Here’s a recap of the foreign filing/patent law news from the week of August 15:
- The USPTO issued its 8 millionth patent on Tuesday. The patent was awarded to Second Sight Medical Products for a “Visual Prosthesis Apparatus” that enhances visual perception for the sight impaired.
- Our friends at Spoor & Fisher informed us that Rwanda will become the newest member of ARIPO.
- We posted an overview of Australian innovation patents.
- Our own Jeff Shieh authored a guest blog article on IPWatchdog.com, which provides an overview of the PCT process.
- There are some new foreign filing resources available on the inovia website. Read more about them here.
As always, please feel free to share news from your country below. Don’t forget to follow us on Twitter @inoviaIP.
Have a great weekend!
Our friends at HarneckerCarey recently shared some important news for patent applicants seeking protection of living organisms. On May 5th, 2011, Chile joined the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure. This treaty will enter into force on August 5th, 2011.
In order for a patent application for a living organism to be examined, the biological material must be deposited at a recognized institution. The Budapest Treaty, administered by WIPO, facilitates this process for those seeking protection in multiple jurisdictions. Per the treaty, applicants can deposit the biological material at one international institution and it will be recognized in all countries party to the Budapest Treaty. The treaty’s purpose is to make it easier (and faster) for applicants to file patents of this kind and also reduce the general cost of the proceedings.
For more information, visit the WIPO website.
One of my PCT alerts today included a CBS News blog on green issues… Curious about why a green-issues blog would refer to the Patent Cooperation Treaty (PCT), I had a look.
I was amused to find the blogger placing the Patent Cooperation Treaty in the same category as the Convention on Psychotropic Substances – a category he refers to as “forgettable” treaties “that achieve some progress but essentially serve to remind signatory nations that they passed the same national laws”.
An interesting interpretation, to say the least!
The number of applications filed via the PCT has increased every year since PCT applications were first accepted in 1978. Over 1.6 million applications have been filed since then (to 2008) and over 160,000 applications were filed last year, according to WIPO.
Excluding the recent international financial turmoil that has affected filing of all sorts of patents (local, direct foreign and PCT), the annual growth rate of filings via the PCT has averaged something like 5% per annum for the last decade.
In the absence of the PCT, what would have happened to all these applications? Some would have been filed only in the home country of the applicant. Some would have added perhaps one or two foreign countries. Some would have been filed in a larger number of foreign countries, with the applicant betting a very substantial amount of money that no prior art would surface after all the foreign filings fees, translation charges and foreign attorney fees had been spent. In all these cases, the decision on how many countries to file in must be made an average of 18 months earlier than via a PCT application.
You see, without the PCT and its 30/31 month national phase deadline, there is simply no practical way for applicants to delay (beyond the 12 month Paris Convention period) the substantial costs of foreign applications. They’d either have to limit themselves to a smaller number of applications or commit a huge amount of money very early in the commercial life of the invention to cover a large number of countries at relatively great risk.
As for the PCT “essentially [serving] to remind signatory nations that they passed the same national laws”… well, let’s just say that is not my understanding of the intent or practical impact of the PCT.
And in any event, I suspect many of the countries presently protesting that WIPO is attempting to use the PCT to standardise national laws would vigorously dispute such a conclusion.
Now I’ll admit intellectual property isn’t that interesting a subject for most people. For some it holds an interest mainly because they disagree with some aspects of it to one extent or another. The PCT mightn’t even be as interesting as the psychotropic drugs the CBS’s green blogger lumped it in with. But to suggest the PCT is “forgettable” ignores what the PCT has achieved for inventors and technology businesses of all sizes over the last thirty years.
PCT versus the Paris Convention
While I’m a firm advocate of the PCT (well, I would be wouldn’t I?), direct Paris Convention filing will also have a place in the filing strategies of many applicants.
Some advantages of the PCT are:
A single application can be filed in the applicant’s home country, in the local language.
It delays (by up to 18 months) the need to make a firm decision about the countries where patent protection is to be pursued.
The PCT International Search Report (ISR) often can help applicants determine how likely it is that the application will proceed to grant in individual countries after national phase entry.
Even accounting for the additional cost of the PCT application, slightly lower costs for national phase entry as compared with direct filings means the PCT route for more than a couple of countries can actually be cheaper overall.
That said, there are a few advantages that only direct filings can offer:
While many applicants want to delay the costs associated with examination and grant of a patent (and the PCT offers this), sometimes fast grant of the patent is desirable. The sooner an application is filed in an individual country, the sooner it can be examined. Direct filings can often proceed to grant significantly faster than those going by the PCT route.
Universal coverage: the PCT covers over 130 countries, including the vast majority of major commercial destinations. However, there are a few notable non-PCT countries, including Taiwan and Argentina. If you want coverage in those, it will be necessary to file directly using either the Paris convention (or – as may be the case with Taiwan – an equivalent bilateral agreement with the applicant’s country, assuming one exists).
Completely different and tailored content for each country. With the PCT, applicants must draft a single patent specification that takes into account the different legal requirements of all countries. While formality issues aren’t such a problem, there may be situations where an applicant would prefer different content to file in, for example, Europe and the USA. The sorts of problems that such different content would seek to avoid tend to be industry specific; for example, different approaches to information technology and pharmaceutical patents in certain jurisdictions may make it difficult to provide a “one size fits all” specification that is perfectly tailored to all jurisdictions.
In essence, in many cases it pays to think of PCT and Paris Convention applications as being complementary rather than alternative approaches to foreign filing.
Overshadowed by recent patent examination backlog discussions, a series of bilateral agreements, known as the Patent Prosecution Highway (PPH), has quietly been making progress on work-sharing between patent offices.
The PPH allows fast-tracking of an application in one country, based on the results of examination in another.
It’s been argued by some that the PPH is undermining the development of PCT work-sharing schemes, by sidestepping political logjams at the PCT level.
However, if the PPH is successful, much of the procedural work for implementing work-sharing under the PCT will already have been developed, tested and proven in practice.
Perhaps as importantly, the PPH should also have the more subjective – and critical – effect of increasing trust between patent offices. A lack of trust in the work of other patent offices has been a significant problem with achieving consensus in relation to reliance on work done in preparing the ISR, for example.
Overall, if the PPH is successful, it might ironically have the effect of speeding up a belief in genuine work-sharing at the PCT level. The recent agreement to start allowing PCT national phase applications to be used under the PPH takes another step towards that long-term goal.
Photo credit: rjones0856
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.
On a recent telephone call, a company inquired as to whether inovia offers patent filing services for the Organisation Africaine de la Propriété Intellectuelle or African Intellectual Property Organization (OAPI). Although inovia currently only offers regional stage entry into ARIPO, I thought this would be a good opportunity to provide some information on this other major Intellectual Property organization.
OAPI was created by the Bangui Agreement on March 2, 1977, and is a member to both the Paris Convention and the PCT. It is headquartered in Yaounde, Cameroon, and consists of the Administrative Council, the High Commission of Appeal, and the Directorate General.
Its member states are Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Côte d’Ivoire (Ivory Coast), Gabon, Guinea, Guinea-Bissau, Equatorial Guinea, Mali, Mauritania, Niger, Senegal, and Togo.
OAPI has jurisdiction over patents, utility models, trademarks, industrial designs, trade names, geographical indications, copyright, unfair competition, integrated circuit layouts, and plant variety rights.
There are several significant differences between OAPI and ARIPO. ARIPO covers mostly English-speaking countries in east Africa, while OAPI covers mostly French-speaking countries in west Africa.
Regional phase deadline for ARIPO is at the 31-month date, while the OAPI deadline is at the 30-month date. While both regions are growing, the interest we’ve received from our clients has almost exclusively been for ARIPO.
That said, we’re always seeking to expand our global network. Do you (or your clients) ever file in OAPI?
In response to the growth of IP in Africa and client requests, inovia is happy to announce today that Spoor & Fisher has joined our global agent network and will handle our PCT national stage entries into ARIPO. With the addition of this award-winning law firm, inovia is now able to handle PCT national stage entry into 43 countries and regions.
Some quick facts about ARIPO:
- ARIPO stands for African Regional Intellectual Property Organization.
- It was created by the United Nations Economic Commission for Africa (UNECA) and the World Intellectual Property Organization (WIPO) via the Lusaka Agreement on December 9, 1976.
- ARIPO’s current 16 member states are: Botswana, Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Namibia, Sierra Leone, Somalia, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe.
- ARIPO is governed by the Harare Protocol for patents, utility models and industrial designs and the Banjul Protocol for trademarks.
- ARIPO may be designated both under the PCT or the Paris Convention.
Further information on ARIPO can be found at www.aripo.org and also on the WIPO website. You can run an estimate of filing into ARIPO with our foreign filing platform.
Validation costs for granted European applications can easily spiral out of control due to the translations required for many countries at this stage. Translation costs can make up over 75% of the total cost for validation, and as a result, applicants can often only validate in a limited number of Member States.
The London Agreement, which went into effect on May 1, 2008, helps reduce validation costs by easing translation requirements in the signatory countries. However, its benefits only apply to the 15 Member States who are currently participants.
In a bid to further simplify the translation requirements for European patents, European Union Commissioner Michel Barnier recently introduced a proposal that would basically expand the London Agreement to all countries.
Under this proposal, applications would be examined and granted in one of the three official languages (English, French or German). Upon grant, the claims of the patent would need to be translated into the other two official languages. No further translations would be required, except in the case of subsequent legal disputes.
In an example where the applicant wishes to validate in 13 countries, this proposal could potentially reduce overall costs from over €20,000 to about €6,000.
Historically, larger European countries such as Spain and Italy have been unhappy with the idea of their languages being pushed aside in this way. This is a key reason for the London Agreement covering such a limited number of countries. Convincing these countries will therefore be the key to this proposal becoming successful. Whether Commissioner Barnier’s proposal can garner the required unanimous support among non London Agreement Member States remains to be seen.
In the meantime, there other ways to minimize translation costs and maximize European patent protection.