Posts in International

The UK Intellectual Property Office (UK IPO) characterizes it as misleading, warning “don’t be misled.” The European Patent Office (EPO) calls it deceitful, characterizing it as “subterfuge,” and further pointing out that “their services have no legal effect whatsoever.” The World Intellectual Property Organization (WIPO) says that they are “unrelated to the processing of international applications.” Yet many continue to believe that the nefarious and seemingly ubiquitous solicitations sent to patent applicants and owners are official invoices that must be paid in order to continue to move forward with an international patent application or foreign patent application.

The third annual U.S. IP Trends Survey, sponsored by inovia, is now open for U.S. patentees and your input is needed to make the survey a success. The results of the survey will provide an in-depth look at the global outlook and foreign filing strategy of U.S. companies and universities. It is anticipated that the survey will take only between five to fifteen minutes to complete, and responses will remain strictly confidential. Only aggregate, anonymous information will be made public. Click here to take the survey.

To all those who can read the Constitution it has to be clear that the Supreme Court’s decision in Golan v. Holder is absurd. It is a ridiculous decision that lacks intellectual honesty and defies common sense. Further, the facts of this case provide ample ground for the suspicions of many who wonder why it is that the United States is so interested in losing its identity and compromising Constitutional principles in order to facilitate some ill conceived plan to join the world community. Simply stated, treaties and international law cannot trump the Constitution. With all due respect to the six Justices who ruled in favor of stripping works from the public domain, the Constitution does not support this decision and any attempts to argue to the contrary are insulting and show a contemptuous understanding of the history and role of intellectual property in America.

At his speech at the U.S. Chamber of Commerce, Commerce Secretary Bryson outlined his top three priorities to help American businesses “build it here and sell it everywhere,” focusing on supporting advanced manufacturing, increasing our exports, and attracting more investment to America from all over the world. The key to emerging from the Great Recession is, of course, manufacturing. Manufacturing jobs have left the U.S. in favor of more business friendly climates in other countries, taking with them U.S. jobs and U.S. intellectual property. But moving into a Presidential election year will government be able to do anything that is at all likely to help?

The question, however, is whether this increased inventive activity is sustainable in light of the overwhelming backlogs faced by Patent Offices around the world. It is great to have a lot of inventive activity and interest in obtaining patents. That shows that there is increased interest in business activities because few, if any, pursue a patent for the sole purpose of obtaining a patent. There is almost universally some business goal with associated hopes, dreams and potential positive impact for the economy. Whether this increased innovative activity can and will be something that produces an associated economic boon remains to be seen and is largely, if not completely, dependent on the political machinations of those in Washington, DC and other capitals around the world. Talk about a depressing though!

The USPTO always also points out that PPH agreements increase patent quality. That is likely true, but probably not as directly as you might expect. As far as I can tell the benefit to quality comes as the result of primarily three things. First, it takes less time to examine a patent application that has arrived to the Office of Second Filing (OSF) because allowable matter has already been identified somewhere else, which substantially focuses the prosecution of these applications. Second, by requiring less time on some applications there will be more time for other applications, at least in theory. Finally, there is no doubt a self-selection that goes on from the applicants side, which means better patent applications, and the overwhelming number of those using the PPH accept the claims they get and do not circle back for more claims, or broader claims, with supplemental filings.

1.3 billion people simply cannot be ignored, that much is certainly true. In my experience, however, when potentially ridiculous sums of money are at issue people, including otherwise shrewd business executives, suddenly seem to lose double digit points off their IQ. Believing that you can successfully navigate the potentially treacherous waters of doing business with China without careful planning and competent, experienced counsel is simply naive.

Many people situated variously within and outside of the patent system of the United States urged the adoption of first-to-file. There are, however, many questions about the scope and possible impact of the AIA. Exactly how it will all play out remains to be seen. A significant question is what will be the likely impact of the AIA upon the operations of the USPTO, an organization that has been so greatly over-burdened in recent times. Anyone interested in reading this is likely old enough to have heard the old saying “Be careful what you wish for – you may get it.” Now we have it.

In view of the growing need for innovator companies to obtain patent protection in multiple Patent Office around the world simultaneously, leaders of the most heavily used patent regimes continue to seek ways to streamline the process and engage in work sharing. Heads of the European Patent Office (EPO), the Japan Patent Office (JPO) and the United States Patent and Trademark Office (USPTO) – collectively known as the Trilateral Offices – pushed forward earlier this week with efforts to further harmonize global patent systems. The Trilateral Offices agreed on steps to enhance efficiency in patent-related procedures.

Under the Paris Route PPH pilot program, an Office of Second Filing (OSF) may utilize the search and examination results of a national application filed in the Office of First Filing (OFF) in a corresponding application filed under the Paris Convention in the OSF. The PCT-PPH pilot program will use positive international written opinions and international preliminary examination reports developed within the framework of the Patent Cooperation Treaty.

As the second largest economy in the world, China is emerging to the center of the world’s economic stage. This emergence has been accompanied by constant changes in its legal and economic sectors. The intellectual property sector also has witnessed numerous recent changes. There have been significant new advances in China’s national innovation policies. New trends in Chinese patent filings have emerged. A growing number of Chinese companies are creating their own IP and increasingly filing infringement suits against foreign companies and their local competitors in China. China’s third patent law amendment has materially changed patent practice and procedures in that country.

The appeal of the PCT process is that it enables patent applicants to file a single patent application and have that single, uniform patent application be treated as an initial application for patent in any Member Country. This single, uniform patent application is what is referred to as the international application. Filing an international patent application to start the patent process can frequently be a wise move if you are contemplating securing patent rights in multiple countries. It is, however, important to understand that obtaining international patent protection is not cheap. It is also important to understand that the international patent application you file will not mature into an international patent.

The United States Patent and Trademark Office (USPTO) released two Federal Register Notices on October 7, 2011, seeking written comments and announcing two public hearings for two studies the agency is required to conduct under the America Invents Act. Specifically, Congress is requiring the USPTO to study and report on the availability of prior user rights in foreign countries as well as options to aid small businesses and independent inventors in securing patent protection for their inventions. The USPTO reports for both studies are due in mid-January 2012.

A PCT application doesn’t automatically lead to global patent protection. Instead, you eventually need to apply for patents in each of the countries and regions where you wish to pursue patent protection. This involves filing separate applications at the “national stage”, which occurs 30 months (31 months in some countries) after the priority application’s filing date.

Hardly a month passes without there being yet another Patent Prosecution Highway (PPH) announcement from the United States Patent and Trademark Office. The PPH is lauded by the USPTO with great frequency, and for good reason. But what exactly is the PPH and how do you use it to your benefit? Through the end of June 2011 there have been only 6,657 PPH requests, with upwards of 40,000 registered and practicing patent attorneys or agents in the United States, which means there is not a lot of collective experience with the PPH despite the obvious advantages.