Posts Tagged: "International"

As readers will no doubt be aware, Australia is one of the jurisdictions in which Apple is currently pursuing litigation against its Android-based smartphone and tablet competitors. The claims and counter-claims by Apple and Samsung are the subject of a trial in the Australian Federal Court in Sydney which has now been extended into the first months of 2013. According to reports, as many as 22 Apple patents have been asserted against Samsung, although it is as yet unclear how many of these will actually be pressed at trial. A number of the asserted patents are innovation patents. An ‘innovation patent’, is in many respects unique to Australia. An innovation patent provides a ‘second tier’ right, with a lower barrier to validity than the conventional inventive step test, and a shorter maximum term of protection of just eight years.

For the international community, however, there is an important change slated for September 16, 2012.  The AIA will changewho is entitled to be an applicant in U.S. national applications. This change will impact applicants who have filed under the Patent Cooperation Treaty (PCT).  The change removes the requirement that the inventors be named as applicants solely for the purposes of U.S. designation.

The World Intellectual Property Organization (WIPO), in conjunction with INSEAD, released the 2012 Global Innovation Index (GII) on July 3, 2012. The GII model included study of 141 economies, which represent 94.9% of the world’s population and 99.4% of the world’s GDP (measured in US dollars). Once again, for the second year in a row, Switzerland, Sweden and Sinagpore top the list, which measures overall innovation performance. The report ranks countries on the basis of their innovation capabilities and results. The United States ranked 10th.

With approximately 140 signatories to the Final Act, the World Intellectual Property Organization (WIPO) Beijing Treaty on Audiovisual Performances, or the “Beijing Treaty,” strengthens intellectual property protections for actors, musicians, and dancers globally, by requiring countries to ensure updated and consistent standards of protection for performers in audiovisual works.

Australia and the World Intellectual Property Organization (WIPO) today signed an agreement detailing how an AUD$2 million Australian contribution would assist least-developed and developing countries improve their intellectual property systems.

The stage is set for a new international treaty that would extend the protection for audiovisual performers, granting them both economic and moral rights similar to those already recognized for music performers. Over 500 negotiators from WIPO’s 185 member states, as well as actors, industry and other stakeholder organizations will meet in Beijing from June 20 to 26, 2012 to finalize discussions on an international treaty to update the intellectual property rights of audiovisual performers, such as film and TV actors and actresses. The meeting will be opened on June 20, 2012 at the China World Hotel by WIPO Director General Francis Gurry and high ranking Chinese State and Beijing Municipality officials.

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.

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.

The avalanche of patent assertion entities (PAE) cases, in the ITC and District Court, exists because the PTO issues hundreds, if not thousands of patents that can be asserted against every minute feature and functionality of tech products and services. The overwhelming majority issued to so-called inventors who played no part in developing these features and functionalities, including to patent mills that specialize in stalking the development of technology standards and obtaining claims they hope will read on those standards. And tech patent applications often pend (through continuations) for 10 years or more, enabling patentees to intentionally draft claims to read on existing products and services. In fact, these euphemistically entitled “early priority date” patents are the grist of tech patent litigation today, including PAE cases in the ITC.

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 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.

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.