PCT Regulation Amendments

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Amendments to the PCT Regulations were made as of July 1st 2017, which bring forth modifications including:

  • Adding a new obligation for designated Offices to timely send national phase entry and related data to the International Bureau (PCT Rules 86 and 95);
  • Requiring receiving offices to transmit earlier search and/or classification results to the International Searching Authority (PCT Rules 12bis. 23bis and 41)
  • Extending the deadline for requesting supplementary international search from 19 to 22 months from the priority date (PCT Rule 45bis.1)

The PCT Yearly Review reported that international patent applications grew by 7.3% to 233,000 in 2016. Whilst US based innovators have accounted for the highest percentage of this growth for 39 years running, China-based innovators accounted for a substantial amount of overall growth.

With any questions regarding these amendments, please get in contact with your nearest RWS office.

Case Study: inovia Helps KCI and Dentons LLP Streamline the Foreign Filing Process

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Kinetic Concepts Inc. (KCI) is a leading global medical technology company devoted to understanding, developing and commercializing innovative, high-technology transformational healing solutions for customers and patients in more than 25 countries around the world. A pioneer in Negative Pressure Wound Therapy, the company’s Vacuum Assisted Closure® Therapy (V.A.C.® Therapy), has been clinically demonstrated to help promote wound healing. KCI’s proprietary technologies have revolutionized the way in which caregivers treat a wide variety of wound types with V.A.C. Therapy used on more than 7 million patients worldwide.

KCI is committed to advancing the science of healing and positively impacting patient care by developing customer-driven innovation to meet the evolving needs of healthcare professionals. To protect its innovations and proprietary approach to wound healing, each year KCI files a significant number of U.S. patent applications and nationalizes a significant number of foreign applications using the corresponding PCT application.

With Growth, Comes Change

Prior to the 1995 introduction of V.A.C. Therapy, KCI had handled all of its patent preparation and prosecution work in-house. The tremendous growth and market adoption of V.A.C. Therapy as a standard of care for advanced wounds required that the company devote more resources each year to R&D, product refinement, expansion and intellectual property (IP). By 2006, KCI’s growth necessitated a review of its domestic and foreign filing procedures. KCI’s team for handling international patent filings was looking for better ways to improve its business.

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WIPO Releases New PCT Video Series

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We have included the next two episodes of WIPO’s latest video series, “Learn the PCT” for your consideration below.  These short segments educate inventors and applicants on various PCT processes.  To learn more, please check out our previous posts here: Part 1 & Part 2

In episode 5, Matthias Reischle, Deputy Director of the PCT Legal Division, discusses the role of agents and common representatives under the PCT.  In episode 6, he talks about what a priority claim is and how to make priority claims in an international application. 

Episode 5: Representation of PCT Applicants


Episode 6:  Priority Claims and Priority Documents

Please be sure to check back soon for the next two episodes in this WIPO series .  As always, for more information on filing your PCT at the national phase, visit out our website or follow us on Twitter!

WIPO’s July PCT Newsletter Recap

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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:

  • The PCT welcomed its 148th contracting state with the addition of the Islamic Republic of Iran (IR). The country will become bound by the PCT on October 4, 2013.
  • On June 21st, Samoa deposited its instrument of accession to the Paris Convention for the Protection of Industrial Property, making it the 175th member of the party. Roughly 90% of the world’s countries are bound by the Paris Convention. 
  • Recent fee changes by country (click here for full list):
    • Croatia (HR) : Filing, examination, publication, and maintenance fees are reduced by 50% where the applicant is also the inventor. 
    • Slovakia (SK) : The new fee for requesting restoration of the right of priority: EUR 166.
    • Hungary (HU) : National fees for a patent, where the Office is a designated Office: HUF 37,400; HUF 1,900 per claim for the 11th to the 20th claim

For more information on foreign filing via the PCT, visit our website and follow us on Twitter @inoviaIP!

Friday Foreign Filing Roundup

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Hello again friends and colleagues! The first heat wave of the year has hit New York City, meaning summer isn’t far behind.  Here are some of the top headlines in foreign patent filing news rounding out the last week in May. 

  • The setting of annuity fees stands in the way of a unitary European patent.
  • WIPO released a report that patent applications filed under the PCT increased by 6.6% in 2012.
  • The results of the European Inventor Award 2013 were announced this week. Congratulations to all of the winners!
  • Vermont passed a unique bill targeting patent trolls that will take effect on July 1.

That’s all for this Friday!  Have a great weekend and check us out on Twitter @inoviaIP.

WIPO’s PCT June Newsletter Recap

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WIPO publishes a monthly newsletter with the latest announcements relating to the filing of applications under the Patent Cooperation Treaty (PCT).  For your consideration, we put together some highlights from the June 2013 edition:

  • WIPO released a collection of new and updated PCT Resources, including two recent webinars.  The webinars entitled, “Strategic Use of the PCT System (International Phase)” and “Strategic Use of the PCT System (National Phase)” draw upon Mr. David Reed’s filing experience and strategies.
  • The Practical advice section of the newsletter answers a question from an applicant looking to file a demand for international preliminary examination.
  • Comoros joined the OAPI, bringing the total number of member States in the African Intellectual Property Organization to 17.  As this article explains, they deposited their instrument of accession to the Bangui agreement on May 25, 2013.
  • Lastly, WIPO published updated versions of the Patent Cooperation Treaty and Regulations under the PCT in paper versions.  Language revisions were made for Arabic, Chinese, German, Portuguese, Russian, Spanish, English, and French. 

Please check in next month for another recap of WIPO’s PCT newsletter and don’t forget to follow us on Twitter @inoviaIP!

Top PCT National Stage Entry Countries for 2013

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With the New Year fast approaching, it’s time once again to look at the top national stage filing destinations for our clients from the past year.

In 2013, we retained our status as the largest US filer of PCT applications at the national stage (according to Managing Intellectual Property magazine) and expanded our global network of agents to cover 130 countries. In October, we also announced the acquisition of inovia by RWS Group, the world’s top ranking patent translation company. These changes ensure that our foreign filing platform, inovia.com, will be well placed to complement the foreign filing strategies of our vast array of clients.

Speaking of our clients, let’s take a look at their top national stage destinations in 2013:

1. China – 11.0%
2. Canada – 9.0%
3. Japan – 8.2%
4. Brazil – 7.0%
5. United States – 7.0%
6. India – 6.9%
7. Australia – 6.8%
8. Europe – 5.1%
9. South Korea – 4.4%
10. Russia – 4.0%

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Latest Updates from the World Intellectual Property Organization

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I’d like to share some important updates from WIPO’s October PCT Newsletter. Most notably, the WIPO Member States met in late September for the annual PCT Assembly, which was held in Geneva this year. Typically during this time, the Assembly makes amendments to PCT regulations, appoints new International Searching Authorities (ISAs) and International Preliminary Examining Authorities (IPEAs),  and conducts other business related to the PCT system.

The Assembly appointed the State Intellectual Property Service of Ukraine (SIPSU) as an ISA/IPEA under the PCT. This decision will make SIPSU the 19th patent office in the world to be granted this title.  It is unclear when the office will officially begin these operations.

WIPO also released some small, country-specific changes that you should be aware of. It has been noted that all fee changes have already been included in the PCT Fee Tables published in early September:

  • Brazil (BR) – Applicants can now request prioritized examination of their application if they are over 60 years of age and can confirm one of the following: 1) claims in the application are being infringed, or 2) grant of patent is a condition for obtaining funding.
  • Colombia (CO) – Annual patent fees for the 1st to 4th years have changed to COP $206,000 (COP $306,000 in the case of late payment).
  • Croatia (HR) – New requirements have been posted for those who wish to act as an agent before the patent office. Click here and scroll to page 2 for info.
  • Latvia (LV) – The following fees must be paid in euros, beginning on January 1st, 2014: transmittal fee & fee for priority document.
  • Portugal (PT) – Filing/examination fees for patents and utility models have changed as of July 1st. Click here and scroll to page 8.

Finally, the PATENTSCOPE search system now includes PCT national phase information for the following countries: Austria, Cuba, India, New Zealand, and Thailand. The system now covers 48 patent offices. Very exciting!

inovia Tops PCT Survey Once Again

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In late September, Managing Intellectual Property magazine posted the results of their 2013 PCT Survey, which ranks the top Patent Cooperation Treaty (PCT) firms by their number of applications coming due for national stage entry in 2013. I’m proud to say that inovia has placed first in the United States for the third consecutive year, handling the national stage entry of more than 1,500 PCTs in 2013. We also placed second in the global rankings behind our Chinese agent China-Pat Intellectual Property Office, who will handle 1,772 applications this year.

We take great pride in the quality and capabilities of our agent network, and would like to congratulate our associates who ranked among the top filers in their local markets:

  • China-Pat Intellectual Property Office of China (#1)
  • Nederlandsch Octrooibureau of the Netherlands (#2)
  • Meissner Bolte & Partner of Germany (#2)
  • AFD China Intellectual Property Law Office of China (#3)
  • Sunyoung International Patent & Law Firm of Korea (#3)
  • Ridout & Maybee of Canada (#3)
  • S. Majumdar & Co. of India (#3)
  • Bereskin & Parr of Canada (#4)
  • Borden Ladner Gervais of Canada (#5)
  • Harness Dickey of the United States (#8)
  • Hanol Intellectual Property & Law of Korea (#9)
  • Shelston IP of Australia (#9)
  • Freehills Patent Attorneys of Australia (#10)
  • Kilburn & Strode of the United Kingdom (#10)

As part of this year’s PCT Survey, Managing IP‘s Peter Leung spoke with inovia CEO David Nelson and other industry experts to examine the impact that “IP Portals” are having on the industry. The article references IP consultant Duncan Hart (watch the webinar we hosted with Duncan back in January on demand), who has written about how IP portals disrupt the relationships that patent attorneys have with their clients. On the contrary, Nelson and representatives from other IP portals point out the growing trend of IP firms turning to IP service providers in order to make their own practices more efficient. You can read the full article from Managing IP here - we’d love to hear your opinions on this topic in the comments section below.

The 1,500+ PCTs that inovia will handle in 2013 reflects a 10% increase from last year and is more than double the number of filings handled in 2011. If you’d like to learn more about how inovia can fit into your foreign filing practices, please feel free to get in touch with the inovia office nearest you. 

Industry Updates from WIPO’s PCT Newsletter

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Hi everyone! Each month, we comb through WIPO’s PCT Newsletter to share the latest news affecting the international patent system. As always, there are several country-specific rules, fee changes and patent office notifications to report. You can check out some of these updates below:

Poland (PL)

As of October 2013, any patent attorney registered to practice before the Patent Office of the Republic of Poland may act as an agent.

International Bureau (IB)

As from January 1st, 2014, there will be the following fee changes payable to the IB as a receiving office:

  • Transmittal fee: EUR 81, USD 111

  • Priority document: USD 55

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