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At last, the PCT sets out on the Patent Prosecution Highway…

At last, the PCT sets out on the Patent Prosecution Highway…

As discussed here, a fairly serious limitation of existing Patent Prosecution Highway (PPH) programs is that PCT applications can’t form the basis for a PPH accelerated examination request.  This has always seemed a slightly artificial restriction to me.  Most national patent offices already re-use the results of their own PCT searches during post-national phase search […]

“First to File” – Already a Practical Reality for Many US Applicants?

“First to File” – Already a Practical Reality for Many US Applicants?

The proposed change to “first to file” in the USA is serious, fundamental, and deserves the level of scrutiny it’s presently receiving in many forums. Indeed, the first blog post by David Kappos as USPTO Director commented specifically on this issue, showing he appreciates its importance. (Poor guy, he then got quickly criticized on a […]

FREE Upcoming PCT Seminars by WIPO

FREE Upcoming PCT Seminars by WIPO

WIPO is planning two free seminars next week – in Baltimore on Tuesday, Nov 10th and in Las Vegas on Friday, Nov. 13th.  Visit the WIPO events page for details and registration.

The Patent Prosecution Highway: PCT Ally or Enemy?

The Patent Prosecution Highway: PCT Ally or Enemy?

Overshadowed by recent patent examination backlog discussions, a series of bilateral agreements, known as the Patent Prosecution Highway (PPH), has quietly been making progress on work-sharing between patent offices. The PPH allows fast-tracking of an application in one country, based on the results of examination in another. It’s been argued by some that the PPH […]

Controlling Outside Legal Costs

Controlling Outside Legal Costs

At the ACC’s Annual Meeting in Boston, the 2009 ACC/Serengeti Managing Outside Counsel Survey results were announced and managing outside legal costs is back in the #1 spot, over compliance concerns. See the full announcement. I think we can safely speak for most of our clients and say we wholeheartedly agree!

BRIC Countries – IP Concerns?

BRIC Countries – IP Concerns?

Our clients often ask us about the value of IP protection in countries like China or India (or Russia and Brazil, the other “BRIC” countries), due to a perception that IP laws are relatively weak there. While we don’t give advice about country selection, consider this approach: look how far China has come in IP […]

Part III of III: Where to enter national phase?

Part III of III: Where to enter national phase?

Part III: Where to enter national phase?   “If you build it…” We’re sometimes surprised by how often applicants say they’re filing in a particular country simply because that’s where they intend to manufacture the product. If money is no object, there’s nothing wrong with this approach. However, unless there is something special about that […]

Part II of III: Where to enter national phase?

Part II of III: Where to enter national phase?

Part II: Where to enter national phase?   Competition Where are the applicant’s competitors operating? Particularly in high-tech and fast-moving fields, markets are far from established, and you may not yet be competing directly with your competitors in some markets. Don’t wait until you’re both there slugging it out to consider extending patent protection into […]

Part I of III: Where to enter national phase?

Part I of III: Where to enter national phase?

You know the story: about 18 months ago you filed a PCT application designating over 130 countries and regions. Now national phase deadlines are fast approaching and you or your client needs to make a decision about which countries and regions should be kept alive by entering the national/regional phase. Going into all countries would […]

Various Countries, Various Claims Issues

Various Countries, Various Claims Issues

The types of claim amendments and additions that can be made vary radically from country to country. For example, Korea is very restrictive about claim amendments, and you can assume that broadening claim amendments will be rejected. In Korea, it was necessary for our client (see prior blog post) to enter the national phase individually […]

Saving Money With Co-Pending PCT Applications

Saving Money With Co-Pending PCT Applications

Believe it or not, in some cases it can make good financial sense to let co-pending PCT applications lapse. It must be remembered that a PCT application is actually a bundle of national applications. This means that all the advantages and disadvantages of individual countries’ patent systems need to be taken into account when amending […]