Posts Tagged: "foreign filing"

There is no such thing as a world-wide patent, although there is something that approximates a world-wide patent application that can result in a patent being obtained in most countries around the world. This patent application is known as an International Patent Application, or simply an International Application. The international treaty that authorizes the filing of a single patent application to be treated as a patent application in countries around the world is the Patent Cooperation Treaty, most commonly referred to as the PCT. You can file an International Application pursuant to the rules of the PCT and that application will effectively act as a world-wide patent application, or at least a patent application in all of those countries that have ratified the PCT, which is virtually all of the countries where you would want a patent anyway.

The report shows that the mood for 2011 was cautiously optimistic compared to previous years, with fewer organizations experiencing budget reductions and a greater percentage of IP tasks going in-house or being outsourced in order to reduce costs and retain control. This year saw less than half of those surveyed working on a reduced IP budget going into 2012, compared to nearly two-thirds of respondents in last year’s survey. However, the bulk of respondents don’t expect to increase the number of patent families filed in 2012, indicating the persistence of a “do-more-with-less” attitude as the economy slowly recovers.

Notwithstanding the inherent unreliability of legislative history and the truly scary prospect of trying to get inside the head of Members of Congress, it seems fairly clear to me that the America Invents Act, which was signed into law by President Obama on September 16, 2012, contains at least a handful of things that can only be characterized as unintended consequences. Among them are: (1) U.S. patents issued from foreign filings will be prior art as of the foreign filing date; (2) commonly owned patent applications cannot be used against each other for novelty purposes; and (3) the creation of an post grant challenge limbo because of the delay in initiating post-grant review procedures.

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).

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.

All in all I would characterize the mood of the PTO officials I spoke with as up-beat and the mood of the stakeholders in attendance was generally positive, but with reservations about the mechanics of Track 3. After the event I too would be upbeat if I were among the senior ranks at the USPTO. Those aspects that were viewed as negative or needing more work or clarification seemed few, were identified over and over again and should be addressable. That being the case it seems the majority of the proposal is acceptable and the community remains hungry for these types of creative initiatives, which sadly is all we have given that Congress continues to be AWOL on even relatively meaningless reforms, let alone reforms that could actually do some real good.

Many of the patent owners, their IP departments and patent attorneys we speak to are under budget pressure. This is especially the case in the essential – but relatively high-cost – area of international patent protection. A recession might last a year or two, but patents last for twenty years. It’s therefore a delicate balancing act to reduce costs whilst…