Friday Foreign Filing Roundup

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Hi everyone, Happy New Year!  Here’s the news roundup for the week of December 31, 2012:

inovia news: New York headquarters relocation

After four years in the “Flatiron” district of Manhattan, our New York headquarters has expanded and now has a new downtown address at 30 Broad Street – which is just steps from the New York Stock Exchange.  To accommodate our growth over the last year, the new office is double the size of our previous space (not to mention it offers great views of the city and the Statue of Liberty!).  If you’re in the area, please get in touch to schedule a visit.

office inovia
office left
office lobby

Patent law/foreign filing news:

  • The USPTO and the EPO have announced the launch of the Cooperative Patent Classification (CPC) system, a global classification system for patent documents.
  • The USPTO issued a request for comments in order to collaborate with the software community on the quality of software-related patents.
  • According to WIPO data released in December, China overtook the US in 2011 as the largest patent office in the world.  This article from The Economist compares the “value” of Chinese patents vs. those in the US or Europe.

Feel free to share news from your country below and don’t forget to follow us on Twitter.

Permanent Patent Prosecution Highway Program Launched between US and Taiwan

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Happy New Year to our readers! Here’s some foreign filing news to kick off 2013…

For many applicants, the Patent Prosecution Highway (PPH) is an invaluable resource for expediting and reducing the costs of foreign applications. The PPH is a work-sharing agreement between 2 patent offices wherein a finding by one patent office that at least one claim in the application is patentable will allow the applicant to fast-track the corresponding application in the other patent office.

On December 21, 2012, the United States Patent and Trademark Office (USPTO) announced the launch of a permanent PPH program with the Taiwan Intellectual Property Office (TIPO), building upon the pilot PPH program that had commenced on September 1, 2011. With more US applicants interested in seeking patent protection in Taiwan, this PPH program will surely be a welcome addition to the 30+ PPH agreements the USPTO already has in place.

While we’re on the topic of Taiwan, a request we often receive from clients is to file their PCT application into Taiwan at the national stage. Unfortunately, Taiwan is not a member of the Patent Cooperation Treaty and the PCT application cannot be filed there at the 30/31-month deadline. Even worse, by the time the 30/31-month filing deadline rolls around, the deadline for filing into Taiwan has long passed. Taiwan, although not a party to the Paris Convention, does recognize priority claims from contracting members. That means that an applicant must file into Taiwan within 12 months from the earliest priority date if they wish to obtain patent protection there.

Did you know that inovia recently launched a Paris Convention filing service, allowing you to file directly into 17 countries, including Taiwan? Register for a free account to get an instant quote for direct Paris Convention filings.

Egyptian Patent Office Begins Operating as ISA and IPEA


The following news was provided by our friends at Saba & Co., inovia‘s agent for PCT national stage entry filings in Algeria, Egypt, Morocco, Syria and Tunisia.

As of April 1, 2013, the Egyptian Patent Office started operating as an International Search Authority (ISA) and as an International Preliminary Examining Authority (IPEA). The PCT Assembly appointed the Egyptian PO as International Searching and Preliminary Examining Authority at the 40th session of the Assembly of the PCT Union in September 2009.

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USPTO Announced Proposed “Track One” Accelerated Examination

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Yesterday, the USPTO announced details of its proposed “Track One” of the “Three-Track” program, which offers applicants three choices as to the speed their application is examined.

On February 4, 2011, the notice of “Track One” will be published in the Federal Register and open to public comment for 30 days. Specific details open for comment include:

  1. the proposed $4000 fee per application;

  2. limits on the number of claims to 4 independent claims and 30 total claims;

  3. application filing through the USPTO electronic filing system (EFS-Web), as well as other requirements.

“The Patent and Trademark Office plays a key role in promoting innovation and entrepreneurship,” says U.S. Secretary of Commerce Gary Locke. “This new system will bring the most valuable patents, as determined by inventors, to market faster and will help shrink the backlog by catering to the business needs of America’s innovators.”

On average, examination of a patent application takes about 35 months before a decision is rendered. “Track One” examination aims to reduce that pendency time to 12 months. For the first year, the USPTO will limit the “Track One” option to 10,000 applications.

The patent community has greeted “Track One” examination with mixed sentiments. Some view it as “pay to play”, granting an unfair advantage to deep-pocketed applicants who can afford the hefty $4000 fee. And because the USPTO lacks the power to set its own fees (although granting this power is proposed in the patent reform legislation currently before the Senate), the 50% discount for small entity filers is initially not available for “Track One”.

Others have welcomed the opportunity to expedite examination. Industries, such as software and electronics, whose technology have relatively short lifespans undoubtedly welcome the possibility of receiving a patent as quickly as possible.

“Track One” is expected to go into effect in March 2011.

New EPO Disclosure Requirements in Effect

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Our good friends at Kilburn & Strode informed us of a recent change to Rule 141 EPC affecting the disclosure of earlier search results conducted in connection with related applications. 

Prior to the rule change, Rule 141 EPC stated that the EPO may invite an applicant to provide information on prior art taken into consideration in the examination of corresponding applications.  Effective for any European applications filed on or after January 1, 2011, new Rule 141 EPC requires applicants provide to the EPO the results of any search conducted by a national patent office or an International Searching Authority with respect to an application from which the EP application claims priority. 

Copies of these results, including search reports, listings of cited prior art and relevant parts of examination reports, must be provided to the EPO; however, copies of the cited references are not required.  It is also unnecessary to submit translations of references issued in a non-EPO language. 

New Rule 141 EPC will apply to all cases except where the first application was a:

  • UK application;
  • EP application;
  • PCT application where the EPO drew up the International Search Report; or
  • US application

If you have any questions about the new disclosure requirements, feel free to contact us.

PCT National Phase Entry into India


As one of the “BRIC” countries (the others being Brazil, Russia and China), India has experienced positive changes in both its market size and technological capabilities in recent years.  Consequently, foreign patent applications filed in India have increased as more applicants recognize its potential as a manufacturing and consumer center.  WIPO’s 2010 Indicators report validates the continuing growth of India’s patent filings and grants in recent years.

India’s popularity is reflected in our own client base as well, comprising 8% of all national stage filings handled by inovia last year.  In terms of industry, India was among the top four destination countries for the mechanical/engineering, electrical/electronic, and chemical/materials-related applications.  Our pharmaceuticals/biotech clients made some changes in 2010 versus 2009 destinations, where India was in the top 5; last year they were bumped out of the list by Brazil.

For those applicants interested in filing in India, here are some important notes:

  • PCT national stage deadline for India is 31 months after the earliest priority date. 
  • Applications can be filed in English or Hindi.
  • Powers of Attorney and Assignments are required.
  • Excess claims fee:  INR 800 (or INR 200 for individual inventors) per claim over 10.
  • Request for examination due within 48 months of priority date or date of filing, whichever is earlier. 
  • Patent term is 20 years from application filing date.
  • Opposition period of 1 year after date of publication of grant of patent in the Patent Office Journal.

Are you thinking about filing into India via the PCT route?  You can get an instant, accurate, “1-click” quote if you have the PCT number handy – just register on our inovia portal or watch the demo on our Products page to see how it works.

Finland to Join London Agreement, Relaxing Patent Translations

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On March 8, 2011, Finland announced that it will join the London Agreement, bringing the total number of member EPC countries to 17.  Previously, validation of a granted European patent into Finland required translating the specification and claims into Finnish (patents in Swedish are also accepted in limited situations).

Once the London Agreement comes into effect, the translation requirements for Finnish validation will be significantly relaxed.  Although the exact details are yet to be determined, it is likely that only the claims will need to be translated into Finnish for applications in English. 

If you would like further information on European validation, with reference details for London Agreement and Non-London Agreement countries, and translation requirements, feel free to check out our European validation handbook and/or contact us.       

Director David Kappos Discusses Future of USPTO


On March 25, 2011, I had the pleasure of attending a talk at New York Law School by the Director of the US Patent and Trademark Office David Kappos entitled “Vision for the USPTO in the 21st Century: Ensuring America’s Innovation Future”.

During the presentation, Director Kappos gave his insight regarding current and future measures designed to improve the US patent system.

Peer to Patent

The first topic Director Kappos discussed was the Peer to Patent program, which is currently in its second pilot. For those unfamiliar with Peer to Patent, it is a voluntary program wherein applicants open their applications to the public who are then free to submit relevant prior art to the Examiner’s attention. Both the Senate and House patent reform bills contain legislative language expanding upon the Peer to Patent program, whose ratification Director Kappos called a “no brainer”. The Peer to Patent program is “pro-inventor”, stated Director Kappos, since applicants receive stronger patents when the best prior art is submitted during prosecution. Possible future enhancements of the Peer to Patent include:

  • “Pull” ability for the Examiners – This would allow Examiners to actively solicit the public for prior art.
  • Peer to Patent incentives – Possible “prestige” credit for contributor who submits valuable prior art.
  • Expansion of the Peer to Patent program such that anyone can comment or submit prior art related to any published application within a set time period.
  • Recruitment of professional/technical organizations to participate in Peer to Patent program.

Patent Reform

Director Kappos next addressed the Patent Reform Bill which recently passed by an overwhelming majority in the Senate (95-5). A slightly different version of this bill is currently before the House of Representatives. Director Kappos called the transition of the US patent system to a “first to file” format a “huge positive move” which is “pro-independent inventor, pro-small inventor”.  Such a system, stated Kappos, would bring less ambiguity to the patent process, and that many applicants filing into the USPTO were already operating under a first to file system.

Director Kappos also discussed the prior user rights provisions in the House bill. Currently, prior users of a subsequently patented business method can assert a defense against infringement if “such person had, acting in good faith, actually reduced the subject matter to practice at least 1 year before the effective filing date of such patent, and commercially used the subject matter before the effective filing date of such patent.” The relevant provision before the House would expand the defense to all patented subject matter, not just business methods. Such a provision would be “pro small business and independent inventor” since the defense does not invalidate the patent, it just provides an exception for a prior user.

Patent Fees

Patent fees were also the topic of much discussion during the presentation. Director Kappos reminded everyone that the USPTO is one of the rare government entities that is wholly funded by its incoming fees, rather than the US Treasury.

As such, he is obviously in favor of legislation whereby the USPTO would be able to retain and use the fees it collects. This would be a huge benefit since these funds would be used for improving the US patent system. Director Kappos also mentioned the 3-track patent filing system, whereby the applicant could choose the speed and cost of examination.

USPTO Backlog

During his closing remarks, Director Kappos fielded a comment from an attendee voicing his concern over the 20,000 application backlog currently before the Board of Patent Appeals and Interferences (BPAI). In response, Director Kappos indicated that a new judge will soon join the BPAI and offered hints to his/her identity:

  • Former partner and professor
  • Clerk for the Federal Circuit
  • IP counsel for a Mid-western corporation

Any guesses as to who the new judge will be?!


The USPTO has just announced that James Donald Smith of Chicago, Ill. will serve as the next Chief Administrative Patent Judge. For more information visit:

USPTO Announces Launch of Second Peer to Patent Pilot Program

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On October 19, 2010, the USPTO, in collaboration with the New York Law School’s Center for Patent Innovations, announced the upcoming launch of a second Peer to Patent pilot program.  Scheduled to commence next Monday, October 25, 2010, the Peer to Patent program expands upon the previous program. 

The original Peer to Patent program, which began in June 2007, introduced public participation to the patent examination process.  Inventors could opt to post their application on the website, whereupon volunteer technical and scientific experts could comment or submit relevant prior art.  Following the review period, the prior art is then sent to the USPTO for consideration during prosecution. 

The second Peer to Patent program expands upon the eligible subject matter of the earlier program, which was limited to software and business methods.  For the second Peer to Pilot program, eligible subject matter now includes biotechnology, bioinformatics, telecommunications and speech recognition.    

The Peer to Patent program seeks to reduce examination time and increase patent quality.  However, the success of this program is greatly limited by the low number of applications volunteered for review (only 189 applications were reviewed in the first pilot program from 2007-2009).  Whether expansion of the subject matter eligible for the Peer to Patent program increases its effectiveness remains to be seen.  But unless participation in the Peer to Patent program increases exponentially, it’s unlikely that this program will make any significant steps towards achieving its goals. 

USPTO to Expand Work Sharing with Australia and Finland

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The United States Patent Office (USPTO) and IP Australia (IPAU) recently extended the existing Patent Prosecution Highway (PPH) program between the two offices.  Originally scheduled to expire this year, this agreement extends the PPH program until April 13, 2012.

The USPTO and IPAU also announced the creation of a bilateral PCT-PPH program.  Under the previous PPH program, work-sharing was limited to search and examination results under the Paris Convention.  With the PCT-PPH in place, favorable international search reports with written opinions or international preliminary examination reports are now available to expedite prosecution.  Like the PPH, the PCT-PPH will also be in effect until April 13, 2012.

“We are pleased to extend and expand work sharing between the USPTO and IPAU,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “By including PCT international phase work, more work can be shared between our two offices.  This will benefit applicants by reducing patent pendency and improving quality.”

The USPTO and the National Board of Patents and Registration of Finland (NBPR) also announced the expansion of their PPH agreement.  The previous agreement was limited to search and examination results under the Paris Convention.  With this expansion, PCT documents, such as international search reports with written opinions or international preliminary examination reports, can be used to expedite and improve examination in the USPTO and NBPR. 

“This agreement will amplify the work sharing potential between the two offices by including PCT international phase work,” said Kappos. 

Applicants can expect the creation and extension of more of these programs as patent offices around the world make efforts to improve patent examination quality and decrease backlog.

Additional information on the Patent Prosecution Highway and other work-sharing efforts can be found here on our foreign filing blog.