WASHINGTON — The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) hosted a meeting of the heads of the world’s five largest intellectual property offices in Cupertino, California. Known as the IP5, members include the USPTO, the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO).
During the meeting, the heads renewed their commitment to develop the “Global Dossier,” a system to simplify the viewing and management of applications filed in the IP5 Offices. The heads also agreed to adopt the Global Classification Initiative, a new effort to harmonize patent classification. The heads confirmed the adoption of an IP5 Patent Information (PI) policy, pursuant to which each of the offices will work towards providing barrier free access to patent data. The heads reaffirmed work-sharing in the framework of IP5 cooperation, and endorsed the development of a Patent Prosecution Highway (PPH) pilot project between all IP5 Offices. Additionally, the heads stressed the need to advance harmonization of substantive and procedural patent law. To this end, the heads reviewed the progress in the work of the IP5 Patent Harmonization Experts Panel, and considered next steps.
While much attention has been given to the recent, significant changes in U.S. patent law arising from the America Invents Act (“AIA”), lesser attention has been given to patent law changes brought about by further congressional action. Specifically, the Patent Law Treaties Implementation Act (“PLTIA”) enacted December 18, 2012, implements the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. In making several important changes to U.S. design patent law, implementation of the Geneva Act importantly provides U.S. design patent applicants with increased flexibility and, like the AIA, further harmonizes U.S. patent laws with international norms.
In codifying the provisions of the Geneva Act, the PLTIA for the first time enables U.S. applicants to file a single, international design patent application (a so-called “IDA”) with the U.S. Patent and Trademark Office (“USPTO”) that, in many aspects, is the design equivalent of a Patent Cooperation Treaty (“PCT”) application. Whereas a PCT application does not itself grant any rights, though, a granted international design patent is enforceable in any of the member countries designated by the applicant at the time of filing. There are presently 60 members to The Hague Agreement, most notably the European Union (and many European countries separately). The complete country listing can be found at here. The following aspects of the international design patent under the Geneva Act are further of note.
At inoviawe often speak to universities about the challenges that they face when it comes to international patenting filing. Many of our university clients face budget and cost pressures and will often abandon technologies when there’s no licensee in place, even though they may have already spent thousands of dollars drafting the application and filing the PCT.
At the recent Association of University Technology Managers (AUTM) annual meeting, inovia’s founder Justin Simpson moderated a panel on the topic of Controlling Patent Costs while Protecting More Technologies, and was joined by three university experts to address some of these challenges.
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.
All member countries of the Paris Convention and the PCT approve the novelty of an invention claimed in the patent application going back to the priority date in the origin country. Therefore, as to the novelty of a claimed invention, all member countries treat foreign and domestic patent applications equally. Still, the member countries’ treatment of the “grace period” poses a serious issue: no patent law in any country recognizes the grace period as starting from the priority date, but only from the domestic filing date.
Thus, if a U.S. inventor publishes his invention, files a U.S. patent application within one year, and files a Japanese patent application within one year from the U.S. filing date claiming priority, he will get a U.S. patent but not a Japanese patent. This is so because the Japanese Patent Law allows a six-month grace period from the Japanese filing date, not U.S. priority date. This six-month grace period is same in the rest of world except for the United States and Korea.
The AIA broke this barrier by giving both the novelty and the grace period on an effective filing date which goes back to the original filing date, so long as there is priority claim to the original foreign application date. Thus, under AIA, both U.S. and foreign applications are completely equal with respect to both novelty and grace period.
This is extremely unusual, since no other country provides a grace period commencing from the priority date. In this respect, the AIA is the first and sole universally equal patent law in the world.
Upon introducing the bill, Leahy said it would “help American businesses expand into foreign markets by reducing obstacles for obtaining patent protection overseas.”
One of these two treaties, the Hague Agreement Concerning International Registration of Industrial Designs, would for the first time permit for design patent applicants a benefit that utility patent applicants have had for decades — the ability to file a single, standardized, English-language application at the U.S. Patent & Trademark Office to obtain IP rights in multiple countries through the Patent Cooperation Treaty. By permitting design patent applicants to file in this manner, the Hague bill should greatly reduce the cost to U.S. applicants of obtaining foreign design rights.
We are rapidly closing on the next wave of implementation for the America Invents Act in the United States. On 16 September 2011, the U.S. enacted landmark patent legislation. As a result of the Leahy-Smith America Invents Act (AIA) the patent laws of the United States will experience the most widespread changes since the initial patent statute was first passed in 1790. Not even the 1952 Patent Act is as sweeping because that almost exclusively codified decades of common law into the statute, with only one significant departure from the law as it evolved under the guidance of the Judicial system.
The most sweeping changes to American patent law will not take effect until March 16, 2013, but there have already been some changes and the next wave of changes become effective on September 16, 2012, on the anniversary of President Obama signing the bill into law. The next round of changes largely deal with post grant procedures and challenges, but also deal with a variety of smaller issues, such as implementing the OED statute of limitations for disciplinary actions and the submission of third party prior art during a patent prosecution.
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.
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