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Samson Helfgott is a partner with KMZ Rosenman in New York. He has practiced for more than 30 years in domestic and international patent, trademark, and copyright matters.
A number of interesting items have come up with respect to the I2P Group (International Intellectual Property Group), which are of interest to the entire membership.
In connection with the proposed “unitary” patent to be valid within the EU Member States, the European Commission planned to create a Unitary Patent Court. Italy and Spain were the only two EU members to have opposed the idea of a single EU-wide patent system, which would include plans for the Unitary Patent Court. To carry out such opposition, in May 2011, these two countries jointly filed an appeal before the European Court of Justice against the decision of the EU Council of Ministers to allow negotiation of such unitary patent among the other 25 Member States of the EU, excluding Italy and Spain.
As a result of Italy’s new government, which began in November 2011, Italy changed its position, at least with respect to the European Patent Court (EPC). It is not known whether it also will change its position with respect to the single EU-wide patent system. However, as a result of the changed position on the EPC, Italy declared to the Competitiveness Council of the European Union that Italy will now take part in negotiations on this EPC.
Under the current plans, the Unitary Patent Court would have one seat for the Court of Appeals. Currently, Luxembourg is being considered for such location. There also would be a Central Division. At present, Paris, Munich, and London have been vying to serve as the host city. However, with the change in position by the Italian government, it also may be interested in proposing Milan as the seat for the new Unitary Patent Court.
Although previously announced, in December 2011 the USPTO and the Russian Federal Service for Intellectual Property (ROSPATENT) began implementation of an agreement under which ROSPATENT will be able to serve as an available International Searching Authority (ISA) and International Preliminary Examination Authority for PCT applications filed in the USPTO Receiving Office. The starting date for such searches was January 10, 2012.
Currently, U.S. applicants can choose as the ISA the U.S.; Europe; Korea; and for limited technologies, Australia. ROSPATENT will provide an additional resource for such international searches on PCT applications filed in the US/RO.
Currently, the proposed fees for selecting ROSPATENT as the ISA will be a search fee of $415. This represents the lowest cost of any of the searching authorities available for PCT applications filed in the US/RO.
In a report published by the World Intellectual Property Organization (WIPO), they indicated that intellectual property filings worldwide rebounded in 2010 after experiencing a considerable drop in 2009. The recovery in IP filings was stronger [CN1]the overall economic recovery. Patent filings increased worldwide by 7.2% and trademark worldwide filings increased by 11.8%. This compared with an overall increase in global domestic product (GDP) in 2010 of only 5.1%.
China and the U.S. were the two offices that accounted for the majority of worldwide IP growth. In the case of China, the IP growth rates were more than double its GDP. Likewise, patent filings in Europe and Japan far exceeded their GDP. The Republic of Korea was the only reported office for which the GDP growth exceeded filing growth for both patents and trademarks.
An all time high of 1.98 million patents and utility model applications were filed globally, consisting of 1.23 million resident applications and .75 million nonresident applications. International filings through the PCT grew by 5.7% in 2010, following a decline in 2009. Such PCT filings were driven by China, Japan, and the Republic of Korea with these countries accounting for 94% of the total growth.
The growth rate of patent applications in China during 2010 was 24.3%, and in trademark applications it was 29.8%. The growth rate in the U.S. was 7.5% in patent applications and 5% in trademark applications. Japan actually suffered a continued loss in patent application filings in 2010, which was down by 1.1%, although their trademark applications grew by 11.1%.
China, with a total of 293,066 resident applications, overtook Japan to become the top country for resident applications. However, filings from China abroad consisted of only 5% of all Chinese applications. The U.S. ranked third with 241,977 resident applications. However, U.S. residents filed the greatest number of applications in foreign countries.
Canada, Israel, the Netherlands, and Switzerland each filed more than 80% of their total applications abroad.
The number of patents granted worldwide stood at 909,000 in 2010, which was a 12.4% increase over 2009. The Japanese Patent Office (JPO) and the USPTO accounted for 80% of the total growth.
Currently, there are an estimated 7.3 million patents in force worldwide. The largest number of patents in force were granted by the USPTO (2 million) and the JPO (1.4 million). Their combined share in the world total was approximately 48%. The patent offices of China (29%), Mexico (10%), and Spain (14%) saw considerable growth in 2010.
Pending applications worldwide declined by 3.3% in 2010. The drops in pending applications in the JPO and USPTO were the main contributors to this decline. Pending applications worldwide stood at around 5.17 million in 2010.
The total number of utility model applications filed around the world also grew by 24% in 2010. This was driven substantially by the growth in such applications in China. An all time high of 496,000 utility model applications were filed globally with China accounting for 83%. The trademark growth of 11.8% in 2010 was the largest growth rate since 2000, after having declined over the previous two years. An estimated 3.66 million trademark applications were filed globally, consisting of 2.78 million resident and .88 million nonresident applications. The IP office in China accounted for three-fifths of the total growth. International registrations through the Madrid System also saw renewed growth of 4.5% in 2010. However, the total of 37,533 registrations in 2010 remained below the pre-crises peak of nearly 41,000 registrations.
Around 3.16 million trademarks were registered across the world in 2010, a 21.4% increase from 2009. Growth of registrations in China was the main source of growth in the worldwide total.
Currently, within the EPO a notice of allowance is issued and accompanied by the proposed text for grant. The applicant must respond to this notice by filing translations of the claims into the two further EPO official languages and then paying the official granting and printing fees.
If the applicant desires to make changes to the text, translation of the claims of the new text must be filed. However, if the examiner does not approve those changes, alternative amendments have to be agreed on or the applicant must go back to the original text. As a result, currently it is occasionally necessary to prepare and file more than one set of claim translations.
Beginning in April 1, 2012, a new procedure will be introduced. Instead of responding to the notice of allowance by filing claim translations and paying official fees, the applicant can request amendment or correction of the text. If the request is approved, a further notice of allowance will then be issued accompanied by a new text approved for grant. If the request is not approved, the EPO will resume examination.
The new procedure will apply to applications for which the notice of allowance is issued on or after April 1, 2012.
This new procedure may be particularly useful where the text proposed for grant has been changed by the examiner without the applicant’s approval. It also avoids the extra expense when more than one set of claim translations has to be prepared. However, when amendments are introduced, it will likely delay the grant of the patent.
Members of the World Trade Organization (WTO) approved a draft decision endorsing a possible deadline extension for least developed countries (LDCs) to implement the WTO TRIPS rules on the protection of intellectual property rights. Originally, LDCs were required to provide protection for trademarks, copyrights, patents, and other intellectual property rights under the TRIPS agreement by January 1, 2006. This deadline was extended until July 1, 2013, by a previous TRIPS council decision. However, as LDCs continue to face serious economic, financial, and administrative constraints in their offices to bring their domestic legal system into conformity with the provisions of the TRIPS agreement, it was proposed to extend the required deadline until July 1, 2013.
The final decision on how to extend the implementation deadline and what conditions would apply will be taken up by the TRIPS council in 2012. While the United States went along with the draft decision, it indicated that it wanted any such deadline extension to be part of a broader effort to insure that LDCs can fully protect intellectual property rights.
On November 1, 2011, the London Agreement was entered into force for Finland as the 17th EPC contracting state.
This means that for European patents granted with effect for Finland on or after November 1, 2011, a Finnish translation of the European patent specification is no longer needed if the patent was granted in English or if an English translation of the patent is filed with the Finnish patent office. However, a Finnish translation of the claims still has to be filed.
The EPO announced that it will revise its practice when acting as an International Preliminary Examination Authority (IPEA) under Chapter II of the PCT. Under this new proposal, there will be provided a further opportunity for dialogue between the applicant and the EPO in reaction to a negative first written opinion.
Currently, the practice in the EPO, similar to that of all other IPEAs, is to issue only one written opinion to which the applicant may file a reply. The next communication is the International Preliminary Examination Report (IPER), which is issued regardless of whether the examiner is convinced by the applicant’s arguments.
Under the new revised procedure, the EPO will now issue one additional written opinion before issuing a negative IPER. In this second written opinion, a time limit will be set within which the applicant may reply by filing further arguments and/or amendments.
The applicant does not have to request such a second written opinion. However, the second written opinion will be issued only if the applicant filed a timely reply to the first written opinion.
The applicant also has the ability to request a telephone interview before a second written opinion is issued. After such interview, the minutes of the interview, together with an invitation to submit further amendments and/or arguments within a given period of time, will be issued. In such case, no second written opinion will be issued as the telephone interview will be regarded as replacing the second written opinion.
If the applicant requests in the alternative a telephone interview and/or a second written opinion, the EPO will decide on the most appropriate way to respond and will either contact the applicant by phone or establish a second written opinion.
If the applicant files a request for a telephone interview after a second written opinion has been issued, the minutes of the interview will be sent to the applicant but will be accompanied by an invitation to submit further amendments and/or arguments only if such was agreed to during the telephone interview.
The time limit for replying to a second written opinion or minutes of a telephone interview will normally be between one and two months. This new practice will apply to all international applications for which the time limit for establishing the IPER will expire on or after December 1, 2011, unless the IPER is established before October 1, 2011.
Representatives of the Chinese and U.S. patent offices executed a joint agreement to initiate two patent prosecution pilot programs beginning December 1, 2011. This will provide for PPH both for Paris Convention cases and cases filed under the PCT.
The PPH agreement will permit expediting patent applications of applicants interested in obtaining patents among these two jurisdictions. Patents filed in one country, either under the Paris Convention or under the PCT and then filed in the other of these two countries, would be able to use the search report either from the national patent office or the international search authority of the other patent office.
In a major step to improve access to patent documents in multiple languages, the EPO announced a new machine translation service, called Patent Translate, on the EPO’s website. The service uses Google’s Translate technology and enables translation from and to English for French, German, Spanish, Italian, Portuguese, and Swedish, covering approximately 90% of all patents issued in Europe. By the end of 2014, it is anticipated that the services also will be able to translate patents from and to all 28 languages of the EPO member states, as well as Chinese, Japanese, Korean, and Russian.
The cooperation with Google launched less than one year ago has already led to a significant improvement in the quality of the machine translation of patents. This was achieved by the introduction of several hundred thousand high quality translations of patents in the seven languages provided by the EPO, which Google used to “train” its Google translate system. Further gains will be achieved as more language materials are added over time.
A next batch including Danish, Dutch, Finnish, Greek, Hungarian, and Norwegian will be uploaded in 2013, and by the end of 2014 the project should be completed for the 31 languages.