Section Focus

I2P Group News

Samson Helfgott

©2015. Published in Landslide, Vol. 7, No. 5, May/June 2015, 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.

EPO INCREASES AGREEMENTS ON PPH

The Patent Prosecution Highway program (PPH) has grown over the last few years, and as of January 6, 2014, a Global Patent Prosecution Highway Program has been developed. Participating in the Global PPH are the following offices: Australia (IP Australia), Austrian Patent Office (APO), Canadian Intellectual Property Office (CIPO), Danish Patent and Trademark Office (DKPTO), Finnish Patent and Registration Office (PRH), Hungarian Intellectual Property Office (HIPO), Icelandic Patent Office (IPO), Israel Patent Office (ILPO), 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), Intellectual Property Office of Singapore (IPOS), Spanish Patent and Trademark Office (SPTO), Swedish Patent and Registration Office (PRV), United Kingdom Intellectual Property Office (UKIPO), and United States Patent and Trademark Office (USPTO).

Under the Global PPH, allowable claims either resulting from a national examination or a PCT search report from one of these countries can be used in another of these countries in order to accelerate prosecution of similar claims in that other country. In addition to accelerating the time, it has been found that allowance rates, number of office actions, and first action allowances are all better when using the PPH. This is an expected result since the claims have already passed prosecution in an earlier country.

In addition to the Global PPH, the IP5 has also established an IP5 PPH project. The IP5 members include China, United States, Japan, Europe, and Korea. All of the IP5 countries, except Europe, are also members of the Global PPH. The EPO has not joined the Global PPH. However, they have instituted bilateral agreements with individual counties.

At present, in additional to the IP5 countries, the EPO has established bilateral agreements with Canada, Israel, Mexico, and Singapore and have indicated that they plan to continue entering additional bilateral agreements with other patent offices.

INDIA SEEKS COMMENTS ON A NEW DRAFT IP POLICY

The Indian Department of Intellectual Policy and Promotion (DIPP) published their first draft of a new IP policy. The draft mostly addressed recommendations concerning structure of the court system, and did not address the sensitive IP issues such as compulsory licensing of pharmaceutical products and the unique patentability requirement of the Indian patents act requiring that a pharmaceutical provide “enhanced therapeutic efficiency”.

In connection with the court system that was addressed, the draft recommended setting up intellectual property sections in four of the state high courts and designating one district court in each district as an intellectual property court. It also suggested setting up regional sections of the Intellectual Property Appellate Board in cities where the Patent Office already has branches. Recommendations also included modernizing and streamlining IP administration. In keeping with the rapid growth and diversity of intellectual property users and services, it also suggested greater responsibilities and increases to the workload at the Patent Office.

So far, the recommendations have received mixed reviews. Many view these recommendations as inadequate in improving the Indian patent laws. Furthermore, as part of the draft it reiterated that the Indian Patent Law conformed to the World Trade Organization’s Agreement On Trade Related Aspects of Intellectual Property Rights (TRIPs), and many challenge whether the Indian laws are actually compliant with the TRIPs requirement.

JPO TO REVISE OPPOSITION SYSTEM

As part of a government stress on economic growth, Japan passed an amendment to the patent law in 2014 to implement changes in the opposition system. These amendments will take effect in 2015. Currently, the system requires an opponent of a patent to file paper documents as well as make oral arguments.

Under the revised system, a third party observation system is introduced. Objections by third parties can be filed at any time and can be raised anonymously. These observations can address issues of double patenting, patentability, new matter, clarity, and enablement. The new opposition procedure will also be available to anyone, but they must be identified and it must be submitted within six months from grant. The same grounds for third party observations are also available in the opposition procedure. Typically, a decision will be made within one year.

The current invalidation trial system will remain, however only a party in interest will be able to file for such invalidation and must be identified. It is available throughout the life of the patent. A decision will typically be made within nine months from the request.

In all of these systems, however, the patentee can amend the claims as such practice is quite liberal in Japan during these procedures.

IP5 ISSUE PATENT STATISTICS FOR 2013

The IP5 offices including US, Europe, Japan, Korea and China released their statistics for 2013. Overall, patent applications were up by 11% with a total of 2.1 million filed. The offices issued 4% more patents than in the previous year. As of December 2012, 8.5 million patents were in force throughout the world, an 8% increase over the previous year. The U.S. is still in the lead with over 2.2 million of those patents.

The number of patents in force at the end of 2012 among the IP5 were:

 

Patent office fillings for the IP5, together with an indication of how many of those were filed by domestic applicants within that country, were:

 

SECOND MEETING OF GLOBAL DOSSIER TASK FORCE

The Global Dossier is a joint project of the IP5 Patent Offices and the IP5 Industry Group through a joint Global Dossier Task Force. The first meeting of the task force took place in The Hague, in January 2013. At that time it was agreed to provide an integrated online portal/user interface between users and all participating offices. It would allow access to available information about all applications and patents in the participating offices and to utilize the electronic services of the individual offices. Each country will have a portal through which users in that country would gain access into the patent databases of the other participating offices and ultimately permit two-way communication with the patent participating office.

All the information of each patent office will remain on its own server. It will only be accessed from each portal country. While initially it would include the databases of all IP5 countries, ultimately it will provide access to WIPO-CASE and other countries that want to participate.

Two parts were envisioned. The first was referred to as the passive part providing global file accessibility. The other would be the active part for one portal document submission, such as cross fillings of patent applications.

The passive part has actually been implemented in all five patent offices. Currently, it is being used by examiners. It is envisioned that it will be available to the public during 2015 in each of the five patent offices.

In using the passive part, one enters a patent number of any patent family and then get the list of the entire patent family including the patents issued and pending applications. The user can then select any country participating in the Global Dossier. The user is able to view a table of contents of all the documents in the file wrapper of that application in that country. Upon selecting one particular document, the user may access the actual content of the document, for example an Office Action, and it is provided in both the original language and machine translated into the language of the country whose portal is being accessed.

The second meeting of the Global Dossier Task Force met at the end of January 2015 in Suzhou, China. Discussions took place on how to proceed to further enhance the currently developed passive part, as well what new areas should be addressed in moving toward implementation of the active part.

It was agreed that the ultimate goal should be cross filing of applications. However, along the way there are smaller projects that can be achieved. One project agreed upon was the proof of concept project. Essentially, a single uploading of a document would be tested to be sure this capability can be achieved. The project selected was change of address. The proof of concept will require filing a change of address in one patent office, and then being able to upload it into the individual corresponding family members of any of the other five patent offices. This will require addressing issues including security, translations, uniform requirements, establishing handshaking between the participating offices, and many other issues. It is envisioned that once this proof of concept can be achieved, it can then be built upon for uploading other documents, including ultimately cross-filing.

Other projects that were agreed upon include adding the patent legal status into the current system. This would provide information on where the application is in its prosecution, and whether the patent is alive.

Further projects include standardizing and unifying applicants’ names for consistency in all of the IP5 offices, as well as providing all of the documents uploaded in XML so that they can be easily searched and both the applicants as well as the patent offices can use it to formulate final documents. An additional project is an alerting system to alert applicants when a change of status take place, such as an office action issuing on a maintenance fee being due.

Various patent offices will address these projects individually and share the information developed with the other patent offices. Also, users will be involved during the development of each of these projects.

FAST TRACK TRADEMARK PROTECTION IN EUROPE

The Office for Harmonization in the Internal Market (OHIM) which handles European trademarks, has provided a new system to obtain trademark protection in an expedited manner. Under the new fast-track system, the regular processing time of a community trademark can be reduced by about one-half. As a result, the applications which participate in the new system will be published sooner for opposition purposes. Should there be no incoming oppositions, faster registration will take place on these applications. In order to be applicable for the fast-track system, one must pay the official fees immediately. Another requirement is adherence to the terms of good and services already accepted by OHIM. There is no official fee for requesting the fast track system.

TRILATERIAL PATENT OFFICES MET IN JAPAN

The Heads of the Trilateral Patent Offices, including the United States, Japan, and the European Patent Office (EPO), met in Yokohama, Japan, at the beginning of March 2015. Prior to their meeting, the Industry Trilateral Organizations including American Intellectual Property Law Association (AIPLA), IPO, Business Europe, and Japan Intellectual Property Association (JIPA) held their meeting and thereafter joined with the heads of the patent offices for a joint meeting.

The discussions focused on the issues of substantive patent harmonization, as well as the results of IP5 work on the Patent Harmonization Expert Panel (PHEP). The IP5 had agreed that the PHEP would address three issues, namely unity of invention, citation of prior art, and written description requirements. Under the leadership of the EPO, the unity of invention topic has been discussed and information from the five patent offices was obtained. The EPO is now coming up with a set of practices so that unity of invention in all of the five patent offices should be more uniformly decided.

The issue of citation of prior art is being worked on by the USPTO and KIPO. They are also gathering information on the ability of the five patent offices to address the issue of citation of prior art through electronic means by using various existing data bases to alleviate the burden on applicants.

The JPO is addressing the written description requirement and have undertaken a number of studies including addressing a glossary of terminology used by the various patent offices in connection with sufficiency of disclosure, written description, clarity and similar terminology. JIPA is also conducting various studies and analyses of the rejections in various patent offices to determine the relationship of clarity and other rejections by the various patent offices.

All of the patent offices will be providing their recommendations to the deputy heads meeting of the IP5 at the end of March, and that group then will decide on the final plan to be presented to the Heads of the IP5 Patent Offices during their meeting scheduled at the end of May in China.

With respect to substantive patent law harmonization, the industry trilateral indicated that they are working on a paper which should be available within a few weeks. The paper will list discussion points on harmonization of six topics, including description of prior art, conflicting applications, grace period, prior users rights, 18-month publication, and unity of invention. The paper will discuss the various issues, indicating where consensus has been achieved, and in those areas still open for discussion, will provide various alternative approaches and analyses of those approaches.

It is hoped that once that paper is completed, it will be passed to other organizations including the Industry IP5, the B+ Countries, the IP5 Heads, as well as other national and international bar associations. The purpose will be to get further input on the open topics for discussion and to see if further consensus can be achieved on those open topics.

It was felt that progress thus far achieved by the Industry Trilateral was quite significant in light of the fact harmonization has been a difficult and challenging goal for many, many decades.

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.