Daily Dose of IP

WIPO Magazine – 2/2009 Issue

2009-04-30T10:00:00.001-04:00

The 2/2009 issue of WIPO Magazine is available on line through the World Intellectual Property Organization's website, and as referenced in my prior post, this particular issue focuses on green technology. The following articles (as referenced on WIPO's website, each hyperlinked for convenience) are included within the 2/2009 issue:

IP and Climate Change Negotiations: From Bali to Copenhagen, Via Poznań – This article discusses various conferences in connection with climate change, starting with a 1992 convention held in Rio de Janeiro in 1992 and ending with the convening of the most current Climate Change Conference in Poznan, Poland.

Sharing technology to meet a common challenge – This article discusses various challenges regarding the search for climate change innovations and models for sharing technology such as patent pools, licenses, and the public domain.

Climate Change – The Technology Challenge – This article discusses the role of intellectual property and innovation regarding efforts to curb the negative effects of climate change.

Towards a Green Stone Age? – This article highlights the efforts of a German engineering firm leading to the development of a granite composite material.

Patenting and Access to Clean Energy Technologies in Developing Countries – This article reference several clean energy technologies, such as photovoltaics, biofuels, and wind, and efforts to allow such technologies to be used in developing countries.

New Rice for Africa – Plant Breeding Technologies Fighting Hunger – This article discusses the two basic rice varieties used by African farmers, and a new type of rice (Nerica™) offering higher yields and faster ripening times.

From Cows to Kilowatts – A Case Study in Successful Technology Transfer – This article discusses the efforts of a Nigerian researcher to use slaughterhouse waste to generate useful biogas.

Hot Property – IP Strategies in the Solar Tech Sector – This article discusses the efforts of a Spanish photovoltaic technology company and their decisions regarding potential IP acquisition, protection, licensing, and enforcement.

Green Technologies: Electric Cars with Hydrogen Fuel Cells – This article discusses hydrogen fuel cell technology, its history, and a Canadian company's efforts to increase hydrogen's power density.

Green Design – From Cradle to Cradle – This article discusses the Cradle to Cradle™ ("C2C") certification mark as applying to certain recyclable products made in accordance with non-polluting factories.

Green Branding – Cashing in on the Eco-Market – This article references branding efforts of Australia, Chile, the EU, and Thailand in connection with green technologies.

PCT Portraits: Eco-Inventors – This article highlights the efforts of three inventors who have developed technologies regarding various "wastes".

When Innovation is Child’s Play – This article discusses the development and use of children's playground equipment that doubles as a well pump to supply fresh drinking water.

2/2009 WIPO Magazine (full issue): LINK
WIPO Magazine Webpage: LINK

World Intellectual Property Day – 04/26/2009

2009-04-28T10:12:00.001-04:00

As highlighted by the World Intellectual Property Organization ("WIPO"), 2009’s World Intellectual Property Day ("World IP Day") was April 26, 2009. According to the WIPO World IP Day website (link below), "WIPO and its Member States celebrate World Intellectual Property Day with activities, events and campaigns," which "seek to increase public understanding of what IP really means, and to demonstrate how the IP system fosters not only music, arts and entertainments, but also all the products and technological innovations that help to shape our world." The four specific aims of the annual World IP Day are:

- to raise awareness of how patents, copyright, trademarks and designs impact on daily life;
- to increase understanding of how protecting IP rights helps promote creativity and innovation;
- to celebrate creativity, and the contribution made by creators and innovators to the development of societies across the globe; and
- to encourage respect for the IP rights of others.

The 2009 World IP Day focused on promoting green technology, and consistent with WIPO’s efforts to reduce mass-mailings, it has made available various electronic information, including a special issue of WIPO Magazine (focusing on green innovation). This information is available at the second link below.

WIPO World IP Day Webpage: LINK
2009 World IP Day Webpage: LINK
Suggested World IP Day Activities: LINK
WIPO Magazine (2/2009 Issue): LINK

USPTO Announces German PPH Program

2009-04-23T11:19:00.001-04:00

Last week, the USPTO announced that it has partnered with the German Patent and Trademark Office (DPMA) in establishing the newest Patent Prosecution Highway (PPH) pilot program. This new program, starting on April 27th of this year and running for an initial two period, is being established to "streamline the patent system and promote expeditious, inexpensive and high-quality patent protection throughout the world." According to John Doll, the Acting Director of the USPTO, "The Patent Prosecution Highway with Germany will eliminate redundant work and expedite processing," and "By working with our colleagues at the German Patent and Trade Mark Office, both offices will increase the efficiency of the patent process and will further expand a worldwide network that allows a broader array of inventors to take advantage of these benefits." This is the ninth PPH program between the USPTO and a foreign patent office. According to the USPTO (as noted in the second link below), "Under PPH agreements, an applicant receiving a favorable ruling from one nation's patent office on at least one claim in an application may request that the corresponding application filed with the other nation advance out of turn for examination. By coordinating patentable results between both nations' offices, applicants can expect to obtain patents in both nations more quickly."

USPTO/DPMA PPH Details: LINK
USPTO Announcement: LINK
USPTO Requirements for DPMA PPH: LINK

Octomom™?

2009-04-22T10:27:00.000-04:00

On April 10, 2009, Nadya Suleman, widely known as "Octomom" based on giving birth to octuplets earlier this year, filed two separate trademark applications for the mark OCTOMOM. The first application (U.S. Trademark Application Serial No. 77/711,827, first link below) was filed in international class 041 in connection with the services of "entertainment in the nature of on-going television programs in the field of varity (sp)." The second trademark application (U.S. Trademark Application Serial No. 77/711,852, second link below) was filed in international classes 016 (in connection with "disposable diapers") and 025 (in connection with dresses, pants, shirts, and textile diapers). Each application lists "Nadya Suleman AKA Octomom" as the applicant, and include a signed "Consent of Living Declaration" where Ms. Suleman declares "that OCTOMOM is a nickname by which I am widely known," consenting to the use of her nickname as a trademark. However, and on March 12, 2009, applicant Super Happy Fun Fun, Inc. filed a trademark application for OCTOMOM (U.S. Trademark Application Serial No. 77/689,864, third link below) in international classes 009 (relating to computer software, ring tones, wall papers, screen savers, etc.), 028 (toy action figures and other types of toys), and 041 (entertainment services relating to online computer games and other services). Any ideas on which of these applications, if any, will proceed to publication first?

Application Serial No. 77/711,827 (Suleman): LINK
Application Serial No. 77/711,852 (Suleman): LINK
Application Serial No. 77/689,864 (Super Happy Fun Fun): LINK

USPTO National Trademark Expo – May 8-9, 2009

2009-04-08T09:29:00.000-04:00

The USPTO has announced that its National Trademark Expo event will be held on May 8th (10AM-6PM) and 9th (10AM – 4PM) in the atrium of the USPTO’s Madison Building in Alexandria, Virginia. This event, referenced in the USPTO announcement link below, "will feature exciting colorful interactive exhibits that illustrate the pervasive and important role trademarks play in our economy," whereby "[v]isitors will learn about the many different kinds of trademarks such as sound, design and color, and will also learn about the history and evolution of trademarks, some of which are more than 100 years old." In addition to highlighting trademarks in general, several trademarked characters (like the Pillsbury Doughboy) and exhibiting companies will be present, and the Expo will also highlight the negative effects of counterfeiting on the nation’s economy. A list of exhibitors is available at the second link below.

USPTO Announcement: LINK
Expo Exhibitor List: LINK

EPO Announces Several Revisions to the Implementing Regulations of the EPC

2009-04-07T09:13:00.001-04:00

On Monday, and in two separate decisions, the European Patent Office announced several revisions to the Implementing Regulations to the European Patent Convention ("EPC"). The first decision (CA/D 2/09) includes revisions to and/or language under Articles 1-3, namely to Rules 36, 57, and 135 under Article 1. Specifically, amendments to Rule 36 (1) and (2), (relating to divisional applications), Rule 57(a) (pertaining to translations), and Rule 135(2) (relating to ruling out further processing) will be implemented on April 1, 2010, per the language provided in Articles 2 and 3. In addition, and under the second decision (CA/D 3/09), several new or revised Rules under Article 1 are presented, namely new Rules 62a and 70a and amended Rules 63, 64, 69, 135, 137, and 161. New Rule 62a relates to applications containing a plurality of claims, whereby an applicant shall be invited to indicate the claims complying with Rule 43, paragraph 2, that will be searched if the claims as filed originally do not comply with that rule. New Rule 70a pertains to responses to the extended European search report, offering an applicant "the opportunity to comment on the extended European search report and, where appropriate, invite him to correct any deficiencies noted in the opinion accompanying the European search report and to amend the description, claims and drawings within the period referred to in Rule 70, paragraph 1." Additional details regarding the new Rules and the revisions to the remaining Rules are as presented in the second link below, all of which, as noted within the link, will become effective on April 1, 2010.

EPO Decision (CA/D 2/09): LINK
EPO Decision (CA/D 3/09): LINK

DDIP Tidbits – 04/06/2009

2009-04-06T11:00:00.001-04:00

1. The Canadian Intellectual Property Office (CIPO) has issued a warning regarding "certain companies [that] are soliciting payment for Canadian trade-mark registration applications that were in fact not requested." If you have received an invoice relating to a Canadian trademark that did not originate from your trademark agent/attorney or the CIPO, the CIPO recommends that you contact your agent or the CIPO at the number provided in the CIPO warning.

CIPO Warning: LINK

2. The USPTO is requesting nominations for Public Advisory Committees established by the 1999 Patent and Trademark Office Efficiency Act. The two committees were established, according to the USPTO announcement below, to review the policies, goals, performance, budget and user fees of the United States Patent and Trademark Office (USPTO) with respect to patents, in the case of the Patent Public Advisory Committee, and with respect to trademarks, in the case of the Trademark Public Advisory Committee, and to advise the Director on these matters." Nominations are due by May 15, 2009, and submission instructions are provided in the link below.

USPTO Announcement: LINK

Blog vacation - returning Monday, April 6th

2009-03-26T10:53:00.001-04:00

Posts on the Daily Dose of IP blog will return on April 6, 2009. Thanks for reading!

USPTO Comments on International Applications with Improperly Chosen ISAs

2009-03-18T11:08:00.000-04:00

On Friday, the USPTO issued an announcement regarding a "significant number of international applications" filed in the U.S. Receiving Office under the Patent Cooperation Treaty (PCT) that were filed with a chosen International Searching Authority (ISA) that is not competent to review the subject matter of the claimed invention. For example, the European Patent Office (EPO) will not act as an ISA for applications having one or more business method claims. In addition, the Australian Patent Office (IP Australia) will not act as an ISA for applications having one or more claims having subject matter set forth in Annex A of the Arrangement between IP Australia and the USPTO (as highlighted in the Official Gazette excerpt link below). As noted by the USPTO, "[t]o avoid significant processing delays, applicants filing international applications naming either the EPO or IP Australia as the ISA should take care to ensure that the application does not contain any claims for which the selected ISA is not competent." Procedurally, if the selected ISA determines, upon receipt of the international application with the U.S. Receiving Office, that it is not competent to act on the application, the application will returned to the U.S. Receiving Office, who will then notify and invite the applicant to select a new ISA. Once selected, the application will be routed to the new ISA for processing. However, this procedure could take quite some time, and may result in the applicant receiving a search report and written opinion later than originally anticipated.

USPTO Announcement (PDF): LINK
Official Gazette Excerpt: LINK

USPTO Extends Deferred Examination Comment Window

2009-03-10T10:12:00.000-04:00

In yesterday’s Federal Register, the USPTO announced that it has extending its comment window regarding deferred examination "to provide interested members of the public with an additional opportunity to view the Webcast before submitting comments to the USPTO." As previously reported in the DDIP blog, on February 12, 2009, the USPTO hosted a roundtable event to discuss the topic of deferred patent examination, providing a select number of public representatives the opportunity to participate and share their views on examination deferrals. The roundtable, now available via webcast on the USPTO website (see link below, noting that no audio is available for the first two minutes of the webcast), was conducted to determine whether or not there was support in the patent community regarding deferred patent applications. The window for providing comments has been extended to May 29, 2009.

March 9, 2009 Federal Register Excerpt: LINK
February 3, 2009 DDIP Article: LINK
January 29, 2009 Federal Register Excerpt: LINK
Deferred Examination Webcast: LINK

EPO President Decides Electronic Filing Matters

2009-03-05T09:37:00.000-05:00

Yesterday, the European Patent Office (EPO) announced that the President of the EPO made several decisions on February 26, 2009, concerning the electronic filing of various types of documents at the EPO. A selected number of these decisions, taking effect today (March 5, 2009), are as follows:

Article 1 (Admissibility of electronic filing) - Documents in proceedings under the EPC may be filed with the European Patent Office in electronic form, and European patent applications may also be filed in electronic form with the competent national authorities of those contracting states which so permit.

Article 2 (Filing of international patent applications and other documents) - International (PCT) applications may be filed with the European Patent Office in electronic form, and other documents within the meaning of Rule 89bis.1 and 2 PCT not forming part of the international (PCT) application may be filed in electronic form.

Article 3 (Filing of priority documents) - Articles 1 and 2 shall not apply to priority documents, unless they have been digitally signed by the issuing authority and the signature is accepted by the European Patent Office.

Article 7 (Signature) - Where filed documents require signature, subject to Article 8 this may take the form of a facsimile signature, a text string signature or an enhanced electronic signature. A facsimile signature shall be the facsimile reproduction of the filing person's signature. A text string signature shall be a string of characters, preceded and followed by a forward slash (/), selected by the signatory to provide evidence of his identity and of his intent to authenticate the message in question. An enhanced electronic signature shall be an electronic signature either issued by the European Patent Office or accepted by it.

The complete list of decisions (Articles 1-14) is available at the EPO announcement link below.

EPO Announcement: LINK

USPTO Seeking NMTI Nominations

2009-03-03T09:40:00.001-05:00

Yesterday, the USPTO announced that it once again seeking nominations for potential recipients of the National Medal of Technology and Innovation (NMTI), presented by the President of the United States each year to select individuals for their technological achievements. According to the USPTO press release (link below), "The honorees are selected for their outstanding contributions to the nation's economic, environmental and social well-being through the development and commercialization of technological products, processes and concepts; technological innovation; and development of the Nation's technological manpower." Nominees may include individual inventors, teams of inventors, companies, and/or divisions of companies. Nominations may be made through May 29, 2009, and can be submitted via the second link below.

USPTO Announcement: LINK
NMTI Nomination Webpage: LINK
2007 NMTI Recipients: LINK

EPO Seeks Comments on Patentability of Computer Programs

2009-02-25T12:42:00.000-05:00

The European Patent Office (EPO) recently announced that its Enlarged Board of Appeal (EBA) is accepting written statements regarding pending referral G 3/08 pertaining to the patentability of computer programs. Third parties to the appeal have until the deadline of April 30, 2009 to submit written comments and any new cited documents in connection with the following four referred questions:

1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

2.
(a) Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(c) and (3) merely by explicitly mentioning the use of a computer or a computer-readable data storage medium?

(b) If question 2(a) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?

3.
(a) Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?

(b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

(c) If question 3(a) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used?

4.
(a) Does the activity of programming a computer necessarily involve technical considerations?

(b) If question 4(a) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?

(c) If question 4(a) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?

According to the EPO announcement (link below), "The referral does not call into question EPC Article 52(2) and (3), which states that programs for computers as such are not to be regarded as inventions and are therefore excluded from patentability. Instead, it seeks guidance on how the details of this exclusion are to be applied."

Copies of the referral (including summary letter, definitions, the questions with additional commentary, and the current state of the law), referral references, the text of Article 10 of the Rules of Procedure of the Enlarged Board of Appeals, The November 11, 2008 decision of the EBA, and the questions as presented in the Official Journal of the EPO (1/2009) are provided within the second link below.

EPO Announcement: LINK
Case G 3/08 (large PDF): LINK
Specific Pending Referral Webpage: LINK
Specific Referral FAQ Webpage: LINK

2007 EPO Patent Statistics Now Available

2009-02-19T11:00:00.001-05:00

The European Patent Office (EPO) announced yesterday on its website that its annual compilation of patent statistics has been completed and is publicly available for the year 2007. According to the EPO announcement (first link below), the statistics include the following:

- the number of European patent applications filed per technical domain and origin
- the number of European patents granted per technical domain and origin
- the most active patent filers

Statistical data, based upon extracts from the EPO’s monitoring database EPASYS, is available for the following categories:

1. Top 100 applicants in 2007 – The top 10 applicants, in order with number of applications in parentheses, are Philips (3,222 applications), Samsung (2,478), Siemens (1,850), BASF (1,474), Matsushita (1,395), Robert Bosch (1,166), LG (1,080), Sony (929), Nokia (873), and Fujitsu (819). A chart of the top 100 is provided at the link below.
Top 100 Webpage: LINK

2. European patent applications filed in 2007 per technical field and origin
Summary Webpage: LINK
Table (PDF): LINK
Chart (PDF): LINK

3. European patent applications 1998-2007 per country of residence of the applicant
Summary Webpage: LINK
Table (PDF): LINK
Chart (PDF): LINK

4. European patents granted 1998-2007 per country of residence of the patentee
Summary Webpage: LINK
Table (PDF): LINK
Chart (PDF): LINK

EPO Announcement: LINK

CIPO Changes TOB Practice

2009-02-16T10:17:00.001-05:00

The Canadian Intellectual Property Office ("CIPO") recently announced that its Trade-marks Opposition Board will be revising its procedures effective March 31, 2009. According to the CIPO announcement (link below), the new practice is provided in a formal notice entitled "Practice in Trademark Opposition Proceedings," with changes including (quoted directly from the announcement):

- "Simplifying and clarifying the Registrar's benchmarks for granting extensions of time.

- Providing guidance with respect to the granting of extensions of time in exceptional circumstances.

- Encouraging parties to pursue settlement and mediation early in the opposition proceeding.

- Introducing a new practice of granting extensions of time amounting to a cooling-off period for parties to pursue settlement and mediation. In particular, the new practice notice will allow the opponent to request one extension of time up to a maximum benchmark of nine (9) months on consent either prior to filing its statement of opposition or its Rule 41(1) evidence with the possibility for the applicant to also request one further extension of time up to a maximum benchmark of nine (9) months on consent either prior to filing its counter statement or its Rule 42(1) evidence.

- Introducing a new practice with respect to the scheduling of hearings."

These new procedures as detailed within the aforementioned Practice notice will effectively replace the current notice entitled "Procedure before the Trade-marks Opposition Board as of October 1, 2007."

CIPO Announcement: LINK
Current Practice Notice: LINK
New Practice Notice (as of 3/31/09): LINK

PPAC Committee Meeting to be Webcast this Friday

2009-02-12T09:47:00.000-05:00

On Friday, February 13th, the USPTO will be providing to the public, via webcast, the public sessions of the next Patent Public Advisory Committee (PPAC) meeting. The actual meeting, held at USPTO headquarters in Alexandria, VA, will commence at 9:30am local time and will continue to 3:00pm, with a public stream of the event available at a specific USPTO webpage (link provided below). According to the USPTO announcement (also linked below), the meeting will begin with a discussion of specific action items within the 2008 PPAC annual report, including the following (directly quoted/reproduced from the announcement itself):

A. Definitions of a "quality" issued patent, "quality" patent application and "quality" patent prosecution and examination.
B. Revisions to the current information disclosure statement requirements (e.g., Rules 1.98 and 1.99), including the ramifications of the Inequitable Conduct theory on any proposed rules.
C. Pre-examination interviews.
D. Nationwide USPTO workforce.
E. USPTO/University pilot program to offer loans to qualified engineering students willing to become examiners.
F. Market-based examination model.
G. Full utilization of foreign prior art searches and expanded IPC search capability.

The afternoon session will continue the same discussion and include details as to what the PPAC seeks to accomplish in 2009.

In addition to the webcast, if you are interested in listening to the event via listen-only conference call, dial-in instructions are provided within the USPTO announcement link provided below.

USPTO Announcement: LINK
Webcast URL: LINK
2007 PPAC Annual Report (PDF): LINK
2008 PPAC Annual Report (PDF): LINK
2008 PPAC Annual Report Scorecard (PDF): LINK

WIPO Meeting to Discuss IP as a Financing Tool

2009-02-09T09:45:00.001-05:00

The World Intellectual Property Organization (WIPO) announced last week that it will be holding a meeting next month at WIPO headquarters to discuss the use if intellectual property (IP) assets as a tool to raise financing. This meeting, to be held on March 10, 2009, will discuss using IP assets, namely "copyright, patents, trademarks, designs – as collateral, particularly for small and medium-sized enterprises which depend on know-how and IP assets to bolster company value" as referenced within the WIPO press release (link below). As further noted within the press release, "[u]sing untapped intangible assets to secure finance is all the more crucial for companies in the current economic environment," recognizing that "[i]ntangible assets are estimated to account for the bulk of corporate value today," and that "the financial potential of IP assets has yet to be fully realized, largely because systems of financial accounting remain primarily tailored to tangible assets. The continued growth and success of IP financing hinges on legal and regulatory support, the awareness of the banking industry and sophistication of capital markets."

In addition, and if you are in Indianapolis tomorrow evening, I will be one of three panelists at an evening presentation for the Indiana Biomedical Entrepreneur Network (IBEN) to be held at the Ruth Lilly Learning/Riley Outpatient Center Auditorium on the Indiana University Purdue University Indianapolis (IUPUI) campus. As noted within the IBEN seminar webpage (link below), "[t]he program will be a panel discussion focusing on the start-up company and the importance of protecting its intellectual property, reasons to secure formal IP protection, common strategies employed by companies, the importance of IP to investors, and recent changes in patent law and the potential impact." The presentation, as referenced above, will include a discussion of leveraging a company’s IP assets, covering a similar scope as the upcoming March WIPO meeting. The other two panelists at tomorrow evening’s seminar are Melinda Schriver, President of LacPro Industries, LLC, and Dustin DuBois, a partner at my firm in the Private Equity and Venture Services Group. This event will be moderated by Michael Swift, a partner at Ice Miller LLP in the Intellectual Property Group. I hope to see you there.

WIPO Press Release: LINK
IBEN Website: LINK
IBEN Seminar Webpage: LINK

USPTO Concludes Continuing Education Pilot Program

2009-02-05T10:10:00.000-05:00

On Monday, the USPTO announced that it "successfully" tested the delivery of its own continuing education materials to patent practitioners through its Learning Management System. Last fall, the USPTO allowed over 850 patent attorneys and agents to participate in the pilot program, which included courses on how the USPTO handles patent applications post-KSR, common errors made by patent practitioners in petitions practice, and how the USPTO handles electronic signatures and powers of attorney. Although the number of patent attorneys outnumbered the number of patent agents by more than three to one, the program completion rate was slightly higher for patent agents (83% vs. 76%). According to the USPTO announcement (link below), "Feedback provided by the volunteers gave high grades for course content, but noted a number of areas where delivery of the courses through the Learning Management System could be improved. The USPTO is working on system improvements to address concerns and suggestions noted during the CEP Pilot Program. Final rules concerning Continuing Education for Practitioners are currently under consideration. Further announcements will be made as developments occur."

USPTO Announcement: LINK

USPTO to Host Deferred Patent Examination Roundtable

2009-02-03T10:31:00.001-05:00

In the January 28, 2009 Federal Register, the USPTO announced that it will be hosting a roundtable event to discuss the topic of deferred patent examination. According to the Federal Register (excerpt link below), the roundtable will be held on February 12, 2009, from 9 a.m. until 12:30 p.m. at USPTO headquarters in Alexandria, VA, and will provide a select number of public representatives the opportunity to participate and share their views on examination deferrals. As noted in the excerpt, the roundtable is being conducted "to determine whether the support expressed for deferral of examination is isolated or whether there is general support in the patent community and/or the public sector generally for the adoption of some type of deferral or examination," noting that "many intellectual property (IP) offices that substantively examine patent applications do not perform a substantive examination on every patent application that is filed in the respective office." The USPTO is accepting participation requests through 5 p.m. this Thursday, February 5th.

As a side note, the USPTO actually does have a procedure in place (as noted within the excerpt link below) to defer substantive examination for up to three years from the earliest filing date for which a benefit is claimed under Title 35 of the U.S. Code. Since November 29, 2000, which was also the effective date of the USPTO eighteen month publication rule, less than 200 applications have utilized this deferral procedure (provided under 37 C.F.R. § 1.103(d)).

Federal Register Excerpt (PDF): LINK
37 C.F.R. § 1.103(d): LINK

USPTO/KIPO PPH Now Permanent

2009-01-30T09:30:00.001-05:00

The USPTO and the Korean Intellectual Property Office ("KIPO") collectively announced that their original pilot Patent Prosecution Highway ("PPH") program will be implemented full time starting on January 29, 2009. According to the USPTO, and under this PPH, "an applicant receiving a ruling from either the KIPO or the USPTO that at least one claim in an application is patentable may request that the corresponding application filed at the other office advanced out of turn for examination," and "[b]y basing the prosecution in the second office on patentable results from the first office, applicants can expect to obtain patents in both offices faster." If you have used the USPTO-KIPO PPH, or any other USPTO PPH, please post a comment to this blog post to share your experiences with the program.

USPTO Announcement: LINK
USPTO-KIPO PPH Webpage (via USPTO): LINK
USPTO-KIPO PPH Webpage (via KIPO): LINK
USPTO-KIPO PPH Request Form (PDF, via USPTO): LINK

EPO Announces New Fee Structure Effective April 1, 2009

2009-01-27T09:43:00.001-05:00

On Monday, the European Patent Office (EPO) provided a formal notice via the EPO website regarding significant changes to its current fee structure. According to the EPO, "Those aspects of the new fee structure described under points 3.1 to 3.4 below (two-tier structure of claims fees, additional fee on filing, flat designation fee, flat fee for grant and publication) apply to European patent applications, including European divisional applications and new applications under Article 61(1)(b) EPC, filed on or after 1 April 2009 and to international applications entering the regional phase on or after that date. European patent applications filed and international applications entering the regional phase before 1 April 2009 remain subject to the old fee structure, and so for these applications the relevant provisions of the Implementing Regulations and the Rules relating to Fees as in force until 31 March 2009 will continue to apply."

A few of the specific fee highlights are presented below.

1. Two-tier system of claims fees: Since April 1, 2008, an applicant for patent with the EPO receives the first 15 claims as part of the original filing fee, and the applicant incurs a fee of EUR 200 for each claim over 15. However, as of April 1, 2009, the additional fee of EUR 200 will only apply to claims 16 through 50, and any claim over 50 will cost EUR 500 per claim.

2. Excess page fees: For applications comprising more than 35 pages (with specific page exclusions referenced in the links below), each application page over 35 will cost EUR 12.

3. Flat designation fee: For all European patent applications filed and international applications entering the regional phase on or after April 1, 2009, an applicant will incur a flat designation fee of EUR 500, covering ALL contracting states in Europe unless the applicant expressly withdraws specific states.

4. Flat fee for grant: As the EPO will institute excess page fees at the time of filing, there will be no page fees payable at the time of grant for all European patent applications filed and international applications entering the regional phase on or after April 1, 2009.

Additional information regarding these and other EPO fee changes are provided in the first link below, and the official Administrative Council Decisions supporting such fee changes are also linked below.

EPO Notice: LINK
December 14, 2007 Administrative Council Decision: LINK
October 21, 2008 Administrative Council Decision: LINK
December 9, 2008 Administrative Council Decision: LINK

JPO Updates Patent Guidelines

2009-01-23T13:20:00.000-05:00

The Japanese Patent Office ("JPO") announced yesterday that it has revised its "Examination Guidelines for Patent and Utility Model" having an original effective date of December 28, 2000. Japanese Guidelines are provided within ten distinct parts, including Specification, Requirements for Patentability, Amendment of Specification and Drawings, Priority, Special Application, Patent Term Extension, Examination Guidelines for Inventions in Specific Fields, Foreign Language Application, Procedure of Examination, and Utility Model. While the Guidelines do not show the "redlined" changes, the individual Guideline Parts and Chapters are available at the first link below in their updated form in PDF format. I note specifically that Part VII (Examination Guidelines for Inventions in Specific Fields) contains three Chapters for specific inventions, including Computer Software-Related Inventions, Biological Inventions, and Medicinal Inventions, each having their own examination requirements.

(As an aside, and while many patent practitioners (including myself) rely on the guidance of their foreign agents, a general understanding of foreign patent practice can be most helpful. As noted within my brief bio on the DDIP blog, most of my professional time involves preparing and prosecuting life sciences patent applications, including those in the medical device field. After handling a good number of foreign prosecution matters, and with a good working knowledge of foreign patent practice in a handful of countries, I have learned, for example, to tailor the claims of each foreign application for initial prosecution in those countries. While I continue to seek input from my foreign agents on each matter, I know that the information being shared with them at the time of entering the national stage is at least in a form that will facilitate substantive examination, and, using Europe as an example, multiple dependent claim practice may be implemented as appropriate to avoid prohibitively high excess claim fees. Your clients will appreciate your extra efforts in this regard, especially in cases where currency exchange rates do not work out in you client’s favor.)

JPO Examination Guidelines Webpage: LINK
JPO Website: LINK

Monday AND Tuesday are USPTO Holidays

2009-01-19T10:06:00.002-05:00

If you electronically filed any patent documentation through EFS-Web last week, you likely saw the following notice:

"Advisory (9JAN2009): January 19-20, 2009 are Federal holidays within the District of Columbia, under 35 U.S.C. 21(b) because January 19, 2009 is Martin Luther King, Jr’s birthday and January 20, 2009 is Inauguration Day. Any action or fee due on January 17-20, 2009, is to be considered timely if the action is taken, or the fee paid, on the next succeeding business day (January 21, 2009) which is not a Saturday, Sunday, or a Federal holiday. See MPEP 710.05 [and TMEP 308] for more information. The Electronic Business Center (EBC) will be closed on January 19-20, 2009… EFS-Web will be available on January 19-20, 2009."

In addition to this notice, the USPTO made available a corresponding announcement substantially similar to the foregoing but also including the following business-related information:

"Correspondence deposited in the Express Mail Service of the United States Postal Service (USPS) will be considered filed on the date of deposit (as shown by the "date-in" on the Express Mail mailing label) with the USPS. Any paper or fee properly deposited in the Express Mail Service of the USPS on Monday, January 19, 2009, or Tuesday, January 20, 2009, will be considered filed on its respective date of deposit in the Express Mail Service of the USPS (as shown by a "date-in" of January 19, 2009, or January 20, 2009, on the Express Mail mailing label, respectively)."

In addition,

"Patent and trademark-related correspondence transmitted electronically to the USPTO will be considered filed in the USPTO on the date the USPTO received the electronic transmission. Any patent and/or trademark-related correspondence transmitted electronically to the USPTO on Monday, January 19, 2009, or Tuesday, January 20, 2009, will be considered filed in the USPTO on the date the USPTO received the complete electronic transmission. Correspondence successfully received by the USPTO through the patent Electronic Filing System (EFS-Web) will receive the date as indicated on the Acknowledgment Receipt."

USPTO Announcement: LINK
35 U.S.C. § 21: LINK
MPEP § 710.05: LINK
TMEP § 308: LINK

EPO to Replace Corrupt U.S. Assignment Data

2009-01-14T10:19:00.001-05:00

On Friday, the European Patent Office (EPO) announced that due to a number of corrupt U.S. assignment records within the PRS legal status database (espacenet/OPS), each of the over 6.4 million assignment records will be deleted from the system next week and replaced with reloaded assignment data the first or second week in February. As referenced within the EPO announcement (link below), "[t]he erroneous data cannot be corrected manually mainly due to the fact that it would be practically impossible to separate each and every faulty record from the correct entries." The announcement further notes that the reload of data could take several months, and that the current codes US AS01 through US AS99 will be permanently removed and replaced with a single code US AS. The EPO also provided an example of a corrupt U.S. assignment record in need of correction (second link below).

EPO Announcement: LINK
Corrupt Record Example (PDF): LINK

UPDATE - Additional USPTO Fee Changes Take Effect Today

2009-01-12T10:13:00.001-05:00

As noted in my previous blog post, the USPTO introduced seven (7) patent fee changes effective January 1, 2009. As noted in a recently-updated fee schedule taking effect today (January 12, 2009), three (3) additional fee changes have been implemented, also impacting PCT applications filed with the U.S. as a receiving office. A summary of the new fee changes is as follows:

Fee Code 1601 (37 C.F.R. 1.445(a)(1))– PCT Transmittal Fee – DECREASED from $300 to $240

Fee Code 1602 (37 C.F.R. 1.445(a)(2)) – Search fee – regardless of whether there is a corresponding application (see 35 U.S.C. 361(d) and PCT Rule 16) – INCREASED from $1,800 to $2,080

Fee Code 1602 (37 C.F.R. 1.445(a)(3)) – Supplemental search fee when required, per additional invention – INCREASED from $1,800 to $2,080

Current USPTO Fee Schedule (January 12, 2009): LINK
Prior USPTO Fee Schedule (January 1, 2009, cached): LINK