IP5 Offices Agree on Joint PPH Pilot Program

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The five largest Intellectual Property Offices in the world – the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO), recently agreed to launch a pilot program scheduled to kick off in January of 2014.  This program, known as the IP5 Patent Prosecution Highway (PPH), aims to improve the accelerated treatment of patent applications between the five offices and encourages a global framework of work sharing.

According to the heads of these five offices, the primary goal of the PPH is to leverage procedures already in place which accelerate patent examination procedures.  Under the IP5, applicants who have been found patentable by one office may be allowed accelerated processing of their applications before the other countries.  In addition to fast tracking this process, the offices involved will exploit existing work results to the extent practicable. 

According to EPO President Benoît Battistelli, the program will have many benefits.  He states, “I am pleased that the first ever all-inclusive PPH pilot program is launched under the PCT framework. It is a very promising step on the way of facilitating the life of users in five big economic regions which represent 85% of the patents granted in the world.  While the program allows the offices to gain additional experience in utilizing each others available work, it will support the aim of promoting the PCT as the primary global framework for work sharing”. 

As Battistelli notes, the IP5 Patent Prosecution Highway program encourages a global commitment to improving and making patent filing more efficient.  For more information on the IP5 PPH pilot program, please contact Eugen Stohr at the EPO, estohr@epo.org. 

Check out the PPH archive of our blog for news about other recent pilot programs. And as always, learn more about inovia’s services by following us on Twitter @inoviaIP.

Friday Foreign Filing Roundup

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We’ve gathered up the latest in foreign patent filing news just for you:

  • Officials from 24 European member states signed the Unitary Patent Court (UPC) agreement this week.
  • A recent Reuters report showed a significant increase in patent application filings from the BRICK countries.
  • A new Patent Prosecution Highway (PPH) pilot program has commenced between the patent offices of Japan and Eurasia.
  • China is looking to double its invention patent filings by 2015, with a emphasis on research investment across all industries.

In other news: The new patent law changes under the America Invents Act are only weeks away from coming into force. Learn more>

Friday Foreign Filing Roundup

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Hi everybody! Here are some of the foreign filing stories we’ve gathered from the first week of March:

  • The EPO broke down statistics from a record-breaking 2012, highlighting the historical significance of the new unitary patent.
  • Three judges began work this week at Denver’s newly-opened satellite patent office.
  • A new patent prosecution highway program launched between the patent offices of Japan and Eurasia.
  • Samsung led the world in European patent filings in 2012, with “digital communication” patents as a group increasing by over 20%.
  • inovia news: We added many new countries to our global network over the past few months. For a complete list of the jurisdictions we cover, click here.

Have a nice weekend and don’t forget to follow us on Twitter @inoviaIP!

New PCT Patent Prosecution Highway Between Japan and Eurasia

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On February 15, a patent prosecution highway pilot program launched between the Japanese Patent Office (JPO) and the Eurasian Patent Office (EAPO). The new program allows applicants (from both countries) the opportunity to fast-track examination of their application if the invention is deemed patentable by either patent office. This PCT-PPH with the EAPO marks the 25th IP jurisdiction to form a partnership with Japan.

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WIPO’s World Intellectual Property Indicators 2015

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WIPO’s World Intellectual Property Indicators 2015 was released last month and provides a report covering various areas of intellectual property including patents, utility models and trademarks.

The data is drawn from national and regional IP offices, WIPO and the World Bank. We’ve included some patent highlights from the report below:

  • The top 5 offices in order: China, United States of America, Japan, Republic of Korea, European Patent Office
  • Top 5 technology fields in order: Computer technology, electrical machinery, measurement, digital communication, medical technology
  • Applications: 2.68 million (4.5% increase from last year)
  • Grants: 1.18 million (0.3% increase from last year)
  • In force: 10.2 million

In total, around 2.68 million patent applications were filed worldwide in 2014, up 4.5% from 2013. While this 4.5% growth in filings in 2014 is lower than the growth rate in each of the previous four years, China has consistently been the driving accelerator, accounting for 89% of growth.

The State Intellectual Property Office of China (SIPO) received the most applications by far, followed by the USPTO, JPO, KIPO and EPO respectively. SIPO, with 928,177 filings, received more applications than the combined total of the USPTO and JPO. If the trend continues, SIPO will become the first office to receive a million applications next year.

In 2014, the top five offices accounted for 82% of the world’s total applications, considerably higher than their 2000 share of 70%. To break it down even further – the top 20 list includes patent offices from thirteen high income economies, five upper middle income economies and two lower middle income countries. Nine offices were located in Asia, six in Europe and two each in North America, Latin America and the Caribbean. South Africa, ranked 23rd, was the highest placed office in Africa.

To download the entire report, click here.

Friday Foreign Filing Roundup

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Happy second day of spring, readers! Let’s dive right in, please see below for the latest in foreign filing news:

  • Your “March Madness” festivities might be infringing on a protected trademark.  The NCAA has a strict “trademark protection program” outlined on their website to protect the brand from becoming too generic.
  • This ambitious plan by the Japan Patent Office (JPO) looks to cut patent examinations lengths in half. This would reduce the average length of an examination from around 2 1/2 years to 14 months by 2023.
  • This newly introduced bill looks to end USPTO fee diversion, by placing fees in a separate fund to prevent them from being raided for other purposes.
  • With 2,309 filings under the PCT, ZTE was ranked No. 2 in WIPO’s number of patent applications in 2013, behind Panasonic Corporation at No. 1.

Enjoy this first weekend of spring!  I’ll see you back here next week with more Intellectual Property updates. Please be sure to follow us on Twitter @inoviaIP!

The Patent Prosecution Highway

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Dr. Michael Blaine Brooks, of the Law Office of Michael Blaine Brooks, delivered a presentation on “Advancing US Cases via the PCT-Patent Prosecution Highway” to the Ventura County (CA) Bar Association last week.  He was kind enough to share the material with us and we are pleased to have him author an article for the foreign filing blog this week.

Two very helpful things were announced this summer by the USPTO: (1) as of May 25, 2010, the petition fee for the Patent Prosecution Highway (PPH) was waived, and (2) as of June 1, 2010, the PCT Patent Prosecution Highway (PCT-PPH) includes the Korean Intellectual Property Office (KIPO).

This is good news.  Now, an International Search Report (ISR) and written opinion that finds one or more claims of a PCT “international” application patentable can be used to advance a US counterpart non-provisional application in the USPTO’s examination queue.

However, there are a couple of restrictions: 

(a) the claims of the US non-provisional patent application must correspond to, or be narrower than, the claims found patentable in the PCT application.

(b) the PCT International Search Authority (ISA) must be the European Patent Office (EPO), KIPO, or the Japanese Patent Office (JPO).

Presently, KIPO is selected as the ISA in about 30% of PCT applications originating from the US.  In addition, KIPO is the least expensive ISA available to US PCT applicants.  Moreover, it is fully competent to search all classes of US statutory subject matter (in distinction to the EPO, which won’t search in classes such as those relating to business methods and certain types of software).

Unlike the USPTO and EPO (at times), KIPO also provides relatively timely ISRs.  Applicants can expect a search report and written (patentability) opinion either: nine months from the filing of the PCT application without a Paris Convention priority document; or within about sixteen months of the PCT application’s earliest Paris Convention priority date.

If only a subset of the PCT application’s claims are found patentable by the EPO, JPO, or KIPO as the ISA, the US practitioner may consider conforming a previously filed counterpart US application via a preliminary amendment before filing the PCT-PPH request. A PCT Chapter II demand could be filed with amended claims, but the international preliminary examination report for the PCT-PPH request may not be available until 28 months from the PCT application’s Paris Convention priority date.

The US practitioner should be mindful that “102(e)-like” references are not used in determining PCT patentability (although they may be specifically mentioned in the search report), and means-plus-function claims will be read more broadly by PCT examiners than those at the USPTO.  So, while the PCT application extends prospective international patent rights and the PPH provides a process for advancing a corresponding US application, the PCT-PPH advancement process is not a full faith and credit process of US claim allowance. That is, a favorable ruling of patentability for at least one claim of the PCT application does not provide a basis for automatic allowance of the corresponding US case.

Michael Blaine Brooks, PhD, PE(EE), holds his JD from Pepperdine University School of Law and BS, MS & PhD degrees in engineering from UCLA. Dr. Brooks actively participates in furthering excellence in intellectual property practice as Adjunct Professor of Patent Law at Pepperdine, and a member of the Ventura County and the San Fernando Valley Bar Associations. He heads a private intellectual property law firm in the Greater Los Angeles area. (http://www.brooksiplaw.com/)

Click here to read other blog articles on the PPH.

Patent Office Fee Changes – Two Opposite Approaches

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Proposed Changes in the USPTO

In 2009, the USPTO faced both an 8% budget decrease from the previous year ($1.43 billion vs. $1.31 billion) and the pressure of reducing an ever-growing backlog of applications.   

In response, the USPTO has three proposed plans to increase its funding.

  • a 15% increase for nearly all fees,

  • allow the USPTO to set its own fees, and

  • allow the USPTO to retain and spend all its collected fees even if it is over-budget, rather than diverting a portion to the general budget.

Currently, these proposed plans are set forth in President Obama’s $2.3 billion budget request for the U.S. Patent Office for the 2011 fiscal year. 

Deferred Examination Fee Payment at the JPO

In contrast to the USPTO’s proposed fee increase plans for 2011, the Japanese Patent Office has instituted a policy which delays the initial financial impact for patent applicants.   Aimed at increasing the number of patent applications filed during this time of economic distress, applicants now have the option of filing a request to defer payment of the examination fee by a period of one year.  Since examination fees in the Japanese Patent Office can average well over $2000 US, many applicants are embracing this opportunity to avoid payment, at least for the time being.   

This new policy went into effect on April 1, 2009 and applies to all applications with examination fees due up to March 31, 2011.  Furthermore, payment of the deferred examination fee is not required should the applicant choose to abandon the application during this initial year.

So What’s Next?

So far, it appears that Japan’s deferred exam fee policy measure, at least in part, has stimulated the number of patent filings in the JPO.  While nearly all other countries have observed decreases in patent filings in the last year, applications filed in the JPO have increased by 3.6% since 2008.  But will this growth continue through the policy’s final year? 

As for the proposed USPTO changes, whether or not they will be able to increase revenue remains to be seen.  It has been suggested that any potential increase in revenue based on higher fees would actually be negated by a decrease in filed applications and continued prosecution.  As an unspoken side benefit, increased fees would likely reduce the backlog of pending cases, as fewer applications are filed and pending cases are abandoned.  However, the benefit of reducing backlog through higher fees (rather than through improving efficiency and hiring more Examiners, which is also proposed) is questionable, at best. 

Needless to say, the next few years should be interesting as patent offices around the world struggle to balance the need to increase their revenue and efficiency with their duty to encourage patent filing and foster innovation.  

Friday Foreign Filing Roundup

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Hello everybody! Here’s a look at the foreign filing/patent-related news for the week of June 11th:

  • EPO President Benoît Battistelli is calling for a stronger framework of IP rights for inventors, including “a cost-effective and legally safe patent system.”
  • David Kappos of the USPTO recently listed 12 reasons why his office is moving to Cooperative Patent Classification (CPC), a joint initiative shared with the European Patent Office.
  • After more than 5 years of implementation, the Japanese Patent Office (JPO) and the Korean Intellectual Property Office (KIPO) have agreed that July 1st, 2012 will be the official start of the PCT Patent Prosecution Highway pilot program between the two countries. 
  • The U.K. and the U.S. are joining forces to enhance the international patent filing system, beginning with improvements to the UKIPO’s Fast Track System, to create a more flexible and efficient PCT process for patent applicants.
  • And the winners of the EPO’s European Inventors Award 2012 are…Congratulations to all!

inovia has an abundance of resources relating to PCT national phase entry and European validation. Contact one of our offices today for more information!

International Patent Offices Celebrate the Past and Look to the Future

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The patent offices of Europe (EPO), the United States (USPTO) and Japan (JPO) met this week in Kyoto, Japan, commemorating the 30th anniversary of the trilateral agreement between them. During the conference, the offices repledged their plans to improve patent systems through work-sharing. In praising their past efforts, Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos stated that “[t]hese work-sharing efforts have brought the resources of the world’s leading patent authorities to bear on improving the quality of examination processes and reducing the processing time for patent applications.”

Most applicants are already aware of the Patent Prosecution Highway, a means to fast-track a patent application in one patent office if claims in a corresponding application in another patent office have been deemed patentable. During the Trilateral Conference, Director Kappos mentioned the Global Dossier Initiative, a proposed system scheduled to be integrated into the IP5 offices (the patent offices of Europe, Japan, South Korea, China and the USA) by Spring 2013.

For patent applicants, the Global Dossier Initiative envisions a single online platform that will facilitate cross-filings into various offices, eliminate the need to file duplicate documents for each application, and provide cost savings through improved mechanical translations. The portal will also link examiners across patent offices, allowing them to collaborate and exchange information.

As international patent filing becomes a greater focus in nearly every applicant’s current and future IP strategy, the development of a global patent portal will surely simplify an often confusing and intimidating undertaking. We at inovia are all about online portals, having developed our own one-stop online platform for creating filing cost estimates and providing instructions for direct Paris Convention filings, PCT national stage entries, European patent validations and patent translations. Interested in learning more? Feel free to register for a free inovia account here.