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

Yesterday the USPTO announced that it has signed a memorandum of understanding (MOU) with the Korean Intellectual Property Office (KIPO) regarding a more comprehensive cooperation on patent examination. This agreement, signed on September 23rd, focuses on the sharing of work between the two patent offices whereby each office can use the results of the other office for its own patent application examination. According to the USPTO announcement (link below), to create the harmonized work environment, the two countries plan to move forward with various projects, including the establishment of a common search database, the development of a standardized patent classification system, common examiner training, and greater utilization of each other’s examination results, with the goal of the bilateral cooperation “to allow each office to better use of each other’s resources and encourage reutilization of the work already done by the other office.” Additional information on the MOU and the USPTO/KIPO patent prosecution highway (PPH) are provided within the links below.

USPTO Announcement: LINK
USPTO/KIPO PPH Webpage: LINK

September 23, 2008

This Wednesday, September 24, 2008, the USPTO will be hosting its Information Technology (IT) Security Expo at the main USPTO campus in Alexandria, Virginia. According to the USPTO press release (link below), there will be 3 speakers and over 30 IT software and hardware vendors to provide attendees with “ideas and information that can be critical to both business and personal computer use.” Speakers include representatives of Intelligent Decisions, Inc., the National Institute of Standards and Technology, and the U.S. Department of Homeland Security. Additional details regarding this event are provided within the link below.

USPTO Announcement: LINK

September 22, 2008

1. The USPTO has formally acknowledged the impact of Hurricane Gustav (in Louisiana and Texas) and Hurricane Ike (in Florida, Louisiana, and Texas) as a postal service interruption and emergency within the meaning of 35 U.S.C. § 21(a) and 37 C.F.R. § 1.10(i) and 2.194(e), and has provided specific information relating to patent and trademark correspondence.

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

As recently jointly announced by IP Australia and the Korean Intellectual Property Office (KIPO), Australia will become the 9th national patent office to allow its applicants to select the KIPO as the International Search Authority (ISA) for PCT patent applications. According to the IP Australia press release (link below), “The decision to designate KIPO as an ISA/IPEA demonstrates IP Australia’s commitment to work collaboratively with other countries to streamline the IP system for the benefit of applicants.” The KIPO has allowed its applicants to choose Australia as their ISA for a number of years, and now (anticipated early 2009), Australian applicants will be able to choose the KIPO. This new agreement, according to the IP Australia press release, comes after the successful completion of the “Joint Prior Art Search Program” between the two offices “to exchange and compare the searching methods and tools used by each office,” including an exchange of examiners from one office to the other. According to the counterpart KIPO press release (link below), the KIPO has seen an increase of 11 search requests in 2004 to 735 in 2006 to approximately 8,000 through June of this year. The other countries allowing the selection of the KIPO as an ISA include the Philippines, Vietnam, Indonesia, Mongolia, Singapore, New Zealand, the United States, and Malaysia. Additional information regarding this new option is provided in the links below.

IP Australia Announcement: LINK
IP Australia Website: LINK
KIPO Announcement: LINK
KIPO Website: LINK

September 17, 2008

If you have recently accessed or attempted to access Private PAIR through the USPTO, you were required to check a box next to the following statement in order to proceed through the system:

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.
Information regarding U.S. dual-use export controls and their application to technology and software included in patent applications is available from BIS. Please see BIS's website, available at www.bis.doc.gov, or contact BIS's Office of Export Services at 202-482-4811.

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:
http://www.uspto.gov/ebc/efs_faq.htm

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)
How do I obtain further information regarding the Export Administration Regulations as they pertain to retrieving patent application and filing information? (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 3 and 4, 2008, the European Patent Office (EPO) and the Organization for Economic Cooperation and Development (OECD) hosted a conference to discuss recent advances in the analysis of innovation regarding patent statistics. As noted within the original conference description (first link below), the conference “aims at gathering original analytical investigations that build on recent data and address relevant questions for companies and policy makers including valuation of patents, patenting strategies, the links between technology and markets, patenting activity by universities and entrepreneurship.”

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

The USPTO has released its fee schedule to take effect on October 2, 2008, which will supersede the current fee schedule last updated on August 1, 2008. The following list contains some (but not all) of the fee changes. A complete listing of the new fees is provided in the link below.

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

The September 9, 2008 Official Gazette (Week #37) was published this week, including a number of the following recurring topics (Patent Cooperation Treaty (PCT) Information, Notice of Maintenance Fees Payable, Notice of Expiration of Patents Due to Failure to Pay Maintenance Fee, Patents Reinstated Due to the Acceptance of a Late Maintenance Fee from 08/11/2008, Reissue Applications Filed, Requests for Ex Parte Reexamination Filed, etc.). I note a couple of the items within the OG that are unique to this particular installment:

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

While searching the World Intellectual Property Organization (WIPO) for a new blog article topic, I came across a resource previously unknown to me, namely the WIPO free publications list. Although I have blogged several times on free WIPO seminar reference documentation, I was unaware that a separate list of publications targeting various audiences is available to the public free of charge. The publications list (first link below) includes a two dozen references targeting artists, government officials, lawmakers, small- and medium-sized enterprises, traditional knowledge holders, universities and research institutes, and young people, covering a broad range of intellectual property issues. Examples of a few of these publications are directly linked below, including “From Artist to Audience” for artists, “Understanding Industrial Property” for government officials, “Inventing the Future – An Introduction to Patents for SMEs” for small and medium-sized enterprises, and “Successful Technology Licensing” for universities and research institutes. There are also six publications for young people, including comic books on patents, trademarks, and copyrights, as well as a publication entitled “Learn from the Past, Create the Future: Inventions and Patents.” Consider taking a look at some of these, especially those “introduction” publications, as they may be useful to your or your practice when attempting to explain technical IP concepts to clients previously unfamiliar with their particular IP areas of concern.

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

1. The World Intellectual Property Organization (WIPO) recently released its 2008 edition of the World Patent Report. This Report, based upon cumulative 2006 data, includes statistics regarding total patent grants by patent office and by country of origin, resident and non-resident patent filings and granted patents, and emerging country patent filings and patent grants, among others.

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

Welcome to the "new" DDIP, complete with updated functionality and a fresh new look. Aside from regularly posted content providing you with updates regarding patent, trademark, copyright, and related intellectual property law information, the DDIP blog now offers additional resource functionality using the links and search boxes on the left-hand column of the blog, including the following:

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.

WIPO Press Releases

WIPO General News

Patent References

Click HERE to search issued U.S. Patents

Click HERE to search published U.S. Patent Applications

Click HERE to browse the MPEP (E8r6 in HTML and PDF, and E8r7 in PDF)

Click HERE to search patent assignments recorded with the USPTO

Click HERE to search Title 37 of the Code of Federal Regulations (rev. 7/1/08)

Click HERE to browse Title 35 of the U.S. Code

Click HERE to view current USPTO fees

Disclaimer

Copyright 2006-2010, Mark Reichel. The Daily Dose of IP is my personal website, and I am not providing any legal advice or financial analysis. Any views expressed herein should not be viewed as being the views of my employer, Ice Miller LLP. Any comments submitted to this blog will not be held in confidence and will not be considered as establishing an attorney-client relationship. Information submitted to this blog should be considered as being public information, and the submitter takes full responsibility for any consequences of any information submitted. No claims, promises, or guarantees are made or available regarding the completeness or accuracy of the information contained in this blog or otherwise available by searching from or linking away from this blog.

EPO Updates

Trademark References

Click HERE to search issued and pending U.S. Trademarks

Click HERE to search TTAB proceedings (via TTABVUE)

Click HERE to search trademark assignments recorded with the USPTO

The DDIP Author





Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

Click HERE to view my full professional bio at Reichel IP LLC.


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