Section Focus

I2P Group News

Samson Helfgott

©2013. Published in Landslide, Vol. 6, No. 1, September/October 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 our readers.

IP5 Meets Together with Industry IP5

The heads of the world’s five largest intellectual property offices met in Silicon Valley at the beginning of June 2013. These include the USPTO, the European Patent Office (EPO), the Japanese Patent Office (JPO), the Korean Intellectual Property Office, and the State Intellectual Property Office of the People’s Republic of China (SIPO).

During the meeting of the heads of the patent offices, they renewed their commitment to develop the Global Dossier, a system that will simplify the viewing and management of applications filed within the IP5 offices. The heads of the offices also agreed to adopt the Global Classification Initiative, which is a new effort to harmonize patent classification. In addition to the CPC, which combined the U.S. and European Classification Systems and already went into effect, they will now be adding terms from the Japanese Classification System and the Korean Classification System.

The heads also confirmed the adoption of an IP5 Patent Information Policy, pursuant to which each of the offices will work towards providing barrier free access to patent data. The heads reaffirmed work sharing in the framework of IP5 cooperation, and endorsed the development of a Patent Prosecution Highway (PPH) Pilot Project between all IP5 offices. Additionally, the heads of the patent offices stressed the need to advance harmonization of substantive and procedural patent law.

The heads of the patent offices also met with the Industry IP5, including representatives of AIPLA and the Intellectual Property Owners Association from the United States, Business Europe, the Japan Intellectual Property Association, the Korean Intellectual Property Association, and the Patent Protection Association of China.

During the joint meeting, progress on the Global Dossier was discussed, including the introduction of the One Portal Dossier (OPD), developed by the JPO, into the IP5 offices by July 2013, so that the OPD would be available to all of the IP5 offices and their examiners for accessing dossier information in all of these offices. Work is going on for developing public access to the OPD, expected to be available by 2015.

Additionally, the ability to cross file applications on a trial basis was being worked on between the United States and the EPO. The patent offices also were addressing WIPO’s offering of national phase entry using the e-PCT Software System to permit electronic entry into the national phase through a WIPO portal where all of the national entry forms would be filled out with documentary information already available in the WIPO PCT system.

Also discussed were harmonization issues. The Industry IP5 presented a list of harmonization topics, many of which related to procedural harmonization, such as working on common approaches to written description and sufficiency of disclosure, unity of invention, divisional applications, and other practical issues.

Discussions related to the IP5 offices moving to an IP5-PPH Pilot, pursuant to which all of the IP5 offices would have PPH agreements with each other with an attempt to unify the agreement in a standardized form. The offices also are developing an Application Programming Interface System under which each office has machine translation available for its users and the users can choose among the translation tools that they want to use for particular foreign language translation.

Chinese Patent Filing Statistics for 2012

The Chinese Patent Office announced that in 2012 there were approximately 653,000 domestic and foreign patent applications filed in the Chinese Patent Office, of which approximately 120,000 were foreign originated patent filings. The foreign patent filings showed an increase of 6.2 percent as compared to 2011. Amongst the foreign filers, the Japanese filed approximately 36 percent, U.S. applicants filed 25 percent, the European countries filed 24 percent, and Korea filed approximately 8 percent.

SIPO also indicated that the number of licensed invention patents in Mainland China reached about 220,000, an increase of 26 percent compared with 2011. SIPO also announced that the total number of PCT International Patent Applications received by SIPO was about 20,000, an increase of 14 percent compared with 2011.

New IP Court Begins in Russia

Beginning on February 1, 2013, Russia’s new court on intellectual property rights will begin working. The new court will be based primarily on the model of the German patent court; however, it will not only hear disputes on patents but will also hear cases on related matters such as rights to trade secrets, rights to appellation of origin, and related intellectual property matters.

It will be the court of first instance for challenges against decisions of the Russian Patent Office, and also will hear challenges to laws and regulations setting the conditions for intellectual property rights and patentability relating to inventions, utility models, industrial designs, registration procedures, and similar matters.

The court will have its main seat in Moscow but will move to the new high technology innovation center Skolkovo when the new building is completed.

Growth in International Intellectual Property Filings

WIPO reported the intellectual property filings for 2011 pursuant to various international treaties. The filings for Patent Cooperation Treaty (PCT) applications grew by an estimated 6.6 percent in 2011.

The United States continued to rank first amongst PCT filers, followed by Japan in second place. Germany ranked third, followed by China, South Korea, and France. It was noted that the United States, China, and Japan alone counted for three-quarters of the growth in PCT applications.

It was also noted, however, that the increase in PCT applications from China grew by only 13.6 percent last year, as compared to the previous two years where it recorded jumps of 33 percent and 56 percent. This reflected a decrease, but nevertheless showed a large increase from most other countries.

The growth from the Asian countries continued to dominate so that China, Japan, and South Korea accounted for more than 38 percent of all PCT applications, as compared to 36 percent from both the United States and Germany combined.

The Chinese Telecommunication Company maintained its position as the single largest corporate filer in 2012, with 3,906 published PCT applications. Twelve of the top 17 corporate filers were from China, Japan, and South Korea.

In connection with trademarks, Columbia, Mexico, Philippines, and New Zealand all joined the Madrid System in 2012, with India expected to join in April 2013.

Germany again ranked first among Madrid system filers, with 6,545 trademark filings, although this total was down 7 percent from the previous year. The United States ranked second with 5,430 applications, a 12.3 percent increase from the previous year. Other significant filers were France, Switzerland, and Italy. Japanese registrations jumped 33 percent in 2012; those from China fell 1.2 percent.

WIPO Indicates Continued Rise in Cybersquatting Complaints

WIPO announced that the number of cybersquatting complaints brought to WIPO for settlement continued to increase in 2012. Complaints from and against U.S. respondents accounted for the largest share of such cases.

In 2012, a total of 2,884 cybersquatting cases were brought, covering more than 5,000 Internet domain names. These were brought in front of WIPO’s Arbitration and Mediation Center. It represented a 4.5 percent increase over the number of cases filed in 2011.

Since the launch of the Uniform Domain-Name Dispute-Resolution Policy in 1999, the WIPO center has received over 25,500 complaints covering some 47,000 domain names. Of the total cases filed in 2012, 798 cases were filed by U.S. complainants, followed by those of the United Kingdom, France, Germany, and Denmark.

U.S. nationals accused of cybersquatting were the respondents in 784 cases, followed by those from China, the United Kingdom, Australia, and the Netherlands.

The outcome from 88 percent of the cases resulted in the transfer of the domain name to the complainant. In 3 percent of the cases, cancellation of the domain name registration resulted.

Approximately 20 percent of the cases were terminated without a decision, mainly as a result of settlements.

Increase in IP Filings in Korea

According to the Korean Intellectual Property Office, the number of patent applications filed in 2012 increased by 7.6 percent from 2011, reaching a total of 192,575. Similar increases were in the number of utility model applications, which rose 5.2 percent from 2011; trademark applications, which increased 7.1 percent from 2011; and design applications, which showed an increase of 11.7 percent.

In terms of applicants, 25.5 percent of the total number of patent applications were filed by large companies, 15.2 percent by small and medium-size companies, and 23 percent by foreigners.

Of the company’s filing patent applications, Samsung ranked first with a total of 6,407 applications, followed by Hyundai Motors and Korean Electrical and Telecommunication Research Institute. Among foreign companies, Qualcomm took first place, filing a total of 1,240 applications, followed by Japanese Semiconductor Research Institute and Tokyo Electron.

In terms of nationality, Japan was in first place, followed by the United States, Germany, and France.

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.