MAJOR CHANGES IN KOREAN PATENT LAW

Recent changes in the Korean Patent Law will make it easier for foreign clients to file in Korea. The changes in the Korean Patent Act will go into effect as of January 1, 2015.

Under the new law, an applicant may submit an application in the English language and obtain a Korean filing date. The Korean translation need not be submitted until 14 months of the earliest priority date or 32 months of the earliest priority date if it is a national entry of a PCT application.

Additionally, filing in Korea can be done without any claims and without any specific format. As a result a thesis, paper, or any form of publication can be used in order to secure an effective filing date. The complete application with appropriate claims need not be filed until 14 months after the earliest priority date.

Another significant change is that applicants may now correct translational errors in the Korean file documents, based on the original foreign language patent specification. This will also apply to PCT applications, making it possible to correct translational errors by referring to the original text of the PCT application.

A further change in effect as of June 11, 2014 will permit lapsed patents to be restored without submitting proof of use. The period for requesting such a restoration remains at three months following the expiration of the six month grace period for paying maintenance fees.

NEW PATENT LAW IN NEW ZEALAND

A new patent law came into effect in New Zealand on September 13, 2014, making great changes to the New Zealand patent system. Under the new law, applications will no longer be automatically examined. Examination will need to be requested voluntarily or in response to a request from the Patent Office. The deadline for requesting examination is five years from the date of filing, or within two months from the request from the Patent Office.

New Zealand will also go to an “absolute” novelty standard, whereby any matter available anywhere in the world will be considered as prior art. Furthermore, the new law will now include obviousness as a ground for rejection by the examiner, and will also include a requirement for usefulness. The claimed invention will have to have a specific, credible, and substantial utility.

The acceptance deadline will be shortened from 18 months to 12 months from the issue of the first examination report. Renewal fees that are currently payable at the fourth, seventh, tenth, and thirteenth year after grant will be changed and will be payable each year from the fourth year after filing, even if the application has not proceeded to grant.

JAPAN TO ADDRESS ISSUE OF EMPLOYEE INVENTIONS

Currently in Japan, patented inventions created in the course of employment belong to the employee, and the employee can transfer those rights to the employer in return for a fee. Typically, the employers pay fees to the employees in the form of bonuses or pay raises. However, court cases have ruled that compensation to the employee be based upon the sales or profits of the product covered by such employee invention. Courts have granted enormous sums to such employees.

Various larger corporations have established incentive award programs that pay cash incentives to employees according to the global revenue generated by the employees’ patented invention. However, there are continuous court actions where employee-inventors s believe they have not received adequate remuneration.

The Japanese Patent Office appointed an expert commission, which has recently decided to consider setting up new rules that would instead award patent rights for inventions made by employees in the course of their duties to be automatically owned by the employers. Most corporations in Japan support this proposal.

GLOBAL INNOVATION INDEX REPORT

The Global Innovation Index Report surveys nation’s innovative strengths. It is put together by the world Intellectual Property Organization, Cornell University, and the Paris-based INSEAD Business School. According to the report, this year, Switzerland, the United Kingdom, and Sweden ranked highest among 143 countries. Switzerland led this list for the fourth year in a row. The U.K. rose ahead of Sweden to take the second ranking. The remaining countries in the top ten were Finland, the Netherlands, the United States, Singapore, Denmark, Luxembourg, and Hong Kong.

U.S. fell one spot to sixth place, despite high rankings in many of the categories. The country’s low education rankings were poor due to low levels of science and engineering graduates and a low international student exchange ranking.

China jumped six places from its thirty-fifth ranking last year, mainly because of a marked increase in exported creative goods and a rise in domestic trademark applications. China’s innovation score is improving at a significantly faster pace than that of Brazil, Russia, and India according to the report.

AUSTRALIAN COURT HOLDS GENE PATENT VALID

Three judges of the Australian Full Federal Court on September 5, 2014 unanimously rejected an appeal against Australian patent issued to Myriad Genetics Inc. for BRCA1, a gene that in a mutated form creates a disposition to breast and ovarian cancer.

The Australian court found that the isolated human gene is patentable, indicating that the U.S. Supreme Court was wrong to conclude that the genetic material was a “product of nature”.

The ruling is likely to be appealed to Australia’s most senior court, the High Court . The court focused on chemical differences in the isolated material, compared to the gene as incorporated in the genome. The court indicated that it is the chemical changes in the isolated nucleic acid which are of critical importance, as this is what distinguishes the product as artificial and economically useful.

CHINA ESTABLISHES SPECIAL INTELLECTUAL PROPERTY COURTS

China will establish special courts dedicated to intellectual property in Beijing, Shanghai, and Guangzhou.

Each specialized IP court will handle technically complex civil and administrative cases involving patents, new plant varieties, integrated circuit layout designs, and technological know-how. They will also hear appeals from first instance courts on civil and administrative trademark matters and copyright cases.

The establishment of such courts is in part in response to the increasing number of IP cases. The number of IP cases in China increased from 27,000 in 2008, to more than 100,000 in 2013.

U.S. BAR-EPO LIAISON COUNCIL MEET

The annual meeting of the U.S. Bar EPO Liaison Council took place in Washington, D.C., on October 22, 2014. President Benoit Battistelli and numerous members of the EPO staff were present. President Battistelli reported that the filings in the EPO continue to rise annually at about 3 percent. The United States continues to be the largest country filing in the EPO with the approximately 25 percent of the filings. There was an increase of almost 6 percent filing from the US. However, Chinese filings have increased the most, last year increasing by almost 17 percent and now representing the fourth largest filer in the EPO. Of the top 25 applicants at the EPO, only three U.S. companies were present: General Electric, Qualcomm, and Johnson and Johnson. The largest filer was Samsung, and filers from the Far East were 11 of the top 25.

Of the applications entering the EPO, 77 percent came from PCT filings with only 23 percent being euro-direct filings. The number of filings was 265,903 applications in total.

The opposition rate has been stable at about 4.5 percent each year. The trend in appeals is slightly decreasing with a greater number of appeals being settled. The gap between incoming and settled appeals reduced by more than 50 percent in 2013 compared to figures in 2011.

One of the major objectives of the EPO is to increase Asian patent documentation. Currently, 21 percent of the patents cited in EPO searching reports had an Asian priority. This was up 20 percent from 2012.

The EPO cooperates with various standards organizations and collects documentation from most of the major standard organizations and public examiners in searching these documents.

A major accomplishment of the EPO was its work with the USPTO to provide a new classification system, the CPC, which is now accepted in many other patent offices around the world. Together with Google, they also launched a public patent translation service. Currently, all 28 official languages of the EPO member states plus Japanese, Chinese, Korean, and Russian are available free of charge via Espacenet. There are between 15,000-20,000 requests for translations each day.

EPO provides very early searches and written opinions, as they believe providing these to applicants early on gives applicants an opportunity to make strategic decisions regarding whether to proceed with their applications. Currently on first filings in the EPO, the search and written opinion comes within 5.1 months after filing; for PCT filing, it is within 15.1 months, giving an average of 9.2 months for such search and written opinions. Their objective is to provide such reports for all files within six months.

In connection with PCT filings, the EPO plans to provide top-up searches in chapter 2 as of April 1, 2014. This will provide further flexibility regarding non-unity cases filed in the European phase, and there will be no increase of the international search fee until April 2016. Also in connection with PCT filings, when the EPO is selected as the ISA, they will withdraw the limitation of competence regarding searches containing claims on business methods as of January 1, 2015. Although business methods per se remain unpatentable, to the extent that there is a technical aspect to the business method patent, they will search those claims.

With respect to the Patent Prosecution Highway (PPH), although the EPO is part of the trilateral PCT/PPH program, they are also entering into bilateral PPH programs with Canada, Mexico, and Singapore. They are also planning to add bilateral agreements with other countries as well.

The EPO has been one of the first of the IP5 patent offices to implement the Global Dossier (GD). Previously, it was necessary to enter into the GD system using a European application or patent number. The program has been updated to allow access to the GD documents using any of the IP5 family member numbers. This will enhance the usability of the GD system available on Espacenet.