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I2P Group News

Samson Helfgott

©2015. Published in Landslide, Vol. 8, No. 1, September/October 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.

WIPO PCT FILING STATISTICS

WIPO has released its patent filing statistics for the year 2014. Huawei Technologies Co. LTD of China was the most active filer under the Patent Corporation Treaty with 3,442 published PCT applications. Qualcomm Inc. of San Diego, California, was the second largest applicant with 2,409 published applications, followed by China’s ZTE Corp. with 2,179 PCT applications. It should be noted that the top three filers were telecommunications companies indicating the importance of digital computer technologies around the world. Published PCT applications for both computer technology and digital communications represented 15% of the total number of 214,500 applications in 2014.

The United States had nearly a third of all PCT filings worldwide with 61,493 in 2014. Japanfollowed with 42,459 applications; Germany had 18,008 applications; and South Korea 13,151. Chinese applications totaled 25,531, making a double digit increase in their PCT filings from the previous year. Emerging countries such as India, Brazil, South Africa and Mexico remained very low.

Under the Madrid Trademark system, the United States had the highest number of filings at 6,595. Health care firms such as Novartis AG and Glaxo Group Limited were the most prolific filers in 2014. With respect to the Hague Design system, Germany, Switzerland, and France filed the most design patent applications, generally seeking protection for clocks and watches.

EPO FILINGS INCREASED IN 2014

The European Patent office indicated that EPC filings grew by 3.1% in 2014, hitting a record high of more than 274,000 applications. Large increases occurred in the fields of biotechnology and medical technology filings. The EPO also granted a total of 64,600 patents that year. At the same time, pharmaceutical applications declined 5.4%.

The number of EPO filings from China and the United States grew strongly, with the US increasing by 6.8%, and China increasing by 18.2% while the number of filing from Japan fell. As in previous years, two-thirds of the filings at the EPO were from non-European countries, with the US representing 26%, followed by Japan (18%), China (9%), and Korea (6%). Within the EPO European countries, the Netherlands, France, and the UK showed significant growth. Germany and Sweden remained stable while filings from Finland, Switzerland, and Spain declined.

Samsung was the number one patent filer with a 2,541 applications. Among the top ten filers, Philips was second, followed by Siemens, LG, Huawei, and BASF. Qualcomm was the only American company in the top ten, ranking seventh.

PROPOSALS FOR FASTER PATENT APPROVALS IN INDIA

A panel appointed by the Delhi High Court suggested ways to speed up patent approvals in India. Businesses which undertake to manufacture a product in India in specified qualities should be given out of turn fast-track patent approval. The High Court itself directed the government to create more posts and to appoint more staff in the patent office in order to assure that timelessness for various stages of the patent application process will be improved.

Under the proposal, a business that has already begun manufacturing in India or proposes to do so within two years will be able to file for expedited examination, and the patent office would be required to refer this to an examiner within one month. The examiner will then have to submit an examination report within three months, and all procedures would be complete within 14-18 months. At present, such procedures can take five to seven years.

JAPANESE EXTEND PROTECTION TO NONTRADITIONAL TRADEMARKS.

The Japanese patent office published rules and regulation implementing the issuance of trademarks to nontraditional types effective as of April 1, 2015.

According to the new rules applicants must first indicate in the trademark application the type of non-traditional trademark it is applying for and submit a specimen, and in some cases an explanation of the trademark. Such types of trademarks include motion marks which should be graphically represented by a series of still images. Hologram marks can also be protected and can be identified by a sequence of drawings with text explaining the sequence.

Color marks can be covered by displaying the color with a text explanation. Position marks can also be covered using continuous and dashed lines for identifying the various positions.Sound marks can also be covered and represented by a musical notation on a stave or a numeric music score.In addition, it must be shown that these marks have a unique distinctiveness to them in order to be registrable.

REVISED FEE PROPOSAL OFFERED BY EPO ON UNITARY PATENT RENEWAL FEE

At the end of May, the EPO presented a revised proposal for renewal fees for the unitary patent that will be coming into force within the next few years.

The original proposal included two alternatives. The first alternative was referred to as the TOP 4 Level. This took the sum of the four most frequently validated countries (Germany, France, Great Britain, and Netherlands) into consideration. The second alternative was the TOP 5 Level which took the sum of the five most frequently validated countries, namely the first four plus Sweden. In the second alternative, there was also a 25% fee reduction for the first ten years for SME’s, natural persons, nonprofit organizations, universities, and public research organizations.

However, in both of these alternatives the EPO took into consideration the fact that at the beginning years, in the EPO system, before a patent is granted, there are internal renewal fees that are payable directly to the EPO. Accordingly, in the original proposal for the unitary patent, for the first few years (namely years three through five), the amount to be paid was the very high internal renewal fees of the EPO. For years six through nine, an artificial transition was arranged between the internal renewal fees and the year ten levels of the national countries. It was only years 10-20 where the actual sum of the TOP 4 or TOP 5 renewal fees were actually calculated.

There were many serious objections to this proposal, and a revised proposal was offered by the EPO at the end of May. Again there were two alternatives. This time however, the first alternative was called a True TOP 4 Level, in which there is now an accurate number from the TOP 4 countries, taking this value into account beginning with the second year and going all the way through the twentieth year.

Under this True TOP 4 Level, the renewal scale would be as follows:

The second alternative would be a True TOP 5 Level. Again this will take the actual sum of the renewal fees paid for the most frequently validated five countries directly from year two all the way through twenty. In addition, there would be a 25% reduction from two years – ten years for those selected categories of patentees.

Under this proposal, the renewal scale will be as follows (the amount shown in parenthesis indicates the 25% percent reduction).

In actuality, however, it must be remembered that typically patent applications remain pending on an average of about five years within the EPO. Accordingly, for the years two through five, while the application is pending, the internal fees charged by the EPO would still be applicable and those are considerably higher. It is only within the years six through ten that this new proposal would provide actual reductions from the original proposal. Of course, to the extent an application is expedited or allowed early, those reductions from the new proposals would take effect earlier.

All of the proposals provided a 15% reduction for patents which were offered as available for licenses of right. When a patent owner has a European patent with unitary effect and files a statement published in the register that he is prepared to allow any person to use the invention under license in return for appropriate consideration, he would get this 15% reduction on unitary fees.

The IPO has requested the Select Committee of the Administrative Counsel for their comments on this new proposal.

SPANISH APPEAL AGAINST UNITARY PATENT DISMISSED

In establishing the EU unitary patent, 25 out the 27 EU member states agreed to proceed. Spain and Italy would not join. In order to pursue the unitary patent, the EU began an “enhanced cooperation” procedure which allows EU legislation where normally unanimity would be required. Spain and Italy refused to join because the EU patent language regime would discriminate against countries in which English, French, and German are not used.

Italy and Spain appealed jointly to the Court of Justice of the European Union, (CJEU). Initially the joint appeal related to the procedure under the enhanced cooperation procedure. The CJEU had previously rejected those appeals.

Spain then filed two further appeals against two specific EU regulations concerning the creation of the unitary patent and its language arrangement. The CJEU recently rejected those appeals without specifically addressing whether the particular regulations are actually compatible with EU law. However, at this point there are no further legal challenges to move forward with the unitary patent.

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.