Posted by Elizabeth Curtin on

We are excited to announce that we will be attending the upcoming PCT seminars in San Francisco this September, hosted by the PCT Learning Center. Since its inception, hundreds of IP firms and Fortune 500 companies have benefited from PCT Learning Center programs, which focus on the Patent Cooperation Treaty as a preferred international patent filing system. 

The two days of PCT training in San Francisco are outlined below:

PCT Boot Camp -September 15, 2014

  • Target Audience: Those wishing to get started, or needing a PCT refresher

Advanced PCT Seminar - September 16, 2014 

  • Approved for 5.5 hours of California MCLE and focuses on advanced topics for the experience PCT user

If you or your colleagues will be in the San Francisco area September 15th or 16th, consider attending a professional PCT seminar, tailored to US practice. And for inovia clients and friends, you will receive a $25 discount for the Boot Camp and $50 off any advanced program. To take advantage of this offer, register for the programs online, then call 571-212-3868. 

Posted by Elizabeth Curtin on

Good afternoon, readers. This week, the U.S. Department of Commerce's United States Patent and Trademark Office (USPTO), announced that it will host an American Invents Act roadshow in seven cities throughout the country.  The roadshows will occur between September 16th - October 9th to increase awareness and understanding of the first Inventor to File provisions of the American Invents Act (AIA).

Stops will include Concord, New Hampshire; Madison, Wisconsin; Dallas, Texas; Silicon Valley, California; and Atlanta, Georgia.  USPTO campuses in Alexandria, Virginia and Denver, Colorado will also host the series. Please note that these forums are free and open to the public, and seating is available on a first come, first serve basis. This is a terrific way to learn more about provisions to the American Invents Act, specifically in regards to the First Inventor to File (FITF). All shows will have the same agenda including statistics to date and prosecuting applications filed under the FITF. 

For all details relating to the roadshow, please click here. Also, follow us on Twitter @inoviaIP for more info relating to the USPTO and foreign patent filing. 

Posted by Jeff Shieh on

An agreement was recently signed on July 3rd between EPO President Benoit Battistelli and Tunisian Minister for Industry, Energy and Mines Kamel Ben adding Tunisia as an EPO extension state. Once this agreement has been ratified, applicants will be able to validate their granted patents into Tunisia, even though Tunisia is not actually a member of the European Patent Commission. Validated European patents in Tunisia would have the same legal status as locally filed patents and subject to Tunisian patent legislation. So is Tunisia on your foreign filing radar?

For more information on the European validation process, visit our website or download our guide.

Posted by Jeff Shieh on

After filing your PCT application, an International Searching Authority (ISA) will perform a search of relevant patent documents and references. Additionally, the ISA will issue a preliminary and non-binding review of the claims, analyzing them to see if they satisfy novelty, inventive step and industrial applicability standards. The International Search Report and Written Opinion are sent out approximately 4 months after the PCT filing date (16 months after the priority date). 

If desired, the applicant can request further international searches from one or more ISAs which have indicated their availability to perform supplemental searches. There are two fees for requesting the supplemental search – a search fee set by the ISA performing the additional search and a CHF 200 search handling fee to the International Bureau. Usually, this request is submitted after the applicant has received the International Search Report, but no later than 19 months after the priority date. The Supplemental International Search Report usually issues 28 months after the priority date, right at the time when the applicant is deciding where the application will enter the national stage.

The benefit of requesting a supplemental international search is pretty obvious. Having additional sets of eyes searching the prior art base means reducing the chances of any unanticipated prior art popping up during examination. Since foreign filings can be quite expensive, having a complete picture of the prior art and one’s likelihood to receive a patent can help an applicant formulate their strategy before entering the national stage. 

Posted by Elizabeth Curtin on

Good afternoon, friends! I hope everyone is getting ready for a great weekend.  Before you go, please take a look at the latest headlines in foreign filing news!

  • The two technology giants, Samsung and Apple, recently declared a truce on all non-US patent disputes.
  • Tesla got their trademark back! The dispute threatened to complicate the companies expansion into the world auto market. 
  • Adam Carolla won't back down from a patent troll! Even after the suit was dropped, the comedian hopes to make an example of Personal Audio by invalidating their patent.
  • inovia news: Have you downloaded our 5th annual IP Trends Indicator? Click here now to check out the most definitive resource for IP professionals!

Have a great weekend, readers. Please follow us on Twitter @inoviaIP for more updates. 

Posted by Elizabeth Curtin on

Hello everyone! Our friends at AFD China recently released their most recent newsletter.  Please see below for highlights:

  • SIPO of China announced that the Patent Prosecution Highway Pilot Program (PPH) between SIPO and UKIPO, IPO and PRV formally began on July 1, 2014. These program will run for 2 years, ending on June 30, 2016. 
  • The State Intellectual Property Office (SIPO) has partnered with the China Council for the Promotion of International Trade to lend its expertise to Chinese companies.  They will work together on 13 issues, including IP exchanges with foreign countries and managing IP training programs. 
  • Administrative departments in China dealt with almost 40,000 cases of infringement and counterfeiting from January - April 2014. 
  • The Central Reform Leading Group held its third meeting and discussed the hierarchy of China's IP courts. It was decided that to achieve consistency of the judgement on IP cases, three intermediate-level intellectual property courts will be set up in Beijing, Shanghai and Guangdong. 
  • On July 10th, the opening ceremony of the WIPO agency was held in Beijing. This is the fifth of its kind to be opened worldwide, after offices in the United States, Japan, Brazil and Singapore.

Thanks again to our colleagues at AFD China for issuing this very informative newsletter. For more updates relating to foreign patent filing, please follow us on Twitter @inoviaIP!

Posted by Elizabeth Curtin on

 We've compiled a shortlist of highlights from WIPO's PCT newsletter, an excellent resource for IP professionals and patent applicants looking to stay on top of changes to the PCT system. Please see below for a recap of the July - August 2014 edition: 

PCT Statistics 2013: The PCT Yearly Review was released, summarizing PCT activities and developments from 2013.  This publication contains filings by top countries of origin, by top applicants and by technical field. The 2014 edition also included a special theme relating to how universities and public research organizations use the PCT system.  Download the entire PDF version here.

Power of Attorney Waiver Notification under PCT Rules 90.4(d) and 90.5(c) (France):  The National Institute of Industrial Property (France), in its capacity as receiving Office, has informed the International Bureau that it waives the requirements under PCT Rules 90.4(b) and 90.5(a)(ii) to submit either a separate power of attorney or a copy of a general power of attorney, with effect from June 2, 2014. 

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Posted by Elizabeth Curtin on

Good morning, readers.  We hope everyone is staying cool as we head into the dog days of summer.  I've gathered some patent news for your consideration from the week of July 21, 2014: 

  • Trademark "squatting" is prevalent in China, preventing valuable foreign brands to use their own name in the country. 
  • Are all software patents doomed? The first application of the Supreme Court's Alice Corp. decision foretells trouble in the future. 
  • Batman celebrated his 75th birthday this year. A registered trademark was filed on June 25, 1940. You can see a picture of the original trademark below!


  • The EPO and Spain continued their cooperation on Latin America, as they met in Spain to sign an agreement to promote the quality and efficiency of the Latin American patent system. 

Please follow us on Twitter @inoviaIP for all IP related updates.  We'll see you back here next week! 

Posted by Elizabeth Curtin on

We have recently released our fifth annual U.S. Global Patent & IP Trends Indicator Report. To download a complete copy of the Indicator, please click here. This has become a definitive resource in the industry for identifying the trends having the greatest impact on the foreign filing strategies of U.S. patentees.

Please read on for key trends and findings from this year's report:

  • Patent Cooperation Treaty (PCT) use has remained steady - Almost all (96%) of respondents used the PCT for some or all of their filings in 2013.
  • IP budgets are increasing - Only 33% of respondents are working on a reduced IP budget this year, compared to nearly two-thirds of respondents from three years ago.
  • Outsourcing on the rise - More companies outsourced their foreign patent filing needs in 2013 compared to last year (nearly 10% in 2012 and growing to over 15% in 2013).

"We are pleased and excited to share the results of this year's 2014 IP Trends Indicator," Justin Simpson, Founder of inovia, recently remarked. "Since we started publishing this report over five yeras ago, much has changed in the way of outsourcing IP and foreign filing services. For the first time in years, IP budgets are increasing and the outlook for the future is positive."

Check us out on Twitter @inoviaIP for more updates, and download the complete report today!!

Posted by Elizabeth Curtin on

Good morning! Please read on for the latest headlines in foreign filing news for the week of July 14th:

  • Patent trolls are suing like it's going out of style! They now account for 67% of all lawsuits, extracting enormous payments from companies simply by claiming infringement.
  • The US Supreme Court rules that basic business methods are not patentable, even if computers are used to apply them.  
  • Tesla Motors is now fighting an entrepreneur who waited for the company to start selling their cars in China, and then sued for almost $4 million. 
  • The EPO President and Tunisian Minister for Industry have signed an agreement on the validation of European patents for Tunisia. 

Enjoy the weekend and follow us on Twitter @inoviaIP for more IP related upates!