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.
Historically, in Switzerland, patent litigations were adjudicated in the first instance by one of the courts of the 26 Swiss Cantons. Each Canton had its own set of rules and procedures. Additionally, as there were only a limited number of patent cases brought each year in Switzerland, most of these courts did not develop sufficient expertise in adjudicating patent disputes.
At the beginning of 2012, a new Swiss Federal Patent Court was instituted as a specialized first instance court of patent litigation for the entire country of Switzerland. This court currently has exclusive competence for validity and infringement disputes as well as actions relating to license issues of patents. It can order preliminary injunction measures and has the competence to enforce decisions issued from the court. Additionally, this Federal Patent Court will also be competent for other related issues having a factual connection to the main patent issues in the case.
The parties to a proceeding will be permitted to use English instead of any one of Switzerland’s official three languages, subject to the agreement of the other party or parties to the proceeding. However, decisions will be handed down in only the three official Swiss languages.
It is anticipated that the use of the Federal Patent Court will permit expedited proceedings, reduced costs, and provide expertise to the judges rendering decisions in this court.
The Israeli Patent Office and the USPTO entered into an agreement for a Pilot PCT PPH Program making use of the results of an international search done by each country for use upon entry in the national phase of the other country. This agreement follows onto the previous arrangement between these two countries to make use of the result of a national prosecution in a Paris-type PPH program.
The PCT PPH Program currently is a pilot program for one year, until July 31, 2013. However, it is expected that as with most of the PPH pilot programs, this program will be extended after that date.
After a meeting in June 2012 by the heads of all EU Member States, with the exception of Italy and Spain, Europe has removed most of the hurdles relating to the location of the Unified Patent Court (UPC), which will be the court assigned to enforce a European patent issued under the Unified Patent System. The UPC will be the first instance court for infringement and validity cases for all European patents granted under the Unified Patent System.
The decision was that the UPC will compromise a central division as well as regional and local divisions. The main seat of the central division will be located in Paris and it will have two equally important branches for specific technologies. London will address chemical, pharmaceutical, and related technologies and Munich will address mechanical engineering and the like.
The target date for the Unified Patent System coming into effect is currently April 2014. While there may be some additional legislative challenges to be addressed, it is believed that these will be addressed and that the Unified Patent System will come into effect soon after the target date.
As of July 2012, new provisions have been introduced permitting third parties the opportunity to submit observations on the patentability of claims in pending international PCT applications. The applicant is also given an opportunity to submit observations either in response to such third-party submissions or on their own initiative. The International Bureau will lay open these observations to public inspection and communicate them to the applicant, as well as to the International Searching or Preliminary Examination Authorities and to the Designated Offices.
These procedures will offer a low cost ability for third parties to limit unduly broad protection contemplated from an international patent application. It will also permit the applicants themselves to address prior art that they have become aware of during the course of their prosecution.
Such third-party observations must be filed within 28 months of the PCT priority date. The applicant then has a deadline of 30 months to respond. Third parties can only make one submission in a particular international application, thereby avoiding harassment techniques.
Since the International Bureau does not carry out any translations, it normally will be desirable to submit observations in English in order to maximize their being utilized to the greatest extent. Such third party has no rights to enter into a dialog but simply submits the observations which become of record.
On August 22, 2012, Russia became a full member of the WTO. A number of changes in Russian laws were needed before such accession. First, the patent fees charged to foreigners historically were multiple times higher than the fees charged to residents. The elimination of this imbalance was required in order to agree with the TRIPS agreement of WTO.
Modifications also were necessary in connection with the legal protection of geographical indications for wines and spirits. Likewise, protection of information on preclinical and clinical studies of drugs and medications provided by the applicant during registration of such drugs has become effective.
A report published by the European Commission indicated that the value of counterfeit products confiscated by customs officials in Europe increased by about 15 percent in 2011, as compared to 2010. The total estimated amount of counterfeit products was about $1.54 billion U.S. dollars.
China continued to be by far the largest originator of counterfeits that were confiscated. Of the total contraband found, 73 percent arrived from China, with another 7.7 percent coming from Hong Kong. Other countries from which fake goods arrived in 2011 included India at 3.3 percent, the United Arab Emirates at 2.8 percent, Syria at 1.8 percent, and Turkey at 1.6 percent.
The report indicated that for certain specific products there were notably other sources. For example, Turkey remained prominent for contraband food products, Panama was a major source for alcoholic beverages, Thailand provided nonalcoholic beverages, and Hong Kong provided the most mobile phone and computer equipment contraband products. Syria was the largest source for CDs and DVDs.
The largest overall category of confiscated counterfeit goods was medicine, at 24 percent, followed by packaging material at 21 percent and cigarettes at 18 percent.
The United Kingdom remained the country registering the largest number of confiscated cases, followed by Germany, Belgium, Italy, Spain, and the Netherlands.
Trademarks applied for under the Madrid Agreement and the Protocol increased in 2011 by 6.5 percent above those filed in 2010. The total number of applications filed were 42,270.
Fifty-seven percent of those applications originated from European Union Member Countries. The U.S. currently is the third largest country originating international trademarks and accounted for 11.3 percent of the total. China has dramatically increased its filings by more than 11 percent. However, the largest increase occurred in Russia, which applied for 35.6 percent more international trademark applications than in 2010.
It is interesting to note that 21,754 trademarks were renewed in 2011. This indicates that the trademarks filed through this system are still important for businesses and are therefore being renewed.
The most designated country during the year 2011 was China, with more than 18,000 designations. This was followed by the European Union, the U.S., Russia, Switzerland, Japan, Australia, Korea, Turkey, and the Ukraine. Israel has moved up the list and is now the 24th most designated country.
The most popular class applied for was Class 9, which includes hardware and software. This accounted for 8.5 percent of all filings. From the services class, the most designated was Class 35, which includes advertising, business, and retail trade. This accounted for 7.3 percent of the registrations filed. Class 25, relating to clothing, accounted for 5.2 percent of the total and Class 5, relating to pharmaceuticals and other products for medical use, reached 4.5 percent.
The Chinese Administry of Finance has issued a notice updating its existing program on providing financial assistance for filing abroad. This specific program provides financial assistance for domestic Chinese applicants at small and medium -size companies or at research institutions that apply for patents outside China.
The funds are to help the Chinese applicants better protect the results of independent innovation by applying for foreign patents. Funding helps cover some of the costs of patent application filings and subsequent patent examinations, including covering official fees and fees paid for services to agents. Subsidies per applicant within each country cannot exceed approximately $15,000. The government distributes the funds on an applicant’s need basis upon submission of a claim for the funding through provincial government authorities and upon providing the necessary backup showing that they have legally and successfully applied for such foreign patents.