In 2011, an Advisory Committee (AC) was instructed by the Hong Kong Government to conduct a review of the Hong Kong Patent System. The AC held a consultation period from October to end-December 2011, soliciting input from the patent and general legal profession, academia, political organizations, and trade bodies.
On 7 February 2013, the AC issued its formal Report (209 pages long) recommending various changes to the system which will affect not only Patentees, but the entire Patent profession in Hong Kong. In general, the AC’s Report recommends three changes which can be described as being quite bold in some areas, whilst at the same time, being conservative as the changes permit much of the existing system to be retained.
The AC’s recommended changes fall into three categories: the introduction of an “Original Grant Patent” (OGP), the refinement of the Short Term Patent system and the introduction of a regulatory framework for the Hong Kong Patent profession, which at present is not regulated.
A patent is a proprietary right granted by the United States federal government to an inventor who files a patent application with the United States Patent Office. Therefore, unlike copyright and trademark protection, patent protection will only exist upon the issuance of a patent, which requires you to file a patent application. You absolutely must file a patent application and have that application mature into an issued patent in order to obtain exclusive rights to your invention.
Furthermore, despite what you may have been told or read, keeping a detailed invention notebook, even if you mail a description of the invention to yourself, provides no exclusive rights. It has always been extremely important to keep detailed invention records in case you ever need to prove the particular date you invented. Notice the use of past tense in the previous sentence. On March 16, 2013, the United States moves to a first inventor to file system, which significantly changes U.S. patent law. For all intents and purposes inventors would do themselves well to assume that first inventor to file meansfile first!
That being said, there is a very limited grace period that is far more narrow than anything the U.S. has previously had. Inventors should not, in my opinion, rely on the grace period whatsoever — it is extraordinarily narrow. Nevertheless, it is conceivable that in some very limited circumstances it will be necessary to demonstrate that someone else derived your invention from you after you disclosed your invention. The only way to be able to hope to prove that will be with detailed records. Thus, record keeping should become more robust moving forward. You will not only need records that relate to how and when you arrived at the invention, but you will need records about how and when you disclosed your invention. Still, filing some kind of patent application as soon as possible will be the best move.
The European Patent Office (EPO) welcomed the adoption by the European Parliament in Strasbourg of two draft regulations on the creation of the unitary patent, hailing it as a historic achievement. “The European Union is to be congratulated on this decision, which clears the way for the completion of the European patent system with a unitary patent and a Unified Patent Court, which we have been waiting for in Europe for 40 years,” said EPO President Benoît Battistelli. “The significant lowering of the cost of patenting inventions in Europe will strongly benefit European enterprises, especially research centres and SMEs. The vision of the founding fathers of the EPO to equip the European economy with a truly supranational patent system now can become a reality, strengthening Europe’s competitiveness.”
The European patent with unitary effect (unitary patent) in the 25 participating states is based on two regulations, one creating the instrument, and one on the applicable language regime for the new patent. The EPO has been entrusted by 25 EU member states to deliver and administer unitary patents. The third element of the package is the creation of a unified patent litigation system set up under an international convention establishing the Unified Patent Court (UPC), a specialised court with a first and an appeal instance with exclusive jurisdiction concerning infringement and validity questions related to unitary patents. The positive vote in the Parliament became possible after the EU member states endorsed the regulations in their Competitiveness Council meeting on Monday. The unitary patent now has to be formally adopted by the EU Council and the European Parliament, which is expected soon.
The decision whether to file a patent application is not just limited to whether an innovation has been achieved, but whether there is enough of an advance to make it worthwhile to undertake the cost of preparing and ultimately obtaining a patent. For universities the question is an even more difficult one than you might think because universities are almost universally engaging in early stage, highly-speculative research. Thus, the decision to file typically needs to come very early on in the process so that the inventor, typically an academic or researcher affiliated with the university, can publish findings and share information with the world.
Universities produce a lot of patentable inventions, but the patent laws around the world do not provide special treatment for those innovations that are based on foundational scientific research that may be years away from fruitful commercial application. What this means in patent terms is that once a university files a patent application the clock starts ticking. If, for example, a university files an international patent application there will be 30 months from that filing within which to decide whether to pursue patent rights in the Member Countries that have signed on to the Patent Cooperation Treaty. That same 30-month deadline applies even if the first filing is a U.S. provisional patent application or a U.S. nonprovisional patent application, both of which can provide support for a later filed international patent application. For more information see PCT Basics: Obtaining Patent Rights Around the Worldand PCT Basics: Understanding the International Filing Process.
Scientifically speaking, there is really very little time the point in time that work in a university laboratory is concrete enough to call “an invention” and capable of description in a patent application until the 30-month deadline to pursue rights in various countries around the world. What that means is that universities are constantly faced with a difficult decision. Do they undertake the expense of seeking patent protection in a variety of locations or do they forego the invention? This decision is particularly problematic for universities engaged in the life sciences where there is of necessity a very long time horizon from conception of the invention to even knowing whether there is a legitimate opportunity for commercialization.
Heads of the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), and the Japan Patent Office (JPO) – collectively known as the Trilateral Offices – met in Kyoto, Japan earlier this week to hold their annual Trilateral Conference, which marks their 30th anniversary this year. Since 1983, the Trilateral Offices have worked together to produce new databases and IT systems, evolving their cooperation by conducting various projects designed to solve common challenges. Indeed, the Trilateral Offices have led the way on international patent cooperation and laid the groundwork for work sharing efforts globally.
Meanwhile, a coalition of the world’s five largest patent offices – the IP5 – earlier today announced the release of the IP5 Statistics Report 2011 Edition. The IP5 is comprised of the USPTO, the EPO, the JPO, the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO). These IP5 Offices together handle approximately 80% of the world’s patent applications. The IP5 began meeting in 2007 and have since worked together to explore ways to further optimize their joint efforts to improve quality and efficiency of the examination process and to explore and optimize work sharing opportunities between the Offices.
All of the accomplishments of the IP5 and Trilateral Offices “lead to improving global patent systems today,” said Hiroyuki Fukano, Commissioner of JPO. “It is our current task to build an appropriate framework in which applicants are able to be granted patents smoothly in every corner of the world. In order to achieve building truly global patent systems in a global era, we would like to take the lead in developing such global patent systems.”
What keeps you up at night? For patent attorneys, it could be the one time you sent your client’s patent off to be translated from English to German, and since you don’t read German, didn’t know that a translation error changed the meaning of the patent enough that a judge ruled a client’s claim against a competitor invalid.
That would keep me up at night!
Over the past few years, many of the world’s largest patent filers have consolidated patent work to fewer law firms. As a result, patent attorneys and managers of the translation process are now responsible for overseeing a larger number of disconnected in-country translation service providers. Unfortunately, this can lead to increased errors and risks.
That isn’t so good, especially when trying to protect your client’s intellectual property.
Australia has two different types of utility patent. A ‘standard patent’ is the traditional type, in which all valid claims must meet the well-established requirements of novelty and inventive step (i.e. nonobviousness), and which has a maximum term of 20 years from filing if all annual maintenance fees are paid. Extensions of this term by up to five years are available for certain pharmaceutical patents, as compensation for time effectively lost while obtaining regulatory approvals.
The second type of patent, called 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. An innovation patent also differs from a standard patent in that a maximum of only five claims is permitted, although there are no additional restrictions on the form of these claims. For example, any number of them may be independent claims.
Second tier invention rights, more typically known as ‘utility models’ or ‘short term patents’ and having terms of between 6 and 15 years, are not particularly unusual. Such rights are available, on one form or other in over 70 countries around the world. In China, utility model patents are obtained about as often by domestic applicants as are standard patents, although the second tier system is barely used by foreign applicants.
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