Posts in International

Two American scientists have been nominated for the European Inventor Award (EIA), which is presented annually by the European Patent Office (EPO) to outstanding inventors for their contribution to technological, social and economic progress. The winners of the 2012 EIA will be announced during an award ceremony in Copenhagen on June 14th. Prof. Federico Capasso created an entirely new class of semiconductor lasers, called Quantum Cascade Lasers (QCLs). Dr. Stanford Ovshinsky, a leading American scientist in the fields of energy and information, developed clean-energy NiMH batteries.

Munich/Geneva, 3 May 2012 — With the aim of further developing the international patent system to better support innovation in economies around the globe, the European Patent Office (EPO) and the World Intellectual Property Organization (WIPO) have agreed on a comprehensive three-year technical co-operation scheme. The agreement, signed by EPO President Benoît Battistelli and WIPO Director General Francis Gurry in Munich…

There is no such thing as a world-wide patent, although there is something that approximates a world-wide patent application that can result in a patent being obtained in most countries around the world. This patent application is known as an International Patent Application, or simply an International Application. The international treaty that authorizes the filing of a single patent application to be treated as a patent application in countries around the world is the Patent Cooperation Treaty, most commonly referred to as the PCT. You can file an International Application pursuant to the rules of the PCT and that application will effectively act as a world-wide patent application, or at least a patent application in all of those countries that have ratified the PCT, which is virtually all of the countries where you would want a patent anyway.

The report shows that the mood for 2011 was cautiously optimistic compared to previous years, with fewer organizations experiencing budget reductions and a greater percentage of IP tasks going in-house or being outsourced in order to reduce costs and retain control. This year saw less than half of those surveyed working on a reduced IP budget going into 2012, compared to nearly two-thirds of respondents in last year’s survey. However, the bulk of respondents don’t expect to increase the number of patent families filed in 2012, indicating the persistence of a “do-more-with-less” attitude as the economy slowly recovers.

The thing that struck me most from these survey results was the superiority of USPTO searches. I’m sure you have heard the same criticisms and joking that I have. Many, particularly Europeans, love to criticize and even make fun of the searches done by the USPTO. If anything these survey results suggest that the USPTO does a better search than is done in the UKIPO. After all, under UKIPO practice, examiners only cite extra documents if they are more relevant than those already found by the UK search. So when they rely on US references that means they must have been more relevant than what they found. So much for the alleged inferiority of USPTO searches.

The United States Patent and Trademark Office (USPTO) and Hungarian Intellectual Property Office (HIPO) signed a Memorandum of Understanding making permanent the Patent Prosecution Highway (PPH) program between the two offices and setting forth the common desire to implement further developments of the PPH program during a high level event in Budapest honoring Hungarian inventors and innovative companies.

As far as I can tell none of these goals is forwarded by the sale of computers to North Korea. Sure, North Korea is the exact type of country that WIPO has historically sought to help. Not because they are a rogue nation, aspire to have a clandestine nuclear program or because they support terrorism, but rather because the people of North Korea suffer so much and there is so little economic activity that it is misleading to even call what they have an economy. Such horribly mismanaged countries is where WIPO has done its best work, to encourage the adoption and respect of IP rights, which leads to international investment and economic development.

An exhibition showing the intellectual property (IP) behind Steve Jobs’ innovations opens to the public at WIPO on March 30, 2012 and will run through to World Intellectual Property Day on April 26, 2012. The exhibition ties in with this year’s World Intellectual Property Day theme – Visionary Innovators.

The university panelists then discussed IP portfolio strategy and their recommendations for evaluating international patenting, as well as their tips for keeping costs down. Susanne Hollinger advised TTOs against applying blanket rules to their international patenting decisions, such as “we only file if we have a licensee.” International filing has been an important part of Emory’s strategy, as more than half of their royalty money comes from technologies filed internationally, and they make international filing decisions on a case-by-case basis.

It is with great interest that we at Sentry IP read the report the United States Patent and Trademark Office made to Congress earlier this year on “International Patent Protections For Small Businesses”. The USPTO’s report highlighted the link between the ability of small US businesses to secure international patent protection and the availability to these businesses of a number of commercial advantages, such as attracting investor capital and accessing foreign markets by means of licensing, franchising and exporting. Research suggests that these advantages are directly related to the general economic health of the USA, with improved levels of manufacturing and production leading to job creation.

Despite difficult economic conditions worldwide, international patent filings under the WIPO-administered Patent Cooperation Treaty (PCT) set a new record in 2011 with 181,900 applications – a growth of 10.7% when compared with 2010, and the fastest growth since 2005. China, Japan and the United States accounted for 82% of the total growth, and the Chinese telecommunications company ZTE Corporation was the largest filer of PCT applications in 2011. 2011 also saw the highest number of international trademark applications ever filed under WIPO’s Madrid System for the International Registration of Marks (“Madrid system”) with 42,270 applications, or a 6.5 % increase compared to 2010.

A conversation with Matthew Bryan, who is the Director of the PCT Legal Division at the World Intellectual Property Organization (WIPO) regarding what WIPO is doing to combat patent schemes that plague the industry. As you will see, these schemes are lucrative. In one case that Bryan tells us about, in which he was an expert witness, a court in Florida “found that in the 2 years of operating, FIPTR had received over 2.5 million dollars in payments from PCT users just in the State of Florida.” With that kind of money potential it is easy to see why the scams persist.

This lawsuit could set a precedent in Israeli copyright laws concerning television formats and could reveal behind-the-scenes industry secrets. The Israeli Copyright Law 2007 does not provide copyright protection for an idea, but only its expression. As for TV formats, Israeli Courts have yet to regulate this issue and have not set a binding precedent in this matter.

On January 12, 2012, the Internet Corporation for Assigned Names and Numbers, more commonly known simply as ICANN, began accepting applications for new gTLDs. Until March 29, 2011, entrepreneurs, businesses, governments and communities around the world can apply to introduce and operate a generic Top-Level Domain of their own choosing. Currently there are approximately two dozen gTLDs, but as the result of ICANN’s decision to expand the number of gTLDs there could be hundreds in the not too distant future.

Indeed, competing globally is a prerequisite to success for most companies in what is an ever increasingly global marketplace. To compete globally American firms engage in licensing, franchising, or exporting. For many small companies it is patent protection that provides the only means to obtain an advantage over established industry leaders. Patent protection prevents established industry leaders from simply copying new innovations, and aids small businesses and start-ups in attracting investor capital needed to grow, build market share, and create jobs. Unfortunately, small companies face significant financial challenges in acquiring, maintaining, and enforcing patents outside the United States. What they need is a strategy to lay the foundation for foreign rights, building off a credible and appropriate U.S. patent filing.