I2P GROUP NEWS

Vol. 6 No. 5

By

Samson Helfgott is a partner with Katten Muchin Rosenman LLP in New York. He has practiced for more than 30 years in domestic and international patent, tradfemark, 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.

Global Patent Prosecution Highway Begins

Beginning in January 2014, 13 Intellectual Property Offices have begun a Global Patent Prosecution Highway (PPH) arrangement. The 13 offices involved are IP Australia (IP Australia), Canadian Intellectual Property Office (CIPO), Danish Patent and Trademark Office (DKPTO), National Board of Patents and Registration of Finland (NBPR), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), Nordic Patent Institute (NPI), Norwegian Industrial Property Office (NIPO), Portuguese Institute of Industrial Property (INPI), Russian Federal Service for Intellectual Property (ROSPATENT), Spanish Patent and Trademark Office (SPTO), United Kingdom Intellectual Property Office (IPO), and United States Patent and Trademark Office (USPTO).

The Global PPH will allow patent applicants to request accelerated examination at any of the offices involved in the program if their claims have been found to be acceptable by any of the other offices involved in the program. The Global PPH will make use of the MOTAINI approach where any earlier examination from one of these offices can be used at the basis for a PPH request in any of the other offices. Furthermore, the search and examination that is used can either be based upon a national or regional search and exam or a patent cooperative treaty (PCT), international serach report (ISR), and WO. In order to be eligible for a Global PPH, the following requirements must be met:

  1. The applications before the Office of Earlier Examination (OEE) and the Office of Later Examination (OLE) have the same earliest date (which may be the priority date or the filing date).
  2. The OEE has found at least one claim to be allowable. The indication that a claim is allowable will be provided as an explicit statement in any substantive work product from the OEE. The claim(s) determined as novel, inventive and industrially applicable in the PCT work products has/have the meaning of allowable.
  3. All claims presented for examination under the GPPH program must sufficiently correspond to one or more of the claims found allowable by the OEE.
  4. The OLE has not begun substantive examination of the application. However, OLE’s may still choose to allow GPPH requests filed after examination of the OLE application has begun depending on the particular circumstances and needs of the OLE and its stakeholders.
  5. A request for substantive examination must have been filed at the OLE, either at the time of the GPPH request or previously.

In a separate agreement among the IP5 including the State Intellectual Property Office of China (SIPO), the USPTO, the European Patent Office (EPO), JPO, and KIPO, a similar PPH arrangement has also begun. Although the IP5 arrangement is separate from the Global PPH arrangement, all of the requirements and eligibility of both programs are essentially the same.

As the USPTO, the JPO, and KIPO are participants in both the Global PPH system and the IP5 PPH system, the results of a search and examination from these three patent offices can be used in any of the 13 Global PPH system countries, as well as in the IP5 PPH system countries. However, as SIPO and EPO are only participants in the IP5 PPH system, they will only accept work for a PPH from the other IP5 participating countries.

It should also be appreciated that the EPO offers acceleration of examination under their PACE system, which can be requested even after examination has begun within the EPO on a particular application.

HKIPD and SIPO Sign Patent Examination Cooperation Arrangement

On December 6, 2013, the Intellectual Property Department of Hong Kong (HKIPD) and the SIPO signed a Cooperation Arrangement in the Area of Patents, which provides for, among others, arrangements related to the original grant patent (OGP) system to facilitate its implementation in Hong Kong.

The introduction of an OGP system was recommended in an advisory committee report released in early 2013 on the future positioning of Hong Kong’s patent system with a view to develop the territory into a regional innovation and technology hub. The OGP system will allow applicants to apply directly for standard patents in Hong Kong and obtain grants after substantive examination of the applications. Alongside this new system, the existing re-registration system, which grants standard patents by re-registering patents issued by any of the designated offices, including SIPO, EPO (in respect to a patent designating UK), and the UK Patent Office, will be retained.

While Hong Kong has yet to build up its own patent examination capability, under the newly entered arrangement, SIPO will provide technical assistance and support to HKIPD for substantive examination of patent applications and training of staff in connection with the OGP system.

The new patent system is scheduled to be implemented in year 2016–2017 at the earliest, subject to progress of legislative and other preparatory work.

IP5 Examiners Begin Use of One Portal Dossier

One of the projects developed by the IP5, which includes KIPO, the EPO, JPO, SIPO, and the USPTO, is the one portal dossier (OPD). The OPD is part of the Global Dossier (GD) system which is being developed by the IP5 as part of a cyber-world patent office system. The OPD provides common retrieval services of examination information among the five patent offices. It will allow one stop access to all dossier information, including applications, office actions, notice of allowances, etc., of corresponding applications of these five IP offices. It will also permit obtaining copies of the documents, as well as translations of the documents in the local language of the patent office of the examiner.

The OPD system went online in the fall of 2013 and became available to examiners, when examining an application in their own patent office, to access the OPD system and obtain information on any corresponding applications that have been examined in any of the other of the IP5 countries.

This system is already being used extensively by many examiners. The USPTO hopes to implement this capability as part of their IT program being worked on over the next year. Ultimately, the goal of the IP5 is to permit public access to this information for applications that are available in the public domain after 18 months.

WIPO Report On International Filings

In their annual report on international filings, WIPO indicated that in 2012, global patent filings increased at their strongest rate in the nearly two decades. The report specified that patent filings grew by 9.2% in 2012, Utility Models increased by 23.4%, Industrial Design filings by 17% and trademark filings by 6%. The 2013 edition of World Intellectual Property Indicators also indicated that China now tops the ranking for both the source (filings by China) and the destination (filed in China) for all four types of intellectual property. China was the only country in recording double digit increases for each of these four types of IP.

The increase in patent filings represented the fastest growth in filings recorded in the past 18 years. Following a 3.9% decrease in 2009, patent filings worldwide have now rebounded strongly with accelerating growing rates of 7.6% in 2010, 8.1% in 2011, and 9.2% in 2012.

Among the top 20 IP offices, SIPO saw the fastest growth in 2012 with an increase of 24%. This was followed by the offices of New Zealand with 14.3%, Mexico with 9%, and the USPTO with an increase of 7.8%. SIPO moved into first place, accounting for the largest number of applications received by any single patent office, with a total of 652,777 applications filed. In 2012, for the first time, the total number of patent grants around the world exceeded 1 million with 694,200 being issued to residents and 439,600 being issued to non-residents. This represented a 13.7% growth in patent grants for the year.

In 2012, the number of pending applications (unprocessed applications) fell at three of the top four IP offices. USPTO, JPO, and KIPO reported decreases in their backlog. The EPO however showed continuous backlog growth.

Utility model applications worldwide grew by double digits for each of the years 2008–2012. However, the 23.4% growth in 2012 was lower than the 34.7% growth observed in 2011. SIPO saw a 26.4% increase in utility model applications in 2012. Other offices exhibiting strong growth in utility models included Turkey and the Czech Republic.

With respect to trademark applications, the total number of classes specified in trademark applications filed worldwide grew by 6% in 2012. This was lower than the growth rate recorded in 2010 and in 2011. A total of 6.58 million classes were specified in applications in 2012.

The majority of the top 20 IP offices saw growth in trademark class counts. The IP offices of Turkey grew at 24.1% and China grew at 16.5%. In contrast, the IP offices of the European Union countries (EU) recorded fewer application class counts in 2012 than in 2011.

Industrial designs showed strong grow with double digit growth being recorded in each of the last three years with 2012 being the highest, showing a growth of 17%. Among the top 20 IP offices showing the greatest growth, the Russian Federation showed a 29.5% growth and SIPO showed a 26.1% growth, with Turkey following at 12.4% growth. The Office for Harmonization in the Internal Market (OHIM) likewise showed a 12% increase.

The residents of China filed, worldwide, applications containing almost 650,000 industrial designs in 2012. They were followed by residents of Germany with 76,369, the Republic of Korea with 68,737; U.S. residents trailed with 45,245.

Benelux IP Office Accepts English as One of Its Working Languages

The Benelux Office for Intellectual Property (BOIP) announced a number of changes that took effect from October 1, 2013. The most significant is that in addition to the previously existing official languages of Dutch and French, as of October 1, 2013, English has been introduced as an official working language. This will permit filing of trademark applications in English and communicating with the examiners in English.

Other changes which took effect relate to the timing of the opposition period. Previously, it was calculated from the first day of the month following the publication. It will now be calculated from the date of publication itself. This will permit a more definitive timing and will permit filing of oppositions to be spread out throughout the month.

Another change is the simplification of the renewal of the trademark. Only the payment of the official fee will now be required, no longer needing a written request for renewal. Furthermore, previously a separate request for change of representation was required for each trademark proprietor. Now a single request for recordal of service for a number of trademarks in the name of different proprietors will be possible.

Europe to Provide Early Search

Currently Europe provides a fast track procedure known as PACE to shorten the time to grant. Only about 6% of the applicants request this procedure, although there is no fee for it. The EPO, however, now wants to provide a new service for all which would include a comprehensive early search report and an opinion on patentability. They are therefore considering launching a new initiative called “Early Certainty from Search”. Currently the EPO is able to provide search reports within six months for its applications that are first filed at the EPO, which is about 20% of their total applications. The objective under this new program is to apply this same early search to all second filings as well. They plan to focus more examiner time on searches in order to get out searches on all their applications as early as possible. They believe this would improve the legal certainty for pending patent applications in Europe, as well as remove the blind spots caused by the growing backlog of unsearched applications, mostly from outside Europe.

The potential program would also be available for third parties to request accelerated examination so long as it does not place an undue burden on the applicants. There would be no additional fee for this service. The EPO plans to consult users on this new program and make a final decision on whether to switch the examiner priority to such searches by July 2014.

Proposed Changes in Korean Patent Law

KIPO announced a number of changes that will be coming into the Korean patent system. Beginning with 2015, they plan to introduce a U.S. style provisional application system. The provisional application will last for one year and two months, after which a regular patent application must be submitted.

Currently under Korean patent law, the time period for filing a divisional application is somewhat limited. Beginning in 2014, they will permit the filing of a divisional application anytime during the life of the application, even after the issuance of a notice of allowance on the parent application.

Korea currently has a one year grace period. However, they require submission of documentary evidence relating to the pre-filing disclosure within 30 days from the filing date. In accordance with the proposed amendment, such documentary evidence can be submitted anytime during the pendency of the patent application.

One expected major change is that computer programs per se are anticipated to become patent eligible. Under current practice, a computer program is not patentable subject matter unless it is claimed in the form of a computer readable storage medium or as a product. However, the law will be revised so that a computer program per se may be patentable as a method, system, computer readable storage medium containing it, a program, an application, or any other form of claim.

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