Posts Tagged: "harmonization"

Ecuador May Soon Reap the Benefits of the Patent Prosecution Highway

Ecuador has been participating in a pilot program of the Patent Prosecution Highway (PPH) since 2016 but has as of yet failed to implement the system for a number of reasons. However, with the announcement in July that Ecuador may join the Pacific Alliance next year under its new President, Lenin Moreno, and a general market-friendly shift in government, it is expected that the PPH could soon become effective. The PPH would be indispensable for Ecuador, as it would save resources and lower costs for applicants and for the Patent Office, would speed up the lengthy patent prosecution process, and would harmonize practice in the region by creating unified criteria on the issues subject to these examination procedures.

Francisco Gallegos

November 2, 2019

The Global Implications of the CJEU’s Ruling in Google ‘Right to Be Forgotten’ Case

On September 24, the Court of Justice of the European Union (CJEU) delivered its decision in case C-507/17, Google v. CNIL regarding the territorial scope of the “right to be forgotten”. Google Inc. had filed an appeal with the French Council of State (FCS), the Highest Administrative Court in France, requesting the annulment of a decision by the French Data Protection Authority (CNIL), which imposed a penalty of EUR 100,000 (approximately USD 110,300) on Google. The case arises from a request to Google by a natural person for deletion of certain links from the list of results displayed following a search of his name (“request for de-referencing”). In response, Google refused to remove certain content from all versions of the domain name of its search engine (i.e., worldwide), leading to the penalty imposed by the CNIL. The FCS then made a request for preliminary reference to the CJEU for guidance on the interpretation of the “right of de-referencing”, popularly known as the “right to be forgotten”.

Costanza Manavello & Laura Di Tecco

October 16, 2019

Iancu Calls for Section 101 Fix in Address to AIPPI Congress

USPTO Director Andrei Iancu said “something has to be done about” Section 101, as it has been thrown into flux following various U.S. Supreme Court cases, in comments made at the AIPPI Congress in London, United Kingdom last week. Iancu took part in an hour-long discussion with AIPPI Reporter General John Osha, and also took questions from the audience last Monday. He addressed topics including AI, anti-IP sentiment, litigation costs, bad faith trademark filings and gender parity. But it was issues of patent eligibility that were chief on his mind. Iancu said the Administration “has tried to bring consistency and predictability” to Section 101 with its January 2019 guidance, but added: “Courts are independent. They don’t have to follow our guidance. And so far, I have seen no evidence that they want to.”

James Nurton

September 22, 2019

The America Invents Act on Its Fifth Anniversary: A Promise Thus Far Only Partially Fulfilled

Unfortunately, Mr. President, after five years I cannot report back that the AIA has yet ”improve[d] patent quality and help[ed] give entrepreneurs the protection and the confidence they need to attract investment, to grow their businesses, and to hire more workers.” The current implementation of PTO post issuance proceedings is undermining confidence in our patent system, chilling innovation at its roots, and, in eyes of some, giving the AIA a bad name.

Phil Johnson

September 15, 2016

Harmonization and the quest for an elusive international grace period

An interview with Jim Pooley, former Deputy Director General of WIPO – The actual changes that we might have to accept in a truly globalized, harmonized system are not going to be that difficult for us. The real difficulty is getting everybody to agree on one set of best practices. That, it turns out, is a political road that is just as difficult now as it ever has been. But the goal is clear, the goal is compelling and I think all of us need to work as hard as we can to push things in that direction. First of all we’ve got to get the industrialized countries to agree on a single approach, or at least an understood and aligned approach, to a grace period. Once that happens I think the other issues that we have to deal with will fall into place. We have to keep in mind that while the politicians or diplomats argue with one another, we have sitting on the sidelines all of our clients who are cheering for harmonization. They want to see this happen. And at the end of the day politicians need to recognize it’s the users of the patent system that own it and we need to make sure that they get the system that they deserve.

Gene Quinn

February 10, 2015

USPTO Seeking Comments on Matters Related to the Harmonization of Substantive Patent Law

At a meeting convened in October 2012, experts from the Tegernsee Group offices were tasked to collaboratively develop a joint questionnaire to aid in the acquisition and analysis of stakeholder views across jurisdictions on four issues of particular interest to harmonization of substantive patent law: grace period, publication of applications, treatment of conflicting applications, and prior user rights. It is expected that each patent office will separately administer the joint questionnaire to its respective stakeholders.

U.S.P.T.O.

January 31, 2013

USPTO and EPO Announce Launch of Cooperative Patent Classification System

An ambitious harmonization effort, CPC is the product of a joint partnership between the USPTO and the EPO to develop a common, internationally compatible classification system for technical documents used in the patent granting process that incorporates the best classification practices from both offices. It will be used by the USPTO and more than 45 patent offices – a user community totaling more than 20,000 patent examiners – all sharing the same classifications helping to establish the CPC as an international standard.

U.S.P.T.O.

January 2, 2013

EPO and WIPO Sign Agreement to Enhance Co-operation

Munich/Geneva, 3 May 2012 — With the aim of further developing the international patent system to better support innovation in economies around the globe, the European Patent Office (EPO) and the World Intellectual Property Organization (WIPO) have agreed on a comprehensive three-year technical co-operation scheme. The agreement, signed by EPO President Benoît Battistelli and WIPO Director General Francis Gurry in Munich…

European Patent Office

May 3, 2012

Kappos 2.0: USPTO Funding, Board Hiring & Harmonization

In this installment we learn from Director Kappos that the USPTO budget is not a problem whatsoever. While the Office did not achieve a permanent end to fee diversion, Congress has appropriated $2.7 billion for the USPTO for this fiscal year. The USPTO is NOT operating under a Continuing Resolution (CR) as is the case with most of the rest of the federal government. Furthermore, current projections have the USPTO collecting $2.5 billion in fees this fiscal year, so there will be a $200 million subsidizing of the USPTO by the General Treasury.

Gene Quinn

January 16, 2012

Trilateral Patent Offices Step Closer on Patent Harmonization

In view of the growing need for innovator companies to obtain patent protection in multiple Patent Office around the world simultaneously, leaders of the most heavily used patent regimes continue to seek ways to streamline the process and engage in work sharing. Heads of the European Patent Office (EPO), the Japan Patent Office (JPO) and the United States Patent and Trademark Office (USPTO) – collectively known as the Trilateral Offices – pushed forward earlier this week with efforts to further harmonize global patent systems. The Trilateral Offices agreed on steps to enhance efficiency in patent-related procedures.

Gene Quinn

November 13, 2011

The America Invents Act’s Repeal of Secret Commercial Use Bar is Constitutionally Infirm

The effort to shoehorn foreign patent priority concepts and torture a well-developed 200 year-old American patent system that has a proven record as the best in the world into foreign structures that are inconsistent with the American Constitution and its laws is a futile effort that would likely be met with successful challenge on constitutional grounds. The illusory “harmonization” goal with no demonstrated tangible benefits compared to the existing system does not justify embarking on a risky legal adventure that will destabilize the American patent system and will doom it to decades of economically taxing legal uncertainty.

Ron Katznelson, PhD

May 31, 2011

USPTO and EPO Work on Joint Patent Classification System

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.

Press Releases

October 25, 2010

An Exclusive Interview with Francis Gurry, WIPO Director General

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.

Gene Quinn

May 4, 2010

Kappos Talks Patent Reform and Gene Patents at BIO Convention

What follows are pieces of Director Kappos’ remarks at the session prior to taking questions and answers. While it is probably unfair to call these remarks prepared remarks, it was clear that he referred to his notes as he provided detailed information and statistics. He also seemed to be reading what he said when he spoke about the ACLU case against Myriad Genetics, but who can blame him given the USPTO was a nominal party to the case and it will be appealed to the Federal Circuit. It is also worth mentioning that during the Q&A there were a few interesting things that came up, chief among them was Kappos’ explanation of the long odds facing a small entity claiming to be the first to invent but who filed the patent application second. Kappos likened the odds of such a Junior Party prevailing to the odds of being bitten by a Grizzly Bear and a Polar Bear on the same day. He then went on to say that you have to go back to FY 2007 to find a prevailing small entity Junior Party in an interference.

Gene Quinn

May 4, 2010

US Patent Office to Reject Based on Traditional Knowledge

Last week on Monday, November 23, 2009, while so many of us were winding down, clearing off our desks and getting ready for the Thanksgiving Holiday, the United States Patent and Trademark Office announced that the Government of India has granted the agency’s patent examiners access to a new digital database containing a compilation of traditional Indian knowledge. This was…

Gene Quinn

November 30, 2009