Fewer and fewer opportunities…
The EPO is well known for applying relatively strict criteria to amendments. Compared to, say, the USPTO, the EPO requires virtually literal support for every amendment (we’ll go into more detail about this in another article).
In the past, the narrow approach to allowability of amendments was tempered somewhat by flexibility in the examination process. For example, an applicant would have the opportunity to explore the patentability of one approach, then if that didn’t work, could adjust to a slightly different set of features (within reason).
The throttling of this flexibility started with changes in 2010 to the way divisional applications were handled. It used to be that divisional applications could be filed at any time up until grant. So even if prosecution took a long time, there was always the opportunity to file a divisional if it didn’t go as expected, or for unclaimed subject matter. Now, once the first office action issues, a two-year period starts within which any divisionals must be submitted (there are limited circumstances within which the period can be restarted). Even if the examiner doesn’t get around to looking at your response to the first office action by the time the two years expires, you still need to commit to the expense of any divisionals you may require.
Following on from this, a new set of Guidelines for Examination in the European Patent Office came into force at the EPO on 20 June 2012. Like the USPTO’s Manual of Patent Examining Procedure (MPEP), the Guidelines provide a summary of the law, case-notes and practices that EPO Examiners should apply when examining European patent applications.
The 2012 edition formalizes what many applicants had increasingly been experiencing: the ability to adjust the direction or focus of claims during examination and oral proceedings (ie, examination hearings) has been further constrained. Several years ago, examination could go for several rounds. As long as some progress was being made, the examiner and applicant could exchange multiple rounds of office action and response until an allowable set of claims was mutually agreed. Now, the EPO is encouraged to initiate oral proceedings the moment progress slows. Often, this is after only one or two office actions.
In the past, the EPO recognized that oral proceedings were the final opportunity for an applicant to get a granted patent from their application. This resulted in quite a bit of leeway in exploring different potentially patentable feature combinations leading up to, and during, the hearing. Unfortunately, the 2012 Guidelines further curtail opportunities for amendment once an applicant is summoned to oral proceedings. There is less flexibility in the number of Requests (effectively fallback positions) allowed. It is even expected that Requests converge sequentially rather than exploring different territory. And amendments made after one month before the hearing deadline will be scrutinized very heavily before being admitted.
What to do?
None of this is good news for applicants. But what can you do?
First, try to make real progress with each office action. Examiners are less likely to jump to an early summons to oral proceedings if they feel you’re being realistic and moving things forward.
If you know your claims are weak and the examiner’s said as much in the European search report or first office action, don’t just try amplifying your arguments a bit with the next response. Either come up with something new and forceful, or admit you need to amend.
If there’s any sense that the examiner isn’t “getting” your invention, have your European representative contact them for a telephone discussion. Not all examiners like being called, but many of them are pleased to help.
Finally, if you’re summoned to attend oral proceedings, start planning your possible amendments and fallback positions as soon as you can. You want to have your position very clear, and your amendments submitted, as soon as possible leading up to the deadline one month out from the hearing.
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.
Happy Friday everyone! Here’s a look at the latest foreign filing/patenting news from the past week:
- The European Union made history this Tuesday, as the highly anticipated unitary patent was signed into adoption.
- WIPO’s latest newsletter outlines the amendments on PCT regulations, set to begin in January 2013.
- Nice article from PatentDocs details the USPTO’s growing backlog of nearly 100,000 applications awaiting continued examination.
- Microsoft’s Alex Kipman wins 39th Annual National Inventor of the Year Award.
Do you have plans to enter the national stage with your invention? Check out our free PCT e-kit, a great resource for patent applicants planning to file abroad.
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.
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).
The typical applicant is in no hurry to see their patent application proceed through the stages of examination, allowance and grant. Prosecution and allowance/grant cost money. The faster examination takes place, the faster the final form of the claims will be known, which is not always an advantage. And in most countries, grant closes the window for divisional applications. Overall, it often makes sense not to hurry.
This article is the second in a series on expediting patent applications (see the first article on Europe). The content was contributed by Patricia Folkins, a partner and the head of the Chemical practice group at inovia agent firm Bereskin & Parr.
Options for speeding up examination/grant of patent applications in Canada
There are three ways in which examination of a patent application can be sped up in Canada:
First, a request for Special Order Status can be filed at the Canadian Patent Office either along with a Request for Examination or after the Request for Examination has been submitted. The applicant must be published (laid open) prior to requesting Special Order Status. A government fee of CDN $500 must be paid and a statement must be made that failure to advance, the application is likely to prejudice the applicant’s rights. A third party may request Special Order Status on behalf of an applicant.
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!
In a previous post discussing the effects of the America Invents Act on the sole inventor and small company, I mentioned its provision to recognize a new micro entity applicant status. As described by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos, “The new micro entity provision in the America Invents Acts makes our patent system more accessible for smaller innovators by entitling them to a 75% discount on patent fees. By paying discounted patent fees as micro entities, smaller innovators can access the patent system to move their ideas into the marketplace and accelerate U.S. economic growth.”
On May 30, 2012, the USPTO released their proposed guidelines governing micro entity status in the Federal Register. Interested parties now have a 60-day period to provide their comments to these rules. Comments regarding the proposed changes can be sent by e-mail to email@example.com; by regular mail to: Mail Stop Comments — Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of James Engel, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy; or via the Federal eRulemaking Portal.
Did you know inovia has many resources to educate and assist the small volume applicant? We broadcast a monthly webinar entitled “International Patenting Strategies 101” which provides an overview on foreign filing and gives tips on how to maximize your global protection while reducing costs.
I also head up the inovia Small Business Solutions Team dedicated to the needs of the single inventor or small corporation. If you have questions about the patent process or want to find out ways to reduce your PCT filing and European validation costs, feel free to contact me at firstname.lastname@example.org or call me directly at 646-237-3863.
Hello again, everyone! Here’s a look at the foreign filing/patenting news from the week of November 12th:
- One USPTO director shares her experience visiting the newly-opened (first-of-its-kind) satellite office in Detroit, Michigan.
- SIPO has reported that a record number of Chinese patent applications have been filed over the last year.
- More on the America Invents Act: For the first time in the history of U.S. patent law, third parties will be allowed input during the patent examination process.
- As the EPO rounds out another year of continued growth, leaders take big steps towards improved patent search services.
Do you have any news to share with us? If you’d like, leave a comment below! We tweet at @inoviaIP.