September 26, 2008
On September 22, 2008, Francis Gurry was unanimously appointed by the 184 member states of the World Intellectual Property Organization (WIPO) as the organization’s newest Director General. According to the WIPO press release (link below), this appointment promoted Gurry from his then-current position of Deputy Director General, his then-highest position in his 23 year tenure with WIPO. Upon receiving his new appointment, Gurry delivered a substantive acceptance speech (transcript provided below), commenting on the growth in demand for global patent services and the use of databases to share intellectual property information. Specifically, Gurry noted that “Patent Offices are choking on demand and struggling to perform in a manner that is timely enough to be responsive to the needs of the economy,” recognizing that “There are an estimated 3.5 million unexamined patent applications in the world today.” He then commented that the problem is so critical and that a solution should be “a multilateral one, rather than one established by a group or groups of the most adversely affected States,” noting further that “The PCT provides a better basis for constructing the future solution than any other one under consideration or in the range of current imagination.” Gurry’s entire acceptance speech is provided in the second link below for your convenience.
WIPO Announcement: LINK
Acceptance Speech Transcript: LINK
September 25, 2008
USPTO Announcement: LINK
USPTO/KIPO PPH Webpage: LINK
September 23, 2008
USPTO Announcement: LINK
September 22, 2008
USPTO Announcement: LINK
2. The European Patent Office (EPO) recently announced that the Croatian esp@cenet service was launched last week, providing “internet access to published Croatian patent applications and granted patents absolutely free of cost.”
EPO Announcement: LINK
Croatian esp@cenet Webpage: LINK
3. The Canadian Intellectual Property Office (CIPO) has recently published specific amendments to the Industrial Design Regulations within Part II of the September 17, 2008 installment of the Canada Gazette. These amendments will increase flexibility concerning the requirements on color, size, and quality of design applications, increase clarity with respect to design illustrations, and add flexibility related to including the environment of an article within a design application.
CIPO Announcement: LINK
Canada Gazette Section: LINK
September 18, 2008
IP Australia Announcement: LINK
IP Australia Website: LINK
KIPO Announcement: LINK
KIPO Website: LINK
September 17, 2008
I understand that technology and/or software included in patent applications may be subject to U.S. dual-use export controls, which are set out in the Export Administration Regulations (15 C.F.R. parts 730-774). Access to such technology and/or software by any person located outside the United States or by a foreign national inside the United States constitutes an export that may require a license from the U.S. Commerce Department's Bureau of Industry and Security (BIS). I affirm that I am not accessing or permitting access by others to technology or software in a manner that would violate or circumvent the Export Administration Regulations.
Upon checking the box next to the aforementioned statement (thereby activating the “Authenticate” button to move forward in Private PAIR), the Secured Patent Application Information Retrieval system appears with an “IMPORTANT” statement that reads as follows:
BIS Statement on Login Screen: Private PAIR users must check the checkbox indicating that they have read and accept the terms of the BOS (Bureau of Industry and Security) Statement on the Login Screen prior to authentication. See EAR (Export Administration Regulation section of FAQ for more info:
At the end of the FAQ page there is an EAR section providing answers to the following questions (answers hyperlinked for your convenience):
Why am I now required to certify that I am using the digital certificate for access to EFS-Web in a manner that doesn't violate or circumvent the EAR? (ANSWER)
Who is administering this certification requirement? (ANSWER)
Is EAR certification required in Private PAIR? (ANSWER)
I note that the answer to one of the questions provides a direct link to the U.S. Bureau of Industry and Security website (link below), itself having a number of links to various export control regulation information.
So – what does it all really mean? As previously discussed in the DDIP blog (previous article link below), the USPTO has recently vocalized its position regarding compliance with the EAR and foreign filing licenses. By implementing this new authentication requirement, and as noted within the answer to one of the questions above, “Access to such technology and/or software by any person located outside the U.S. or by a foreign national inside the U.S. constitutes an export that may require a license from the U.S.” This is one way the USPTO is regulating the sharing of patent information within the spirit of the EAR and the requirement of BIS licenses when appropriate.
Private PAIR Webpage: LINK
U.S. BIS Website: LINK
July 24, 2008 DDIP Article: LINK
September 16, 2008
On September 12, the EPO posted a number of PDF presentations on its websites from speakers at that conference. A complete listing of the available presentations is provided within the second link below. Some of the presentations include the following:
“Shining a Light” – Ciaran McGinley, Controller, European Patent Office (PDF LINK)
“The use of patent data to estimate patent value” – Nils Omland, WHU – Otto Beisheim School of Management (PDF LINK)
“Usage of, or Involvement in Science: What Matters for Firm Technological Performance?” – Bart Leten, Stijn Kelchtermans, and Rene Belderbos (PDF LINK)
“Development of international harmonized industry-based patent statistics” – T. Okazaki (OECD), G. Thoma (Japan Patent Office), and N. Yamano (University of Camerino) (PDF LINK)
(If you have difficulty opening these PDFs directly, try saving them to your desktop and opening them directly from your own PC.)
EPO/OECD Conference Webpage: LINK
EPO/OECD Presentation Webpage: LINK
September 12, 2008
Basic filing fee – Utility (37 C.F.R. § 1.16(a)(1)) – increasing by $20 to $330 for large entities and by $10 to $165 for small entities
Basic filing fee - Utility (electronic filing for small entities) (37 C.F.R. § 1.16(a)(1)) – increasing by $7 to $82
Independent claims in excess of three (37 C.F.R. § 1.16(h)) – increasing by $10 to $220 for large entities and by $5 to $110 for small entities for each claim
Claims in excess of 20 (37 C.F.R. § 1.16(i)) – increasing by $2 to $52 for large entities and by $1 to $26 for small entities for each claim
Multiple dependent claim (37 C.F.R. § 1.16(j)) – increasing by $20 to $390 for large entities and by $10 to $195 for small entities for each claim
Utility Search Fee (37 C.F.R. § 1.16(k)) – increasing by $30 to $540 for large entities and by $15 to $270 for small entities
Utility Examination Fee (37 C.F.R. § 1.16(o)) – increasing by $10 to $220 for large entities and by $10 to $110 for small entities
Utility issue fee (37 C.F.R. § 1.18(a)) – increasing by $70 to $1,510 for large entities and by $35 to $755 for small entities
Maintenance fee due at 3.5 years (37 C.F.R. § 1.20(e)) – increasing by $50 to $980 for large entities and by $25 to $490 for small entities
Maintenance fee due at 7.5 years (37 C.F.R. § 1.20(f)) – increasing by $120 to $2,480 for large entities and by $60 to $1,240 for small entities
Maintenance fee due at 11.5 years (37 C.F.R. § 1.20(g)) – increasing by $200 to $4,110 for large entities and by $100 to $2,055 for small entities
** The following links may be changed by the USPTO on or about October 2, 2008, so to visit the then-current USPTO fee structure, please click HERE to visit the main USPTO fee page.
Current Fee Schedule: LINK
October 2, 2008 Fee Schedule: LINK
September 11, 2008
Patent Cooperation Treaty (PCT) Information – includes comments on the use of the European Patent Office (EPO) and the Korean Intellectual Property Office (KIPO) as the International Searching Authority (ISA) for PCT applications filed with the USPTO. In particular, this section states that “[h]owever, the EPO is no longer a competent ISA, within the meaning of PCT Article 16(3), for international applications filed by U.S. residents or nationals on or after 01 March 2002 in the USPTO or IB as a Receiving Office, and where the application contains one or more claims directed to the field of business methods.” LINK
Changes to Representation of Others Before the United States Patent and Trademark Office – includes comments on the USPTO’s adoption of new rules governing the conduct of disciplinary investigations, warnings issued upon close of investigations, disciplinary proceedings, reinstatement to practice before the USPTO, and non-disciplinary transfer to disability inactive status. LINK
Official Gazette, Week #37: LINK
USPTO 2008 Official Gazette Notice Webpage: LINK
September 10, 2008
WIPO Free Publications Webpage: LINK
“From Artist to Audience” Publication (PDF): LINK
“Understanding Industrial Property” Publication (PDF): LINK
“Inventing the Future – An Introduction to Patents for SMEs” Publication (PDF): LINK
“Successful Technology Licensing” Publication (PDF): LINK
September 09, 2008
WIPO World Patent Report Article: LINK
2008 World Patent Report (HTML): LINK
2008 World Patent Report (PDF): LINK
2. The USPTO recently announced an extension of its Patent Prosecution Highway (PPH) program with the United Kingdom Intellectual Property Office (UKIPO). This pilot program began in September 2007 and has been extended “until further notice.”
USPTO Article: LINK
USPTO/UKIPO PPH Webpage: LINK
UKIPO PPH Request Webpage: LINK
3. The State Council of China has recently submitted a draft amendment to the National People’s Congress (NPC) Standing Committee in attempt to update its patent review processes and procedures. One amendment, referred to in the China Daily article below as the “absolute novelty” standard, will require examiners “to consider public use evidence both inside and outside China when processing patent applications.”
China Daily Article: LINK
China Patent & Trademark Office Website: LINK
September 08, 2008
Patent information: DDIP blog readers may search U.S. patents and published U.S. patent applications, search the MPEP (currently E8r6) and browse the current MPEP resources (E8r6 in HTML, E8r6 and E8r7 in PDF format), search U.S. patent and published patent application assignments, search Title 37 of the CFR, browse Title 35 of the U.S. Code, and browse current USPTO fees.
Trademark information: Readers may search issued U.S. trademarks and pending U.S. trademark applications, search TTAB proceedings, and search USPTO trademark assignments.
Court Opinions: DDIP blog readers may search Federal Circuit opinions since October 2004 (via the Federal Circuit website), search or browse Federal Circuit opinions since July 1995 (via FindLaw), and search U.S. Supreme Court opinions since October 2003 (via the U.S. Supreme Court website).
Additional Statutory References: Links are provided to allow DDIP users to search all titles of the Code of Federal Regulations and the U.S. Code.
In addition, I have also provided a list of other blogs (on the right-hand column) providing you with direct links to additional resources that I personally reference from time to time. Via Yahoo! Babel Fish, you can now also automatically translate DDIP blog content to one of a dozen other languages using the functionality provided lower on the right-hand column of the blog.
Your comments and e-mails are welcome, especially as they may relate to potential improvements to the blog and requests for additional blog functionality. I hope you will like the new look and additional resource material, and as always, thank you for reading the Daily Dose of IP blog and for sharing it with your friends and colleagues.