IPWatchdog.com is in the process of transitioning to a newer version of our website. Please be patient with us while we work out all the kinks.

Posts Tagged: "international patent application"

Farewell Brazilian Backlog: Brazilian PTO Introduces Standardized Office Action Program

The Brazilian PTO has officially introduced its longed-for strategy to solve the enduring patent backlog problem in Brazil.  The plan is to reduce the patent backlog by at least 80% in the course of the next two years with the use of “standardized office actions” – that is, machine-made technical opinions that will simply point out prior art documents to be addressed by the applicant.  Once the backlog is finally dealt with — likely by 2021— the PTO estimates it will to be able to examine future patent applications within twenty-four (24) months. If the goals of the program are achieved, the Brazilian PTO will be finally able to stand on equal footing with its foreign counterparts in the developed world with regard to the average patent examination time.

PCT 101: International Patent Application Filing Basics

The appeal of the PCT process is that it enables patent applicants to file a single patent application and have that single, uniform patent application be treated as an initial application for patent in any Member Country.  This single, uniform patent application is what is referred to as the international application. Filing an international patent application to start the patent process can frequently be a wise move if you are contemplating securing patent rights in multiple countries. It is, however, important to understand that obtaining international patent protection is not cheap. It is also important to understand that the international patent application you file will not mature into an international patent.

PCT Basics: Obtaining Patent Rights Around the World

For better or for worse, there is no such thing as a world-wide patent. There is, however, something that approximates a world-wide patent application that can ultimately 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.

After Searching: Patent Filing Options and PCT ISAs

According to WIPO data, USPTO, EPO and KIPO are major ISAs for U.S. applicants; about 94% of intentional searches have been done by these three patent offices. U.S. applicants may consider the quality of search reports and cost of search fees as the most important factors in selecting an ISA. Search fees vary by ISA, for example, EPO’s rate is relatively high $2,125, USPTO’s rate is $2,080, and KIPO is well known to provide high quality earches with a relevantly competitive cost at $1,219.

Obvious Inventions Patentable: The Australian Innovation Patent

Essentially, innovation patents are 8 year short form patents available in Australia as an alternative, or in parallel with standard, or utility, patents. An innovation patent can be filed on an obvious invention, is hard to invalidate and, when filed as a divisional from a standard patent application, can be infringed from a date before the standard patent application was published.

Completely Describe Your Invention in a Patent Application

Simply said, a patent application is only as good as what is included within the application, and general or vague descriptions do nothing more than guarantee that no patent will ever issue. Beyond that, how can you realistically do a patent search on a first level, vague articulation of an invention? At present there have been more than 8.7 million U.S. utility patents granted and over 700,000 design patents granted. I can guarantee that if you vaguely describe your invention it will be easy to find prior art that will be exactly what you have described. Of course, when you see it you will say: “that isn’t anything like my invention.” But if you say your invention is multi-purpose knife, for example, and that is all you say then any multi-purpose knife would be prior art that would prevent you from obtaining a patent.

Patent Law Treaties Implementation Act of 2012 Modifies U.S. Design Patent Law

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.

Applying for a Patent in the U.S.

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.

Europe Achieves Historic Agreement on Unitary Patent

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.

Universities: Get One More Year on your PCT Patent Filing

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.

International Patent Cooperation: Trilateral Conference and IP5

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.

Five Pillars of Success for IP Translations

Translating patents isn’t like translating press releases or whitepapers. These materials can be reworded, adjusted, modified, and reformatted to accommodate linguistic nuances. Patents, however, require very specialized and precise technical and legal language. In addition, every patent’s style, structure, and formatting must adhere to the particular rules of the patent office where it is being filed. Patent translation demands a level of expertise and experience that is beyond the ability of many translation providers.

USPTO Announces Three New Patent Prosecution Highway Partnerships

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the October 1, 2012 launch of a new Patent Prosecution Highway (PPH) with the patent office of the Czech Republic, and the planned launch of two additional PPHs with the patent offices of the Philippines and Portugal in January 2013. The expedited examination in each office will allow applicants to obtain corresponding patents faster and more efficiently in each country.

Apple’s ‘Innovative’ Australian Patent Strategy

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.

Important New Changes to US Patent Law for PCT Applicants

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.