New Foreign Filing Resources Available at inovia.com

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There are some new resources available at inovia.com:

  • Our PCT national phase entry e-kit contains helpful resources for applicants looking to pursue international patent protection via the Patent Cooperation Treaty (PCT). 
  • If you have a granted European patent, download the European validation e-kit for an overview of the European validation process and country-specific filing and translation requirements.
  • If you’re an attorney, you can download the foreign filing e-kit for attorneys containing country-specific filing requirements for both PCT national stage entry and European validation.  

We’ve also improved the Frequently Asked Questions section of our website.  We hope that you find these resources useful.

Can’t find the information you’re looking for?  Feel free to contact our global team with any questions that you have.

Foreign filing into country “X”

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Which country / countries should we add next to our pctfiler network?  We’re looking for your feedback.

Today we can handle our clients’ PCT national stage entry and European validation in 60+ countries (see the list of countries covered by our global agent network).

Which PCT contracting states should we add next, based on your (or your clients’) foreign filing needs?

Our shortlist presently includes:

  • ARIPO
  • UAE
  • Egypt
  • Chile
  • Thailand

 

Stage versus Phase?

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Yes, we know it’s officially known as the PCT National Phase… inovia was founded by an Australian patent attorney, after all.

Yet many patent attorneys, agents and applicants in the US refer to it as “PCT national stage entry”.  We’ve used ‘stage’ on our website and in other materials because many of our (mostly US-based) clients say ‘stage’.  So, we’re having an internal debate about this choice and thought we’d open it up to our blog readers…  what do you say?  Should we use ‘phase’ or stick with ‘stage’?

inovia and TTOs: A Case Study

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At the AUTM 2010 Annual Meeting, several University Technology Transfer Office (TTO) executives asked us how and why TTOs are using inovia and what benefits they see.  Here’s a brief case study of a current university client:

Background
The TTO of this CA-based University files, on average, about 20-40 PCT applications a year. For the most part, entry into the national stage for any particular application requires a licensee in place for the claimed technology, and the licensee determines in which countries to nationalize. Payment of fees is also handled directly by the licensee.

Previously, the TTO entered the national stage and validated their granted European applications via their outside US counsel. National stage entry instructions were sent to US counsel, who would then prepare the requisite forms and instruct their foreign agents accordingly. European validation followed a similar process.

Working With inovia
An obvious concern for the TTO was how to incorporate a foreign filing provider with minimal disruption to their current practice. Here, the TTO now sends instructions regarding foreign filing and validation to us, rather than their outside counsel. We prepare all the forms necessary for national stage entry. The TTO notified their law firm that national stage entry and European validation would be handled by inovia. Once the application enters the desired countries, the TTO and their domestic counsel work together with our foreign associates through prosecution.

Regarding communication with the foreign associates, the TTO wished to receive all correspondence directly, with copies sent to their licensee and outside counsel. This way, all relevant parties were “in the loop” as far as foreign filing was concerned.

The primary benefit of this arrangement was cost savings. The elimination of an extra layer of legal fees (i.e. the cost of instructing US counsel, who would then relay instructions to the foreign associates) results in a significant reduction in costs. This TTO previously worked with a number of US law firms, each with their own network of foreign associates. In an effort to streamline their foreign filing, the TTO, by filing through inovia, was able to consolidate their foreign representatives, and reap those cost savings as well.

Given the financial pressure many Univerisities (and companies) are under this year, saving on foreign filing (without having to reduce the number of countries they enter) was a welcome arrangement.

Demystifying the European Validation Process

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Although many of our clients know granted European applications must be validated, a good number of them don’t have a strong understanding of the grant and validation process.

For many applicants, especially those in the US, their post-prosecution involvement begins and ends with simply instructing their European agent to “finish the job and validate in countries X, Y and Z.”

Here, I’ll try to provide a simple overview of the European grant and validation process.

Part 1: Getting to Grant

The end of the prosecution stage is marked by issuance of the Notice of Intention to Grant (also known as a Communication under 71(3) EPC). Congratulations, the hard part’s over! The granted claims must now be translated into French and German (assuming the original application was filed in English). The translated claims are submitted to the EPO with the printing and grant fees within 4 months of the issuance of the Notice of Intention to Grant. For most US-based applicants, their European agent coordinates these steps.

Next, the EPO issues a Decision to Grant (also known as a Communication under 97(1) EPC) which is published in the European Patent Bulletin. Following publication of the Decision to Grant, the applicant has 3 months to validate the granted application in those countries where protection is desired.

Part 2: Time to Validate

Validation involves corresponding with the patent offices in each of the selected countries. Depending on which countries are chosen, the applicant may need to do any combination of the following:

  • Pay a fee

  • Submit forms or a letter indicating that validation is required

  • Lodge a translation of the claims or of the entire specification

  • Record a local address for service

However, in many countries such as the UK, Germany and France, a formal “validation” step is no longer required. The European patent will be in force in such countries as long as annuities are paid at the country level.

Following validation, the patent is now in force within the selected jurisdictions. To maintain the patent, the applicant must pay annuities, also known as renewal fees, each year.

 


See this page for more detail regarding the European validation process.

FYI: inovia typically helps clients save time and money at Part 2 of the grant and validation process, but we can also step in at Part 1 if desired.  From our website, you can get an estimate for your European validation

inovia launches U.S. trademark search and registration service

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Earlier this month we announced the launch of our new trademark search and registration service, which is available on our website. Using our trademark search engine, applicants and attorneys can search more than seven million U.S. trademarks for free and register their marks at a low, flat cost.

If you’d like to try it out, start by running a “knockout search,” which will reveal only trademarks in the most relevant classes to your product or service category. If you’re unsure of what class your product or service falls into, don’t worry – our tool will help you identify the categories relating to your product or service and then assign them to the appropriate class(es).

If you’d like to learn more about trademarks and/or the trademark registration process in the U.S., you can download a free guide. Alternatively, here’s a brief overview:

What is a trademark?

A trademark is a word, phrase, logo, color, sound or smell that is legally registered to distinguish the goods and services of one company from those of others.

When you apply for a trademark, you must assign it to a particular goods and service “class” (e.g. “Telecommunications”) as defined by international convention. Your registration is then limited by the goods and services listed in your application.

Trademarks protect distinctive marks, so it’s very difficult (and sometimes impossible) to register something already in use by someone else or something that is descriptive.

Once registered, the trademark is protected for 10 years and can be renewed indefinitely thereafter.

What types of marks can be registered?

A registered trademark is a powerful legal right. Understandably, there are some limits on what can be registered.

In most cases a trademark will be a word, a phrase or a logo (which might also have words in it). Trademarks that are:

  • not similar to a brand already in use; and
  • not descriptive of your goods and services

have the best chance of being registered without any issues. Using our free trademark search tool, you’ll be able to quickly determine whether your mark is already in common usage (but this tool is obviously a guide only!).

Some trademarks are more difficult to register (and in some cases, impossible), such as:

  • Trademarks that are identical or very similar to earlier filed trademarks for similar goods or services
  • Descriptive terms, such as “shoe” for shoe products or “apple” for fruit
  • Common surnames and geographical place names
  • Words or phrases that favorably promote goods or services, such as “Best Quality”
  • Words or phrases common to trade, such as “On Sale”
  • Marks that are scandalous or misleading
  • Some marks are protected by law and cannot be registered, such as the word “Olympic”

What goods and services should I include in my application?

As mentioned above, trademarks are registered for particular goods and services, so your legal rights are limited by the goods and services you include in your application. Registering your trademark for “t-shirts” doesn’t prevent someone also using your trademark for “medical services.”

It’s a requirement that your goods and services are correctly classified into one of the 45 different trademark classes. The classes are general groupings of different, but related, goods and services. If you don’t get this part right, your application will likely be rejected.

But don’t worry – if you’re running a search on our website, simply provide us with a description of your product or service category and our tool will do the rest.

What is the trademark registration process in the U.S.?

The registration process in the U.S. is very similar to other countries and is, in part, governed by international treaty.

There are two key points to remember:

  1. Trademarks are registered on a “first to file” basis, meaning that if someone else puts in an application before you, chances are you will miss out and won’t be able to use your trademark.
  2. In most cases, once your trademark is registered, protection begins retroactively from your application date. This is another reason to get your application in early.

Once the application is lodged, the trademark office examines the application, looking for potential issues including whether the description of goods and services is sufficiently clear and is in the correct category.  If the application is accepted, it’s then advertised for an “opposition period” allowing others to object to the registration. Objections are very rare, with most applications moving directly through to registration.

In the U.S., registrants must show evidence of use of the mark in interstate commerce within 6 months from the notice of acceptance. This can be as simple as showing a picture of the mark on the good at the point of sale.

After your mark is registered, you’ll receive official confirmation of registration and you can start using the ® symbol together with your trademark for the relevant goods and services.

Ready to get started? Click here to give our new tool a try.