's Next?
So far, it appears that Japan's deferred exam fee policy measure, at least in part, has stimulated the number of patent filings in the JPO. While nearly all other countries have observed decreases in patent filings in the last year, applications filed in the JPO have increased by 3.6% since 2008. But will this growth continue through the policy's final year?
As for the proposed USPTO changes, whether or not they will be able to increase revenue remains to be seen. It has been suggested that any potential increase in revenue based on higher fees would actually be negated by a decrease in filed applications and continued prosecution. As an unspoken side benefit, increased fees would likely reduce the backlog of pending cases, as fewer applications are filed and pending cases are abandoned. However, the benefit of reducing backlog through higher fees (rather than through improving efficiency and hiring more Examiners, which is also proposed) is questionable, at best.
Needless to say, the next few years should be interesting as patent offices around the world struggle to balance the need to increase their revenue and efficiency with their duty to encourage patent filing and foster innovation.
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.