Section Focus


Samson Helfgott

©2013. Published in Landslide, Vol. 5, No. 5, May/June 2013, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

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.

IP5 Begins Work on Global Dossier

The IP5 consists of the five largest patent offices in the world, including China, the United States, Japan, Europe, and Korea. One of the major projects undertaken by the IP5 is the creation of a Global Dossier.

The Global Dossier will be a set of business services, including an integrated online Web portal/user interface, allowing two-way communication between users and all participating offices, singularly or in multiples, with “passive” (database) and “active” (filing, prosecution, and management) components. It will allow users to efficiently access all available information about all applications and patents in the participating offices and utilize the electronic services of the offices.

The Global Dossier will be accessible by applicants/patent owners and their representatives, examiners and other Office officials, interested third parties, and the public at large, while limiting access of confidential information to authorized persons. It will enable communication and collaboration between applicants and examiners, and among examiners in different offices, thereby facilitating the possibility of increased quality, work sharing, and acceleration of examination. Machine translation will be an essential part of the Global Dossier.

The Global Dossier is intended to enable and encourage streamlining and improvement of office procedures, including cross-communication and harmonization of procedures among the participating offices, in order to provide the most efficient and cost-effective user environment possible, especially for applications filed in multiple offices.

In January 2013, the Global Dossier task force met for the first time in The Hague to begin work on this project. The task force includes representatives of the IP5 patent offices, as well as members of the IP5 Industry Trilateral, which includes Industry representatives from the five corresponding countries. Specifically, the Industry members are the AIPLA and IPO from the United States, Business Europe, the Japanese Intellectual Property Association, the Korean Intellectual Property Association, and PPAC from China. WIPO also participates as an observer.

At this first meeting, Industry was asked to present its vision of the Global Dossier and presented its desire to have: (1) the system provide the capability of electronically filing a patent application in multiple countries through a single interface, (2) the ability to have the documents machine-translated into the various countries, (3) automatic provision of references from one country to the other satisfying IDS and other prior art citation requirements in various countries, (4) the ability to view the dossier in multiple countries through a single portal, (5) the ability to change assignees automatically in multiple countries electronically, (6) the elimination of providing priority documents from one country to another and having them translated, (7) a single publication in the original filing language that would satisfy publication requirements globally, and (8) numerous other cost-saving and efficiency features. The IP5 patent offices indicated their interest in working on this type of a system for the benefit of users worldwide, which will also facilitate work-sharing among the patent offices and will provide advancement of the patent system, moving it toward the future.

It was indicated that short-term deliverables would include bilateral cross-filing based on reuse of existing electronic filing systems and within current legal restraints. A further short-term delivery would be public access to the One Portal Dossier for public data. Furthermore, WIPO indicated a short-term deliverable of providing a single electronic access point for national stage filing of a PCT application in multiple countries.

The patent offices and the task force will continue to diligently work on this project as it is a high priority item for both the patent offices and the Industry groups.

Tegernsee Group Harmonization Survey

At a meeting convened in Tegernsee, Germany, in July 2011, leaders and representatives from the patent offices of Denmark, France, Germany, Japan, the United Kingdom, and the United States and from the European Patent Office (the Tegernsee Group) began a new dialogue on the state of affairs concerning international patent harmonization. Since that initial meeting, the Tegernsee Group has met a number of times to consider work done by patent experts from each office analyzing comparative aspects of each jurisdiction’s patent laws and practices, as well as detailed studies on four issues of particular interest for international harmonization. These include the grace period, 18-month publication of applications, the treatment of conflicting applications (previously filed and subsequently published applications), and prior user rights.

After studying the issues, the Tegernsee Group published reports comparing the state of the patent law in each of the member countries on each of these four topics. Thereafter, the Tegernsee Group collaborated in developing a joint questionnaire on these four topics for use in gathering stakeholder input on a range of related issues. Each of the patent offices of these countries was involved in distributing the questionnaires in their respective countries. The material was to be assembled during the spring.

In the United States, the USPTO issued the questionnaire and also indicated holding a round table to discuss these issues of harmonization.

Following analysis of the questionnaires, the Tegernsee Group will decide whether to proceed on any or all of the various topics, depending on the interest of the stakeholders of the various countries.

Progress on EU Unitary Patent and Unified Patent Court

During February 2013, an agreement on the European Union patent and Unified Patent Court was signed by 24 of the 27 EU members. Italy, which had previously opposed the concept of an EU unitary patent, did sign, which surprised many people. The other holdouts had been Bulgaria, Poland, and Spain, which did not yet sign, but Bulgaria is expected to sign soon.

Nevertheless, the Unified Patent Court and the Unitary Patent System will take effect approximately three months after there is ratification of the agreement by 13 EU members, which must include France, Germany, and the United Kingdom.

While the overall concept has already been agreed upon in a treaty, the details have yet to be worked out. Many aspects of the Unified Patent Court are still unknown and until more details are learned, it will be difficult to provide advice or guidance on the use of this system. In any event, it is not anticipated that the Unified EU System would be available until at least mid-2014.

China Becomes Number One in Patent Applications and Japan Is Number One in Patents Granted

In a report issued by the World Intellectual Property Organization reporting patent and trademark statistics for 2011, China’s State Intellectual Property Office (SIPO) has become the world’s leading recipient of patent applications, surpassing the United States for the first time. China received 526,412 applications, which was a 35 percent increase over the previous year. For the same year, the U.S. Patent Office received 503,582 applications, which was only a three percent increase from the previous year.

In the field of trademarks, China likewise ranked first with more than 1.4 million trademark applications in 2011, compared to just over 412,000 applications filed in the United States, which ranked second for that year. China was also first in the number of industrial designs and utility model applications filed that year.

Of the patent applications filed in China, 79 percent came from local filings, which includes both Chinese firms and foreign firms with an established presence in China.

WIPO reported that the number of patent applications filed worldwide in 2011 was more than 2 million for the first time, representing a global increase of eight percent over 2010. Globally, trademark applications increased by over 13 percent, and industrial design applications increased by 16 percent.

With respect to the number of patents actually granted in 2011, globally the total approached 1 million. The Japanese Patent Office (JPO) issued the most patents at 238,323. This was followed by the USPTO with 224,505, and SIPO with 172,113.

With respect to the backlog of patent applications that are not issued, the total backlog continued to fall in 2011, declining by nearly five percent to 4.8 million. To a great extent, such reduction in backlogs was due to the USPTO’s program to aggressively reduce its backlog, which now stands at approximately 660,000 patent applications. Likewise, the JPO reduced its backlog considerably.

USPTO and EPO Implement New Patent Classification System

Beginning with January 1, 2013, the USPTO and the EPO began implementing a new classification system referred to as the Cooperative Patent Classification System (CPC). This was a joint work to integrate the two independent classification systems previously used by the USPTO and the EPO.

The use of the CPC will permit greater harmonization in the patent systems at an international level. It will improve efficiency between the two patent offices by enhancing the ability to leverage and use work in a shared manner.

The CPC system is basically an enhancement of the International Patent Classification System that was used throughout Europe. This is a dramatic change for the USPTO, which had previously used its own classification system. This will accordingly require process changes for U.S. patent applications and examination in the USPTO.

Among the IP5, there are plans to further include into the CPC additional terms that are available in the JPO, the Korean Intellectual Property Office, and the SIPO. Such work will be going on within the IP5 meetings.

A Change of Practice of OHIM Regarding the Use of Class Headings in CTM Applications

As a result of a decision of the Court of Justice of the European Union, the Office for Harmonization in the Internal Market (OHIM) has indicated that it will change its practice regarding the handling of class headings for CTM applications. Previously, when an applicant designated all general terms of a class heading, the application was considered to be claim protection for all of the goods or services included in the list of that class.

According to the new practice, OHIM will continue to accept the use of the general indications of the class headings but will examine it on a case-by-case basis. While in certain situations the headings are sufficiently clear and precise to allow a determination of the scope of the protection conferred by the mark, in connection with other categories it is too general and covers goods and services that are too variable to be compatible with the trademark’s function as an indication of origin. As a result, in those cases it will be necessary to provide clear and precise indications of the goods or services to be covered.

India Requires Annual Filing of Working Report

Although the requirement for filing a statement of working (Working Report) for all granted patents has been part of the Indian Patent Act since 1975, little attention has been given to this requirement. However, the Indian patent office has issued a notice asking all patentees and licensees to fulfill this obligation for the year 2012 by March 31, 2013.

Under conditions of this notice, there are no provisions for extensions of this date. The filing is a statutory requirement and applies only to granted patents. Furthermore, the report is to be filed even if there has been no commercial exploitation of the patent.

Failure to file the Working Report does not result in automatic revocation of the patent. However, it can result in imposition of a fine up to $20,000. Furthermore, if anyone submits false information as part of this Report, it also could result in imprisonment.

While the fine is not normally imposed, competitors and rivals may try to use this route to harass patentees and even block enforcement of a patent on such grounds.

Such Report is actually due each year by March 31 in the year following the reporting year.

Samson Helfgott

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, trademark, and copyright matters.