Posts in International

Before selling your product outside the United States, you need to take into account the vastly different cultural and market preferences outside the country. As anyone who has ever gone into an international supermarket knows, packaging, taste and product selection can differ greatly from what is available on shelves in the U.S. You need to conduct some market research to ascertain the depth of product demand before making the leap. Some countries may be culturally similar to the United States, and your product would only require minor modifications. Additionally you will need to develop relationships with local distributors, which can be another substantial hurdle to overcome. Before investing millions in manufacturing your product for an international market, you will want to conduct this extensive research.

Sherry Knowles: “If a company identifies a weak patent now, it might file an inter partes review or post grant review at the U.S. Patent Office. Ten years ago I don’t think any of us would have imagined that the best jurisdiction in the world to invalidate a patent would be the United States.”

The Australian Full Federal Court recently handed down its decision in Research Affiliates LLC v Commissioner of Patents. The decision is an important addition to Australian case law concerning the patentability of business methods and software. Judges Kenny, Bennett, and Nicholas ruled that the Appellant’s claimed computer implemented method for generating an index for use in securities trading was unpatentable as an abstract idea. The Court held that “[t]he claimed method in this case clearly involves what may well be an inventive idea, but it is an abstract idea. The specification makes it apparent that any inventive step arises in the creation of the index as information and as a scheme. There is no suggestion in the specification or the claims that any part of the inventive step lies in the computer implementation.

Near the end of her presentation Bartow asked a particularly enlightening question. If China can crackdown so thoroughly on its citizens why couldn’t they crackdown on intellectual property infringement and IP crimes? She explained: “Because it isn’t in their interest.” Bartow explained that in the Chinese view it doesn’t make sense to change their view of intellectual property rights because so many within the country are becoming wealthy as a direct result of widespread intellectual property infringement. Bartow ended by saying that as long as this is the view of intellectual property it will be difficult to attract the companies that they really want to attract.

The new service will allow the USPTO and the SIPO, with appropriate permissions, to obtain electronic copies of priority documents filed with the other office from its electronic records management system at no cost to the applicant. With this new service, applicants will no longer need to obtain and file paper copies of the priority documents; however, they are still responsible for ensuring that priority documents are provided in a timely manner.

Even with the discretionary substantive examination in a utility model patent application, they are generally much easier to obtain and much cheaper to get. There may also be advantages to utility model patents in China. While the fact that they are not substantively examined might make it seem that they would be easier to invalidate, that isn’t the case in reality. Under the Chinese system a maximum of 2 references can be used to fashion an obviousness rejection. “In our industry there is rarely a silver bullet,” Moga explained. It is certainly true that obviousness is the real hurdle to patentability and it is extremely common to see obviousness rejections in the U.S. that weave 3 or more references together to provide the foundation for an obviousness rejection.

On Friday, October 3, 2014, the University of Toledo College of Law will host a one-day seminar titled “Doing Business in China.” One of the goals of Doing Business in China is to refute myths regarding intellectual property protection in China and to provide an attorney or business person sufficient information to begin the risk assessment with respect to whether China represents a good strategic investment for a small-to-mid-size business. A highlight of the program will be a presentation on cross-cultural communication and negotiation for businesses and attorneys who will work with the Chinese counter parts with a discussing on how to avoid miscues and miscommunication.

The latest cooperation between KIPO and the USPTO also achieves the goal of KIPO classifying its patent collection in of the Cooperative Patent Classification system ahead of schedule. Starting January 1, 2015, KIPO will begin classifying its entire new patent collection using CPC.

On the very same day that the U.S. jobs report shows unexpectedly weak growth, the Federal Court of Australia issued a ruling directly opposite to the ruling rendered by the United States Supreme Court relative to gene patents. In Yvonne D’Arcy v. Myriad Genetics, Inc., the Federal Court of Australia ruled that Myriad’s claims to isolated DNA are patentable under the laws of Australia. That is the correct ruling, and it is the ruling the U.S. Supreme Court should have reached in Association of Molecular Pathology v. Myriad Genetics. As the patent eligibility laws of the U.S. become increasingly inhospitable to high-tech innovative businesses we can expect more job losses and worse news for the U.S. economy on the horizon.

To facilitate electronic file sharing between IP offices, such as the sharing relating to the priority document exchange (PDX) program and the program by which U.S. search results are delivered to the European Patent Office (EPO), USPTO is proposing to amend its rules of practice to include a specific provision by which an applicant can authorize the USPTO to give a foreign IP office access to all or part of the file contents of an unpublished U.S. patent application. A change to the rules is required to accomplish this due to the confidential nature of unpublished U.S. patent applications, as set forth in 35 U.S.C. 122.

Very few would argue that broader scope is easier in Asia than in the US. Not surprisingly, this is because the laws and practice are different. The US law entitles an inventor to a patent unless the USPTO carries the burden of showing that the claims lack novelty, are obvious, or lack utility… But no patent laws in Asia are so strongly on the side of the inventor as compared to the US. So oftentimes the practice is that the burden of proof is on the inventor/applicant to show that they deserve a patent. Saying it another way, in the US it is your right to get a patent, while in Europe or Asia it is more like a privilege.

The value of such innovation is best measured through the improved health outcomes for patients. In this context, a few examples from the developing world are even more illustrative. Given that those who most vehemently oppose protection for incremental innovations frequently cite the need for treatments for neglected diseases and maladies of the developing world, it is important to note that many of the treatments that do exist for the world’s most vulnerable populations are themselves incremental innovations. Numerous incremental innovations have resulted in improvements that have specific application to neglected diseases and the maladies of the developing world.

Essentially, innovation patents are 8 year short form patents available in Australia as an alternative, or in parallel with standard, or utility, patents. An innovation patent can be filed on an obvious invention, is hard to invalidate and, when filed as a divisional from a standard patent application, can be infringed from a date before the standard patent application was published.

Canada is not the first country that comes to mind as a threat to U.S. trade. After all, Canada is our largest goods trading partner, with $632 billion in total goods traded bilaterally during 2013. . . Over the last decade U.S. pharmaceutical companies have faced trade challenges in the form of a narrow interpretation of patent eligibility in Canada. Canada’s patent utility provisions are a serious threat to U.S. innovative industries, and therefore are legitimately being raised in NAFTA’s dispute settlement system.

The past decade has seen tremendous growth in design patent filings, increasing from 582,000 in 2004 to over 1,217,000 in 2012 worldwide. In 2012, the 17% growth over the prior year in applications was the highest one year growth seen since reporting started in 2004… President Obama signed the Patent Law Treaties Implementation Act of 2012 into law in December of 2012. With the inclusion of the United States in the Hague system, it can be expected that international filings using the Hague system will continue on an upward trend. Gregoire Bisson, Director of the Hague Registry, was recently quoted stating that the Hague System will grow massively, as South Korea is scheduled to join in July, and “Japan, China, the 10 Asean countries and Russia could join in 2015.”