Posts in International

During my interview with Secretary Locke we spoke about patent reform efforts in the United States Senate, what patent reform might look like from the House of Representatives, his management style and how to motivate individuals to achieve transformative change. Secretary Locke strikes me as a thoughtful person, extremely energetic, motivated to succeed and the type of person we need in government. His CEO-like approach to running the Department of Commerce and in working together with both political appointees and career employees has transformed the Patent Office, and he will be missed. I’m sure he will make an excellent Ambassador, but have to wonder about the future of the Department of Commerce and the Patent Office. Whoever becomes the next Secretary of Commerce has some big shoes to fill.

The survey assesses the impact of the U.S. economy on global IP strategies for 2011, and is available for free to anyone interested in the results. The survey includes a number of interesting findings, including among these are that 88% of respondents say they were in favor of a European Wide Patent System (which isn’t surprising really), only 19% of respondents said they filed fewer patent application in 2010 (which probably contradicts the convention wisdom of many) and 46% of respondents brought work in house in 2010 (which might not bode well for firms heavily leveraged on work from large corporations).

In New Zealand, patents (equivalent to utility patents in the USA), registered designs (viz. US design patent) and trademarks are subject to normal substantive examination processes. Fortunately, due to smaller backlogs and a less bureaucratic system, overseas applications filed into NZ are often examined within a year of filing. Accelerated examination may also be requested with no official fee where applicants need a quicker indication as to the validity of their rights. Further, if you have a corresponding patent right granted in another major patent office, the NZ process can be accelerated assuming the NZ claims are similar to that in the corresponding right.

The gene patents issue had been simmering in Australia for some time, with a Senate Enquiry into the subject having been underway for over a year, but with the Myriad decision in the US, and the Australian litigation, it exploded into the headlines. Within the space of a few months, gene patents became the subject of numerous news articles and opinion pieces (including one by the former leader of the Opposition, and current Shadow Minister for Communications and Broadband, Malcolm Turnbull), and a major report on the Australian national broadcaster’s flagship current affairs program Four Corners. Almost all of this coverage was generally critical of ‘gene patents’, without ever providing a satisfactory definition of the term.

While 2010 was quite an eventful year for IP in Australia and New Zealand, this still does not equate to dozens of potential stories to pick from, given the relatively small populations involved. So in the end it was not hard to come up with a “top eight.” As for my selection criteria, I have simply chosen those cases, events and themes that seemed significant to me from a professional perspective, or that captured the attention – and even the imagination – of the broader public.

It is unfortunate for businesses, but China is becoming practically synonymous with intellectual property theft, piracy and counterfeiting. On top of that, many technology companies are learning that doing licensing deals with the Chinese means they turn over the technologies and as soon as the Chinese corporation is capable of employing the technology the sever the relationship and then compete against American companies with American technology, they just don’t have to recoup the research and development costs and they have a cheap labor force.

Building on more than a quarter century of cooperation, the Trilateral Offices continued to focus on addressing global patent workload challenges, in particular, decreasing pendency and examination backlogs, improving patent quality, and leveraging IT solutions to simplify and speed up processing of patent applications.

Unfortunately for those who support a single European patent, negotiations broke down on Wednesday evening and the status quo will remain. According to the Financial Times the sticking point was with respect to languages that patents would be translated into, with Span and to a lesser extent Italy being unhappy with the prominence of English, French and German.

The United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO) have agreed to work toward the formation of a joint patent classification system. Unlike other major patent document classification systems, the U.S. patent classification system is not based on the International Patent Classification (IPC) system because it predates the IPC. One of the goals of the partnership is to align the U.S. and the EPO classification systems with the IPC, which is administered by the World Intellectual Property Organization (WIPO), a specialized agency of the United Nations. The jointly developed classification system will be more detailed than the IPC to improve patent searching. As a result, the two offices would move closer to eliminating the unnecessary duplication of work between the two offices, thus promoting more efficient examinations, while also enhancing patent examination quality.

The Commerce Department’s United States Patent and Trademark Office (USPTO) and the Federal Service for Intellectual Property, Patents and Trademarks of the Russian Federation (ROSPATENT) have agreed to partner in establishing a Patent Prosecution Highway (PPH) pilot program.

For now we can be thankful that the U.S. enjoys dominance in an important and growing field like nanotechnology. Even though China does not receive high marks yet, it seems only a matter of time before the Chinese figure out what we in the United States, most in Western Europe and many in Asia have know for a very long time. Significant investment in technology and the creation of a business friendly climate lead to businesses locating, investors investing and high-paying technology jobs being created. Of course, there is also the national security angle to consider as well. So not only are we allowing other nations to catch up to us from a technology and business standpoint, we are allowing other countries to catch up to us from a military technology standpoint, which is concerning.

USPTO Director David Kappos made one of his rare excursions outside of the US at the end of June when he flew to Munich to take part in the IP Business Congress, organised by IAM – the magazine which I edit. Speaking to 450 delegates, many of them heads of IP at large corporations and SMEs, Kappos was clear that he has a major task in getting the USPTO fit for purpose and able to meet the myriad challenges it faces. I also discussed many of these with him in an interview we recorded at the congress.

At the start of the new year I pledged that I would start to try and expand the scope of IPWatchdog.com to touch upon intellectual property matters outside the United States. In part this means trying to add an international flavor where appropriate, which is certainly always possible in part through discussion of the Patent Cooperation Treaty (PCT). In another facet it means profiling interesting stories relating to foreign intellectual property laws.

On May 19, 2010, USPTO Director David Kappos and China’s State Intellectual Property Office (SIPO) Commissioner Tian Lipu signed a Memorandum of Understanding (MOU) on comprehensive bilateral cooperation on patents. The signing took place during a signing ceremony held at the USPTO campus in Alexandria, Virginia. Second, in a separate and seemingly unrelated item, the USPTO also announced today that it would eliminate the fee for the petition to participate in Patent Prosecution Highway (PPH) programs. The elimination of the PPH petition fee is expected to encourage greater PPH participation by patent applicants. The good news is that yet more is being done to address the backlog and pendency. But I am still hoping for a plan aimed straight at independent inventors and start-up businesses here in the U.S.

Yesterday I had the honor of spending 30 minutes interviewing Francis Gurry, the Director General of the World Intellectual Property Organization (WIPO). The Director General spoke substantively about issues facing the Patent Offices of the world, as well as some possible solutions. Gurry also discusses harmonization attempts, work-sharing agreements and the crushing worldwide backlog of patent applications that could lead to irrelevance of the system. As you read the interview you will also see that he thinks it is possible that the rest of the world will adopt a US-like grace period.