Ian Cockburn, New Zealand and Australian Patent Attorney at PIPERS, recently informed us of some news pertaining to New Zealand and Australian patent law:
Despite the submissions following the earlier discussion paper, IP Australia and IPONZ have agreed on a three-year implementation plan regarding the way patent applications are processed and examined. The goal is to save customers time and money in providing strong patent protection.
The plan covers three stages:
Stage 1: Work Sharing
This stage seeks to improve the efficiency and quality of examination across both countries. The work sharing model is an essential step towards single examination and allows Australian and New Zealand patent examiners to rely on each other’s work. This will include examiner’s reports and searches for prior art. However, actual work sharing will not occur until the passing of New Zealand’s new patents legislation (expected in early 2012).
Stage 2: Single Application Process
By early 2013, it will be possible to submit a single patent application for both Australia and New Zealand and obtain a common filing date in both countries.
Stage 3: Single Examination
Patent applications common to Australia and New Zealand will be examined only once in either Australia or New Zealand, leading to separate decisions in both jurisdictions. The examiner would be required to consider differences in each country’s patent law. Single examination should be implemented by June 2014.
Thanks to Ian for sharing this valuable information. If you have any questions regarding the plan, please feel free to ask them in the comments section below.
As you may know, the EPO generally implements fee and procedural changes on 1 April each year. I like to think of it as their way of making sure everyone has a little fun every April Fools’ Day.
This year there are a number of important procedural changes that will apply to PCT applications entering the European regional phase from 1 April 2010.
We will soon provide greater detail about the changes, but in the meantime, important points to note include:
If the EPO was the International Search Authority (ISA), it will be compulsory for applicants to submit a response addressing the ISR and written opinion. The deadline for doing this is typically only a few weeks after regional phase entry, so applicants will need to act quickly.
We’ll soon be posting in detail about these points, but please let us know if you have any specific questions in the meantime.
We get this question fairly often.
Sometimes clients (even experienced patent attorneys) make the mistake of assuming the EPO is simply the patent office that caters to the countries of “Europe”. It’s actually a bit more complicated than that.
Without any additional context, the word “Europe” is generally used as shorthand for the European Union (the “EU”). The EU is a group of 27 member states that form a political and economic union with limited powers delegated to a central European parliament.
However, “Europe” for the purposes of patents is different. The member states of the European Patent Convention (the “EPC”) include a number of countries that aren’t members of the EU, such as Switzerland and Turkey.
Further complicating things is the fact that new countries are periodically added, either as full members of the EPC, or indirectly by becoming an extension state (extension states will be explained in another posting).
Simply looking up the list of EPO Member States on the EPO’s website can potentially be misleading. This is because (for a PCT application) whether a particular country is covered by a European regional phase filing is based on the International Filing Date rather than when the regional phase is entered.
Interestingly, the Norwegian patent office experienced an unexpected fall-off in national phase filings immediately after 1 January 2008 when it became a member state of the EPC. Maybe it was the financial crisis that was in full swing by that time, but it’s also possible some applicants made an incorrect assumption about Norway being included in all European regional phase filings after 1 January 2008.
So, what’s the easiest way to determine whether a particular country will be included in a European regional phase application from a particular PCT application?
Look at the PCT bibliographic cover sheet, and find the field headed “(84) Designated States”. After the word European, there is a bracketed list of country codes. This is the list of countries that will be covered by a European filing coming from this PCT application. If you don’t already know it, look up the country code for the country of interest, and see whether it’s in that list.
We recently gave a brief summary of the impending 1 April 2010 changes to European rules.
New Rule 62A: Independent Claims
Today, we’re going to go into a little more detail about the changes to management of independent claims in Europe under the new regime.
Under current European practice, typically only one independent claim is allowed in each claim category (apparatus, method, etc).
However, there are some exceptions:
Inter-related items (for example, a plug and socket; gene, gene construct, host, protein, medicament; intermediate and final chemical product).
Multiple different inventive uses of a product or device (for example, different second or further medical uses).
Examples of alternative solutions to a problem (for example, groups of chemical compounds; two or more processes for manufacturing a compound).
At the moment, the EPO searches all claims, and then raises an objection during examination if it is considered there are too many independent claims in each category.
Under new Rule 62a:
The EPO will no longer search all independent claims in each category. Instead, the new procedure will be to invite the applicant to select which claim in each category should be searched (and therefore examined).
The subject matter of the remaining independent claims may need to be made the subject of a divisional application if it cannot successfully be argued that an exception (such as one of those listed above) is appropriate.
If no claim is selected, the EPO will automatically search only the first claim in each category.
Which applications are affected?
For various technical reasons, the new rules will only affect cases where the International Search Report was not prepared by the EPO.
The rule applies to all applications where the European search report issues after 1 April 2010.
What needs to be done?
For PCT applicants entering the regional phase in Europe, there is an opportunity to amend the European claims either at regional phase entry, or following issuance of a rule 161 communication (we’ll post about that soon). This is the last opportunity to get the most appropriate claims on file before the search process begins.
Need more information?
Our European agents, Kilburn & Strode, have prepared briefing papers summarising the main impending changes to European practice. The papers can be downloaded from their website.
It’s a few weeks before the 30 month deadline for national stage entry of one of your client’s PCT applications. The client calls you and tells you one (or more) of the following:
- The sole inventor has just assigned her rights to a company
- The corporate applicant’s address changed a couple of months ago
- One of the inventors currently recorded against the PCT application was listed by mistake and needs to be deleted
- The wrong serial number is recorded for the priority document (it was correct on the Request)
- The inventors are listed as co-applicants with the corporate assignee for all countries, when they should only be applicants for the USA
Is it worth recording any of these changes at this late stage?
It’s rare I’m asked a question in the patent field that I feel so comfortable answering with a one word answer: YES!
In many countries, if this sort of information is updated during the international stage of the PCT, you won’t need to do or submit anything else during the national stage to complete the correction. That means you’ll save yourself (or your client) the cost and effort of recording changes in individual countries and regions. These costs can be substantial if there are lots of countries involved.
Also, in some countries, making these sorts of changes is considerably more difficult than making them during the international phase.
WHAT PROOF IS NEEDED?
To make the change during the international phase, you don’t need to supply documentation or any other type of evidence. In contrast, many countries will at least want to see copies – and maybe certified copies – of documents supporting these types of changes if you try to make them after national phase entry.
Even in countries where evidence needs to be provided at or after national stage entry to support changes made during the international phase, having recorded the change beforehand will nearly always reduce the costs to some extent.
WHO TO CONTACT
Applicants and their authorised representatives can certainly make changes like these via their local receiving office (i.e., the patent office with which the PCT application was originally filed). However, to speed things up and reduce the chance of transmission delays or errors, in my opinion you’re better going straight to the source and correcting the information directly with WIPO.
You can find the contact details of the team handling a particular application by searching on the PCT application number at the following page: http://www.wipo.int/pctdb/en/iateamlookup.jsp
You have until the 30 month deadline to ask WIPO to make changes to PCT bibliographic information. Even if WIPO doesn’t have time to send confirmation of the change to the applicant or their attorney until after the 30 month deadline has passed, the new data will still filter through to the relevant patent offices after national stage entry.
ANY OTHER TIPS?
When instructing foreign associates to enter the national stage, be sure to give them a clear picture of any changes that were made during the international stage of the PCT procedure.
If the form from WIPO confirming that the change has been recorded (Form PCT/IB/306) has been received, provide a copy to the associate with your instructions.
Alternatively, if the change has been requested but not yet formally recorded by WIPO, it’s important you explain this to the associate with your instructions to minimise confusion.
If you need help on this topic, you can contact WIPO directly or the PCT help desk at your local patent office for more information.
Alternatively, feel free to call us or drop us an email and we’d be happy to help you in any way we can.
In view of the high excess claims fees that apply to European applications, it’s common for PCT applicants to reduce the number of claims on file at regional phase entry to Europe.
In the past, the EPO has taken a surprisingly (in my view) laissez faire approach to the format of such claim amendments. Simply submitting replacement pages with the regional phase entry documentation was generally sufficient.
It’s always been desirable to show the nature and location of any amendments being made at regional phase entry. However, it’s about to become compulsory to do this.
If the amendments are just claim deletions (presumably for the purpose of fee reduction) then it’s acceptable to provide a marked-up copy showing the deletions and claim renumbering, along with a clean copy of the final version. For the marked-up version, most applicants use some form of “track changes” feature in their word-processing software, such that additions are underlined and deletions struck out.
If the features of certain claims are being combined, it will also be necessary to provide a summary of how the new claims relate to the old claims.
And finally, if subject matter from the description is being newly imported to the claims, it will be necessary to explicitly point out where the new claim language is supported in the detailed description.
A couple of other points to note:
The official fee for excess claims in Europe is €200 per claim after the 15th, and €500 per claim after the 50th. It therefore often makes sense to rationalize claims if there are many more than about 15 of them and costs are an issue.
It’s worth remembering that the EPO allows multiple dependencies, and dependencies aren’t counted for the purpose of claim calculations. No matter how many claims a particular claim refers to, it only incurs a single claim fee for the purposes of excess claims calculations.
As well as amending claims to reduce official fees, it may also be worth taking the opportunity to take into account the EPO’s new approach to multiple claims in each claim category (we’ll be posting more about this early next week).
Please feel free to contact us if you need more information about these (or any other) EPO rule changes.
Perhaps the most common, and most important, question we field here at inovia relates to when the PCT application needs to enter the national phase (or stage; the terms are interchangeable). The national stage filing deadlines occur 30 or 31-months from the earliest priority date claimed by your PCT application.
The 30 or 31-month deadlines are calculated from either:
- the filing date of the earliest patent application to which the PCT application claims priority under the Paris Convention; or
- the International filing date of the PCT, if no Paris Convention priority was claimed.
It is at this time that you’ll need to file your application into the countries or regions where you wish to pursue patent protection. Once filed into your desired countries/regions, the respective patent office will examine your PCT application.
Quite often, US-based applicants hope to wait until a favorable decision is reached in the USPTO before deciding whether to pursue international patent protection. Unfortunately, the current patent office backlog usually means that the US application is still pending when the national stage deadlines approach. Other applicants simply need more time to obtain funding.
As a result, our clients often ask whether they can delay national stage filing and what happens if they miss this deadline.
Unfortunately, the national stage deadlines for most countries are inflexible and missing these deadlines will jeopardize your chances of allowance. Picture your national stage application, your PCT application, and your priority application all connected by a chain. That chain allows the national stage application to claim priority to the earliest filed application. Breaking that chain by failing to meet your national stage deadlines means that your earlier applications can now be cited as prior art against you. This is why timely filing of your PCT application at the national stage is vital.
Luckily, some countries do allow for late filings.
Applicants love the Canadian Patent Office, which allows late filings of up to 12 months after the 30-month national stage deadline for a small fee. You simply pay the fee retroactively when you do decide to file.
China’s 30-month filing deadline can be extended by 2 months upon payment of an additional fee.
The EPO does allow for filings of applications that have missed the 31-month national stage deadline. However, late filing is not as simple as including an additional late charge. The application will need to be revived by filing a petition. Additionally, reviving your application will increase your filing fees by over 50%. Europe is already an expensive filing destination, so we strongly recommend that our clients file their PCT applications by the 31-month deadline.
Brazil is a country that is increasing in popularity as a national stage filing destination. Brazil is a 30-month country that requires translation of the application into Portuguese. Although the translation of the specification can be submitted up to 2 months after the filing upon payment of a fee, the claims must be translated at the time of filing. Therefore, you need keep this in mind when providing instructions and allow sufficient time for the translation of the claims.
South Korea is a 31-month deadline country, so that provides some extra time for applicants to make their filing decision for that jurisdiction. However, there is no translation extension available, so you should send your South Korea filing instructions at least 1 month prior to the filing deadline, even more if you have a lengthy application to be translated.
Elsewhere, it might be possible to revive applications that have missed the national stage deadline due to an omission or error in spite of all due care being taken by the applicant and its representatives. However, given the onerous standards applied by many countries, and the often subjective nature of the decision, this is not an option to be relied upon.
Indeed, some countries offer no revival right at all. Japan, for example, simply does not have any mechanism to revive an application that has missed the national phase deadline.
LATE-FILING OF TRANSLATIONS
Assuming an English language PCT application, the majority of translation countries offer a period of one or two months (after either the national stage entry deadline, or national stage entry itself) within which the translation can be filed. We use these extensions ourselves if we don’t receive instructions early enough to comfortably complete the translation by the deadline. There’s an additional cost (usually $100-200) in most countries for taking this option.
Looking for filing deadline information for other countries? Download our PCT national phase entry e-kit or contact us at email@example.com.
The Patent Cooperation Treaty (PCT) offers many advantages. It delays the costs associated with foreign filings by up to 18 months. The international search report (and optional international preliminary examination process) offers applicants insight into at least some of the prior art an application may face during the national phase.
One of the shortcomings of the PCT is that only a single specification is filed, despite there being no such thing as a standard specification that’s ideal for all countries. In this series, we’ll discuss elements that you should take into consideration when drafting PCT specifications in order to improve your chances of getting patent protection in various jurisdictions. In this first episode, we’ll examine the European Patent Office’s (EPO) practices specifically.
Tweaking Disclosure for EPO Practice
The EPO has a number of practices that can trap the unwary patent draftsperson. Europe is also one of our most popular regional phase entry destinations. There are two aspects of EPO practice that reward a more open approach to drafting the specification than is typical in, say, the USA.
The first of these is the EPO’s approach to claim amendments. When considering whether to allow an amendment, the EPO adopts a stringent approach to new matter. If you want to take a feature from the specification and put it into the claims, you’ll need to show that the new claimed combination does not add new matter.
EPO Examiners are ruthless about this. Amendments should ideally have a firm linguistic basis in the description. If the verb/noun you want to introduce to a claim isn’t in the description, it’s likely you’ll face a fight getting the EPO to allow it into the claims. Strictly speaking, drawings can be used as the basis for amendments, but in practice it’s virtually impossible to convince some EPO Examiners that this is allowed.
On a related point, it’s common for the applicant to want to take a feature from one embodiment and use it to narrow an independent claim that is clearly directed to another embodiment. That might fly with the USPTO, but the EPO will likely refuse such an amendment unless the specific combination is expressly contemplated in the specification as filed.
Note that it’s not enough to show that the skilled person would have found it obvious to make the combination, or that the combination is trivial to implement – it must be clear that the specific combination is contemplated.
The second issue is the way inventive step is assessed in Europe. Before the USPTO, it’s often enough to show that a combination of features is novel, and that there is no teaching or motivation in the cited documents to combine the features in the manner claimed. The EPO usually requires more than that.
The EPO assesses inventive step using the “problem-solution approach”. In summary, the closest prior art is identified, an objective technical problem is constructed based on a difference between the closest prior art and the claim being assessed, then it is determined whether the skilled person would have found it obvious to modify the closest prior art in such a way as to arrive at the claimed invention, using the teachings of another document in the art or common general knowledge.
Some US attorneys provide instructions to their European associates showing how claim 1 is novel, concluding with something like “Since none of the citations show the novel feature, claim 1 is also inventive.” This may not be enough for the EPO. They may point out that the novel feature is mentioned only briefly in the description, and doesn’t appear to have any particular advantage associated with it. They therefore don’t consider it to be an invention, since it’s just an arbitrary novel feature.
The solution to this problem is to ensure that any feature you think might end up in a claim should be described not just in terms of technical details, but in terms of the advantages it offers.
Try to be consistent with language, and to provide as much information about each described feature as possible. If there’s any chance that a feature in the description might be imported into the claims, describe it in great detail, using the sort of language you’d want to use in a claim. Make sure that you explicitly state that features from one embodiment can be used with the other embodiments.
There are many subject matter specific areas that require specialist advice. For example, the EPO has a unique approach to software, biotech, medical diagnosis, and second-use type claims. If you have time and funds available, and intend to ultimately file in Europe, consider engaging a European patent attorney before filing the PCT (or even the priority document). They can provide specialist advice at the time when you have the most freedom to adjust the specification. Waiting until it’s time to enter the regional phase may well be leaving it too late.
In this three-part series on “Patent Prosecution in India,” we hope to provide you with important information to consider when seeking patent protection in India. In part one of the series, our colleagues at Kan and Krishme have shared a handy chart outlining the filing requirements in India vs. the United States:
Due at the time of the application filing or three months from the invitation from the patent office.
Due within four months from the date of actual filing or within 16 months from the filing date of the prior foreign application.
Verified English translation is a mandatory requirement of the priority document. It should be filed in the Indian Patent Office with the patent application or within three months of the date of invitation from the Indian Patent Office.
Foreign language application is allowed.
An English translation can be submitted later.
(between inventor and Applicant)
Mandatory requirement when the inventor has assigned the rights to the Applicant at the time of national phase entry.
The said document should be filed within six months of the filing deadline in the country.
Only the inventor(s) can be the Applicant.
Power of Attorney
Executed Declaration and Power of Attorney is required.
Request for Examination
Must be made within 48 months from the priority date/ date of filing, whichever is earlier.
All of the application shall be examined. When the application is filed, the official fee for the examination is paid.
Time limits for response to communications from the examiner
A period specified by India Patents Act is 12 months from the date of issuance of the first examination report.
A shortened statutory period for reply is set to expire three months or 30 days, whichever is longer, from the mailing date of the communication to the Applicant.
Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may the reply be timely filed within six months from the mailing date of the communication.
i) This type of application is often the result of a “restriction requirement” by an examiner, because a patent can only claim a single invention under 37 CFR 1.475 (Unity of Invention).
ii) It can be filed up to the grant date of the first mentioned application or parent application.
iii) In India, a divisional application out of divisional cannot be filed.
i) If two or more independent and distinct inventions are claimed in one application, the application is restricted to one of the inventions. Then, a divisional application may be filed.
ii) A divisional application out of divisional can be filed.
Patent of Addition
Can be filed for some improvements or enhancements in the invention.
Continuation, in part, can be filed for enhancements or improvements in the invention.
Amendments to claims/specification
Can be filed up to grant date and after the grant of the patent.
Can be filed before and after first office action.
Filing of details of corresponding foreign applications
Should be filed within six months from the date of filing of the application.
Information disclosure statement obligated as far as application is pending.
Foreign Filing License
No resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of the patent.
US Residents must obtain a foreign filing license before filing a patent application in any foreign country. This can be done by filing a petition.
The license is usually granted 6 months from the filing date.
Pre-grant Opposition: Can occur from the date of publication until granted date
Post-grant Opposition: Can occur after the granted date but before the expiry of the period of one year from the date of publication of granted date
No provision of pre-grant opposition.
i) Exists in the form of re-examination.
ii) Can be filed by anyone at any time during the enforceability of patent.
iii) Prescribed fee is required.
For additional information on patenting in India, or any other PCT country in the inovia agent network, download our free PCT e-kit here. Be sure to check back tomorrow for part two of our series, “Patent Prosecution in India.”
Part 1 of our series compared the patent filing processes for India and the United States. In Part 2, we provide the filing requirements for national phase entry into India, shared with us by our colleagues at Kan and Krishme.
Filing requirements for PCT national stage entry into India:
- Name, address, and nationality of Applicant(s) and inventor(s)
- PCT application number
- Priority application number, date of filing and country
- Original patent specification, claims and drawings in English
- Amended claims, if any, filed under Art. 19 of PCT
- If IPER is requested, any amendment must be annexed to IPER
- A copy of PCT Request, International Preliminary Search Report and International Preliminary Examination Report (click here for link to forms)
- Declaration of inventorship
- Power of Attorney
It is important to note that the time limit for entry into the national phase is 31 months from the date of earliest priority. If the Applicant desires to expedite the processing of the national phase application into India, it is advisable to file express request for examination at the time of entry to ensure that the examination process begins before the deadline for the national phase expires. If the Applicant enters the national phase early and does not file express request, the examination process of the application does not start until the expiration of the deadline for entry into national phase.
Note: the inovia foreign filing platform streamlines the administrative work required for preparing the forms mentioned above. Read more about our streamlined approach to PCT national stage entry.
Check back again tomorrow for the third part of our series on “Patent Prosecution in India.” For more information on PCT national stage entry into India, or any other PCT country in the inovia agent network, you can download our free e-kit here.