Posted by Elizabeth Curtin on

Guest post by John Nemazi, Co-chair of Brooks Kushman's patent prosecution group:

On February, 13, 2015, the U.S. took a major step towards implementing the Hague Agreement Concerning the International Registration of Industrial Designs by depositing an instrument of ratification with World Intellectual Property Organization (“WIPO”). As a result, the treaty – which the U.S. initially signed in 1999 – will go into effect for U.S. applicants on May 13, 2015. 

The Hague Agreement establishes a streamlined, international system for filing applications to protect industrial designs, such as product configurations and surface ornamentation. Instead of filing separate applications in each country where protection is required, an applicant will be able to file a single, standard format application with WIPO designating the jurisdictions where proceedings are to be initiated. A single application may include up to 100 different designs (if they all belong to the same class) and may designate any number of contracting countries or international organizations, such as the European Union.

In addition, the Hague Agreement and its implementing legislation, the Patent Law Treaties Implementation Act of 2012, make several important substantive changes to U.S. law and procedures affecting design patents. These changes include: extending the design patent term to 15 years, publishing international design applications, and creating provisional rights based on published applications. 

To see the complete article, please read on here

Posted by Elizabeth Curtin on

 Good afternoon. Here are the latest headlines in foreign patent filing news for the week of February 23rd:

  • According to the European Patent Office medical technology topped the list of technical fields with the highest volume of patent applications filed.
  • The EPO also released their completed 2014 Annual Report. A record number of total filings was reported (274,174), an overall increase of 3.1%. Read the entire report here
  • In case you missed it: Read about the latest updates regarding the America Invents Act and learn how to plan for the large volume of filings expected to hit in September and October.
  • From the USPTO: CFO Tony Scardino recently published their fiscal year 2016 Congressional Budget Justification. Read more here. 

Follow us on Twitter @inoviaIP for more patent updates and check back next week for more updates.

Posted by Elizabeth Curtin on

Good afternoon! We are attending numerous events from Stockholm to San Diego throughout the upcoming months. There's a good chance we might be in your area. So read on and get in touch with an inovia office near you to schedule a meeting:

International Women's Leadership - February 24th - London, United Kingdom

This forum will discuss Intellectual Property developments in Europe and provide an opportunity to listen and mingle with thought leaders in the IP field. Topics range from litigation and patent prosecution to copyright and trademark protection.

Nordic IPR - March 24-26 - Stockholm, Sweden

This is the longest running IPR forum in the Nordic region. Discussion formats, roundtables, panel debates and networking opportunities ensure that this is not one to miss!

Intellectual Property SpringPosium 2015 - April 10-11 - Adairsville, GA

Once again we will be sponsoring at the IP SpringPosium in Georgia. Here, you'll be able to earn CLE credit, network and relax in a beautiful resort in the mountains of Adairsville. 

INTA Annual Meeting 2015 - May 2-6 - San Diego, California

Probably the biggest IP event in the world, INTA is returning to the United States this year. We will be sending five team members to San Diego to attend educational sessions, meet with clients and prepare for another great year in Intellectual Property.

IPBC Global 2015 - June 14-16 - San Francisco, California

The IP Business Congress Global returns to the Bay Area after four years. The unitary patent system and heightened regulatory scrutiny throughout IP will be two major points of discussion at this years conference.

For links to register, please visit our events page and follow us on Twitter @inoviaIP for continuous updates!

Posted by Elizabeth Curtin on

Although the America Invents Act (AIA) involves US laws, the ramifications have been relevant to applicants all over the world for nearly two years. When the final changes of the AIA came into effect on March 16, 2013, applicants scrambled to file in large numbers as the Act included a number of provisions that would make it more difficult to obtain patent protection in the United States.

Read on to see how the uptick in filing numbers prior to March 16, 2013 is now contributing to a higher-volume filing period in September and October of 2015.

First, a bit of background on the America Invents Act 

Before we discuss an increase in filing numbers this fall, here is a bit of background on the America Invents Act. One of the most significant changes that occurred in implementing this new law was that the US lost its unique status as a first-to-invent jurisdiction. Previously, patent rights were granted to the first inventor who conceived of the invention and reduced it to practice (or diligently worked towards reducing it to practice). Starting on March 16, 2013, the first inventor to file got the patent rights. Now, the date of invention is irrelevant.

This change was monumental for the United States, as it aligned the US with almost every other country in the world. The next change that occurred on March 16, 2013 (hard to believe almost 2 years ago!), was the definition of prior art for assessing patentability. Previously, prior art included various uses (including sale) in the US, or written disclosures anywhere in the world. The AIA changed this so that any form of disclosure anywhere in the world forms part of the prior art.

Lastly, the change to first-inventor-to file meant that interference proceedings were no longer required. Instead, a derivations proceeding was available. This enabled inventors to challenge the owner of a patent with an earlier filing date, where the challenging inventor believed the earlier filer derived the invention from the challenging inventor.

Continue reading...
Posted by Elizabeth Curtin on

Good morning and Happy Friday. We hope everyone is staying warm in the midst of these freezing temps in New York City. Read on for the latest updates in patent news:

  • IP-driven shareholder activism is at an all time high, with many shareholders realizing that there is plenty of money to be made from strong Intellectual Property assets.
  • Our friends at RWS Group recently released this article. They look at China as a growing patent market for translations and filings during the next five years.
  • An innovator that was pushed from the market is suing Apple and Best Buy for infringement. This article debates whether Comarco, Inc, the company suing these two giant companies, is a patent troll. Read on.
  • inovia news: We just released our brand new overview video. Watch now.

Have a great weekend. Don't forget to follow us on Twitter @inoviaIP if you haven't already. 

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 this month's edition:

Meeting of International Authorities

The 22nd Meeting of International Authorities under the PCT was held in Tokyo, Japan from February 4th to 5th. The meeting discussed the following 5 issues as possible areas of further work:

1. Transfer of search fees and search copies via the International Bureau (IB)
2. Mandatory replies to negative indications by the ISA/IPEA on national phase entry
3. Formal incorporation of the Patent Prosecution Highway (PPH) into the PCT
4. Review and identification of reservations
5. Mandatory written opinion in Chapter 11

Other very valuable things were discussed, so please click here to read up on the entire meeting agenda.

Continue reading...
Posted by Elizabeth Curtin on

Users of the European patent system will soon be able to validate their applications and EPO granted patents outside the European Patent Organization. Morocco will become the first non-member country of the EPO to validate the legal effects of a European patent on its territory, beginning March 1, 2015. 

According to EPO President Battistelli, "This is a historic step for the European patent system, and it brings to 41 the number of countries for which patent protection can be obtained simultaneously with a single European patent application."

Starting March 1, 2015, those individuals and companies filing a European patent application will be able to request validation for Morocco against the payment of a fee. European applications will have the same legal effects there as Moroccan ones and will be subjected to Moroccan patent law.

President Battistelli went on to say, "Morocco's strategic vision with regard to building up a national patent system that is firmly anchored in the international system." This will surely strengthen the economic benefits of the Moroccan patent system and increase the attractiveness for foreign companies and individuals to invest in the territory. 

Posted by Elizabeth Curtin on

Good morning, roundup readers. We have had a busy week here at inovia and compiled the latest headlines in foreign patent filing for your consideration. Please read on for the latest news:

  • The European Patent Office (EPO) released initial predictions of patent filing numbers from 2014. Last year, they received over 273,000 filings, an increase of 3% from 2013.
  • More news out of the EPO: Morocco became the first non-member country of the European Patent Organization to validate the legal effects of a European patent in its territory, setting the stage for other territories to do the same.
  • Yesterday, Brookings Institution hosted a discussion with Michelle Lee, the current Deputy Director for the United States Patent and Trademark Office (USPTO). Lee on patent trolls (a term she isn't fond of): "I've seen the effects of patents that should have not have issued, or that have issued with a scope that is too broad. There is also a cost associated with that as well. On average, a start-up may get between $10 to $15 million to last over a number of years, and there are statistics that indicate that patent litigation can cost well over $1 million. So you can see if there is abusive litigation or a patent that should not have issued, there is a cost to our businesses." Read more of Michelle Lee's comment from this presentation here.
  • inovia news: Yesterday, we released a Press Release, "Top PCT National Stage Entry Countries for inovia Clients in 2014". Check out the entire release now.

Have a great weekend, see you back here next week!  

Posted by Elizabeth Curtin on

The European Patent Office (EPO) received over 273,000 patent filings last year, an increase of 3% from 2013, and the highest recorded numbers in the organizations history. Please note that these are still rough figures, as the final report will be published on both individual countries and industry sectors on February 26, 2015.

Preliminary figures show that patent filing growth was seen from numerous countries including the United States of America (up 6.7%), China (up 16.8%), South Korea (up 1.4%), while a slight drop was seen from Japan (down 3.8%).

EPO President Benoit Battistelli explained on the initial numbers, "These figures are only a first estimate, but they confirm Europe's continued strength as a hub of innovation. Demand for patents at the EPO is up for the fifth year in a row, reaching a new peak."

We, for one, are looking forward to the final report, and will be sure to share the results once published in late February. As always, feel free to follow us on Twitter @inoviaIP or on our LinkedIn page

Posted by Elizabeth Curtin on

Good morning, I hope everyone is having a great Friday and ready for the long weekend! Please read on for the latest headlines in foreign patent filing from the week of January 12th:

  • For the 22nd year in a row, IBM received the most U.S. patents awarded in 2014 - 7,534 to be exact. This was the first year a company surpassed 7,000 patents in a single year!
  • Since 2008, statistics provided by the United States Patent and Trademark Office (USPTO) show that patents granted in gas and oil sectors have grown by double digit rates.
  • France's IP office recently rejected 50 trademark applications for "Je suis Charlie" since the terrorist attacks on January 7th. 
  • The Patent Prosecution Highway pilot agreement between the Canadian Intellectual Property Office and the European Patent Office came into effect on January 6, 2015. 

That's all for this week! Follow us on Twitter now for continuous Intellectual Property updates.