We recently discussed options for speeding up grant of a European patent. As we mentioned, reasons to expedite grant include the existence of a potential infringer, or the need to obtain grant to enable licensing or sale.
Today, we'll take a look at what options are available in the U.S.
Accelerated Examination Program
At first glance, this sounds like a great option. You may pay a small fee (or no fee if your invention is directed to environmental quality, development or conservation of energy resources, or counter terrorism) and prosecution will generally be completed within 12 months.
There are, however, some very significant restrictions. The quid pro quo for quick prosecution is that you get to do most of the work that would otherwise be done by the examiner. That means:
- Showing how each feature of every claim is supported in the specification.
- Performing a search on each and very claim. This doesn't mean just presenting a few documents, either. You have to submit full details of your search statements.
- Explaining how each claim is allowable over the documents uncovered by the search.
Quite aside from the effort (and cost, given most applicants will use a patent attorney), there are significant concerns among many applicants that being required to be your own searcher and examiner represents a conflict of interest. You're basically being asked to characterize your invention's relationship with the prior art – something that is generally avoided by applicants as far as possible to avoid potential estoppel issues (“estoppel” in this context is the legal principle under which asserting something at one stage prevents you from arguing the opposite later. “File wrapper estoppel” means that if you say something on the written record during patent prosecution before the EPO, you will be prevented from asserting anything contradictory later, including during litigation, for example).
Hello everyone and Happy Friday! Take a look at the latest in foreign filing news for the past week:
- In Bowman v. Monsanto Co., the U.S. Supreme Court ruled that an Indiana farmer violated the principles of patent law.
- Throughout 2012, China made great improvements in IP enforcement and corporate management.
- A new study published this week by the EPO-UNEP found an untapped potential for Clean Energy Technologies in Africa.
- inovia news: Jeff Shieh, one of our Senior Patent Attorneys, looks at the growing demand for global patent protection.
Thanks for checking in this week! For more in patent related news, be sure to follow us on Twitter @inoviaIP.
The World Intellectual Property Organization (WIPO) has announced that Saudi Arabia will officially become the 147th Contracting State of the Patent Cooperation Treaty (PCT) on August 3rd, 2013. It's been eight months since the last country deposited its accession to the PCT - Panama became the 146th State to do so in September of 2012.
To put the vast coverage of the Patent Cooperation Treaty in perspective, take a look at WIPO's global map of current Contracting States below. To date, 75% of the world's countries are members of the PCT.
For those of you who may be interested in filing into Saudi Arabia, here are some facts and figures* on the PCT's newest member:
- Over the last 15 years, roughly 51% of patent applications filed into the country have fallen under a "chemistry" or "engineering" category.
- The top PCT applicant in 2011 was SAUDI ARABIAN OIL CO. with 50 published applications.
- The total number of IP filings in the country increased from 473 in 2007 to 1,067 in 2011 (a 126% increase).
*Source: WIPO Statistics Database
Which country do you expect to see added next? Please share your thoughts with us below!
With today’s international markets, foreign competitors and overseas manufacturers, it’s no longer sufficient to simply obtain patent protection in your home country. More and more applicants are filing abroad, resulting in record numbers of foreign applications. So what are the steps in filing your application internationally?
One way to file a patent application in a foreign country is by filing via the Paris Convention. Typically, applicants will first file a patent application in their home country. If that home country is a member of the Paris Convention, the applicant has 12 months to file a corresponding application with the patent office of another contracting State. Under the Paris Convention priority right, any later-filed application will be afforded the earlier filing date of the first application.
Hello friends and colleagues! Here is the latest in patent news for the week of May 6, 2013:
- Congratulations to Margaret Focarino who was named a Samuel J. Heyman Service to America Medal finalist this week.
- New legislation aims to eliminate the number of patent related lawsuits by changing the review process.
- A ruling out of New Zealand confirms that software will not be patentable in the country under these specific guidelines.
- Do you know any nominees worthy of being the 40th Annual Inventor of the Year?
Have a wonderful weekend and be sure to check in each Friday for the latest in foreign filing news. Also, make sure to follow us on twitter @inoviaIP!
A big congratulations is in order for Reinhold Cohn Group, whose two branches in Tel-Aviv, Israel have accumulated many prestigious honors over the past few months. As a whole, the Group was recognized by Dunn & Bradstreet as a leading IP firm in Israel in 2012.
One of the firm's operating arms, Gilat, Bareket & Co. received Tier 1 marks from several global publications including Managing Intellectual Property magazine, World Trademark Review and The Legal 500 who said the following, "Gilat, Bareket & Co. is arguably the best law firm in Israel for IP, and its lawyers provide absolutely excellent service."
Reinhold Cohn & Partners also received top honors from reputable international and local guides for categories including Patent Prosecution, Trademark Prosecution and Intellectual Property. Chambers & Partners, a leading global publisher of objective research on the legal profession, wrote this of the Group: "This firm is well known for its prolific filing practice, and is engaged by high-profile clients at both the local and international level."
From all of us on the inovia team, we wish Reinhold Cohn Group continued success in the years ahead!
Reinhold Cohn Group represents inovia's clients for PCT national phase, European validation and direct (Paris Convention) filings in Israel. For more information on the inovia agent network, please visit www.inovia.com.
Hi everyone! Take a look at some of the latest stories in foreign filing over the past week:
- Check out this 5-minute guide to Europe's newly-passed unified patent court system.
- Our own New York senator, Charles Schumer, introduced a bill this week that targets patent trolls.
- Here's a great article we found that details the (relatively-new) patent prosecution highway system.
- inovia news: A few members of our team attended an LES event last week to celebrate World IP Day and connect with fellow IP professionals in the city. Discussion topics included the America Invents Act, software IP rights and more.
To all of our friends en route to Dallas for INTA 2013, we hope to see you this weekend! We'll be tweeting @inoviaIP.
In 2012, China was the top-filing destination for inovia’s clients and it’s no surprise -- the market opportunity is just too large to ignore. But with opportunity comes risk and for years, enforceability issues in China have been among the hottest topics in IP.
Earlier this week I attended Managing IP magazine’s “IP in China: Growth & Opportunities for US Companies” event. A diverse group of law firm and corporate speakers were there to provide updates on China IP law and share best practices for accessing China’s huge market while protecting intellectual property rights.
Our associates in Israel, Reinhold Cohn & Partners, reported on a recent Israeli court decision pertaining to a missed national stage filing deadline. In the case of Mindcake LLC vs. Registrar of Patents, the Tel Aviv District Court refused the appeal from the Registrar’s decision to deny late national stage entry into Israel, ruling that the applicant did not meet the requisite standard of due care. Generally speaking, many patent offices will allow a missed filing deadline if the applicant can show that the failure to timely file occurred in spite of all due care being exercised by the applicant and its legal counsel.
Without going into the details of this particular case, the court found that by failing to respond to the Israeli counsel’s request for instructions, the US counsel had not met the requisite due care standard. And even though the application missed the 30-month deadline by merely 2 days, the court ruled that the length of the delay was irrelevant in their analysis. As a result, the PCT application was denied entry into Israel.
This case further stresses the importance of monitoring and meeting your patent deadlines. We speak with applicants all the time who underestimate the consequences of not filing in time. Actions, such as publishing your invention in a trade journal or filing a provision application, can have serious international ramifications. We hear from many inventors who say they’re delaying filing until they are “ready” to proceed. Often times, the clock is already ticking and it doesn’t stop just because the inventor’s not ready.
Want more information on the national/regional stage filing deadlines for PCT applications? Download a copy of our PCT national phase guide which provides specific filing details for 45 popular jurisdictions.
This time last year, inovia celebrated an important milestone. On the eve of World IP Day, we celebrated our 10th anniversary and took a trip down memory lane.
This year, we're celebrating World IP Day again, along with our 11th anniversary. Here's a shot of our New York team:
Many things have changed in the last year as we continue to grow:
- Our agent network now reaches 120 countries.
- In November we launched a direct (Paris Convention) filing service, to complement our PCT national stage entry and European validation services.
- The inovia.com community has grown to over 3,900 law firm, corporate, university and individual users who are using our technology to reduce the cost and administrative burden of their foreign filing work. Learn more about what our foreign filing portal can do for your practice.
World IP Day is celebrated each year on April 26 because it was on that date in 1970 that the World Intellectual Property (WIPO) Convention came into force. The day's purpose is "to promote discussion of the role of intellectual property in encouraging innovation and creativity."
Fun fact: inovia's technology, which streamlines the foreign patent filing process, is patent protected and is recognized by WIPO as a PCT notable invention.
We're looking forward to another great year! How are you celebrating World IP Day today?