January 30, 2009

The USPTO and the Korean Intellectual Property Office ("KIPO") collectively announced that their original pilot Patent Prosecution Highway ("PPH") program will be implemented full time starting on January 29, 2009. According to the USPTO, and under this PPH, "an applicant receiving a ruling from either the KIPO or the USPTO that at least one claim in an application is patentable may request that the corresponding application filed at the other office advanced out of turn for examination," and "[b]y basing the prosecution in the second office on patentable results from the first office, applicants can expect to obtain patents in both offices faster." If you have used the USPTO-KIPO PPH, or any other USPTO PPH, please post a comment to this blog post to share your experiences with the program.

USPTO Announcement: LINK

January 27, 2009

On Monday, the European Patent Office (EPO) provided a formal notice via the EPO website regarding significant changes to its current fee structure. According to the EPO, "Those aspects of the new fee structure described under points 3.1 to 3.4 below (two-tier structure of claims fees, additional fee on filing, flat designation fee, flat fee for grant and publication) apply to European patent applications, including European divisional applications and new applications under Article 61(1)(b) EPC, filed on or after 1 April 2009 and to international applications entering the regional phase on or after that date. European patent applications filed and international applications entering the regional phase before 1 April 2009 remain subject to the old fee structure, and so for these applications the relevant provisions of the Implementing Regulations and the Rules relating to Fees as in force until 31 March 2009 will continue to apply."

A few of the specific fee highlights are presented below.

1. Two-tier system of claims fees: Since April 1, 2008, an applicant for patent with the EPO receives the first 15 claims as part of the original filing fee, and the applicant incurs a fee of EUR 200 for each claim over 15. However, as of April 1, 2009, the additional fee of EUR 200 will only apply to claims 16 through 50, and any claim over 50 will cost EUR 500 per claim.

2. Excess page fees: For applications comprising more than 35 pages (with specific page exclusions referenced in the links below), each application page over 35 will cost EUR 12.

3. Flat designation fee: For all European patent applications filed and international applications entering the regional phase on or after April 1, 2009, an applicant will incur a flat designation fee of EUR 500, covering ALL contracting states in Europe unless the applicant expressly withdraws specific states.

4. Flat fee for grant: As the EPO will institute excess page fees at the time of filing, there will be no page fees payable at the time of grant for all European patent applications filed and international applications entering the regional phase on or after April 1, 2009.

Additional information regarding these and other EPO fee changes are provided in the first link below, and the official Administrative Council Decisions supporting such fee changes are also linked below.

EPO Notice: LINK
December 14, 2007 Administrative Council Decision: LINK
October 21, 2008 Administrative Council Decision: LINK
December 9, 2008 Administrative Council Decision: LINK

January 23, 2009

The Japanese Patent Office ("JPO") announced yesterday that it has revised its "Examination Guidelines for Patent and Utility Model" having an original effective date of December 28, 2000. Japanese Guidelines are provided within ten distinct parts, including Specification, Requirements for Patentability, Amendment of Specification and Drawings, Priority, Special Application, Patent Term Extension, Examination Guidelines for Inventions in Specific Fields, Foreign Language Application, Procedure of Examination, and Utility Model. While the Guidelines do not show the "redlined" changes, the individual Guideline Parts and Chapters are available at the first link below in their updated form in PDF format. I note specifically that Part VII (Examination Guidelines for Inventions in Specific Fields) contains three Chapters for specific inventions, including Computer Software-Related Inventions, Biological Inventions, and Medicinal Inventions, each having their own examination requirements.

(As an aside, and while many patent practitioners (including myself) rely on the guidance of their foreign agents, a general understanding of foreign patent practice can be most helpful. As noted within my brief bio on the DDIP blog, most of my professional time involves preparing and prosecuting life sciences patent applications, including those in the medical device field. After handling a good number of foreign prosecution matters, and with a good working knowledge of foreign patent practice in a handful of countries, I have learned, for example, to tailor the claims of each foreign application for initial prosecution in those countries. While I continue to seek input from my foreign agents on each matter, I know that the information being shared with them at the time of entering the national stage is at least in a form that will facilitate substantive examination, and, using Europe as an example, multiple dependent claim practice may be implemented as appropriate to avoid prohibitively high excess claim fees. Your clients will appreciate your extra efforts in this regard, especially in cases where currency exchange rates do not work out in you client’s favor.)

JPO Examination Guidelines Webpage: LINK
JPO Website: LINK

January 19, 2009

If you electronically filed any patent documentation through EFS-Web last week, you likely saw the following notice:

"Advisory (9JAN2009): January 19-20, 2009 are Federal holidays within the District of Columbia, under 35 U.S.C. 21(b) because January 19, 2009 is Martin Luther King, Jr’s birthday and January 20, 2009 is Inauguration Day. Any action or fee due on January 17-20, 2009, is to be considered timely if the action is taken, or the fee paid, on the next succeeding business day (January 21, 2009) which is not a Saturday, Sunday, or a Federal holiday. See MPEP 710.05 [and TMEP 308] for more information. The Electronic Business Center (EBC) will be closed on January 19-20, 2009… EFS-Web will be available on January 19-20, 2009."

In addition to this notice, the USPTO made available a corresponding announcement substantially similar to the foregoing but also including the following business-related information:

"Correspondence deposited in the Express Mail Service of the United States Postal Service (USPS) will be considered filed on the date of deposit (as shown by the "date-in" on the Express Mail mailing label) with the USPS. Any paper or fee properly deposited in the Express Mail Service of the USPS on Monday, January 19, 2009, or Tuesday, January 20, 2009, will be considered filed on its respective date of deposit in the Express Mail Service of the USPS (as shown by a "date-in" of January 19, 2009, or January 20, 2009, on the Express Mail mailing label, respectively)."

In addition,

"Patent and trademark-related correspondence transmitted electronically to the USPTO will be considered filed in the USPTO on the date the USPTO received the electronic transmission. Any patent and/or trademark-related correspondence transmitted electronically to the USPTO on Monday, January 19, 2009, or Tuesday, January 20, 2009, will be considered filed in the USPTO on the date the USPTO received the complete electronic transmission. Correspondence successfully received by the USPTO through the patent Electronic Filing System (EFS-Web) will receive the date as indicated on the Acknowledgment Receipt."

USPTO Announcement: LINK
35 U.S.C. § 21: LINK
MPEP § 710.05: LINK
TMEP § 308: LINK

January 14, 2009

On Friday, the European Patent Office (EPO) announced that due to a number of corrupt U.S. assignment records within the PRS legal status database (espacenet/OPS), each of the over 6.4 million assignment records will be deleted from the system next week and replaced with reloaded assignment data the first or second week in February. As referenced within the EPO announcement (link below), "[t]he erroneous data cannot be corrected manually mainly due to the fact that it would be practically impossible to separate each and every faulty record from the correct entries." The announcement further notes that the reload of data could take several months, and that the current codes US AS01 through US AS99 will be permanently removed and replaced with a single code US AS. The EPO also provided an example of a corrupt U.S. assignment record in need of correction (second link below).

EPO Announcement: LINK
Corrupt Record Example (PDF): LINK

January 12, 2009

As noted in my previous blog post, the USPTO introduced seven (7) patent fee changes effective January 1, 2009. As noted in a recently-updated fee schedule taking effect today (January 12, 2009), three (3) additional fee changes have been implemented, also impacting PCT applications filed with the U.S. as a receiving office. A summary of the new fee changes is as follows:

Fee Code 1601 (37 C.F.R. 1.445(a)(1))– PCT Transmittal Fee – DECREASED from $300 to $240

Fee Code 1602 (37 C.F.R. 1.445(a)(2)) – Search fee – regardless of whether there is a corresponding application (see 35 U.S.C. 361(d) and PCT Rule 16) – INCREASED from $1,800 to $2,080

Fee Code 1602 (37 C.F.R. 1.445(a)(3)) – Supplemental search fee when required, per additional invention – INCREASED from $1,800 to $2,080

Current USPTO Fee Schedule (January 12, 2009): LINK
Prior USPTO Fee Schedule (January 1, 2009, cached): LINK

January 08, 2009

On January 1, 2009, seven USPTO patent fee changes became effective, including six fee decreases and only one fee increase. Each of these fee changes fall within the "PCT Fees to Foreign Offices" section of the USPTO fee schedule, and include fees applicable to filing PCT applications with the U.S. as a receiving office. A summary of the fee changes is as follows:

Fee Code 1701 – International filing fee (first 30 pages - filed in paper with PCT EASY zip file or electronically without PCT EASY zip file) – DECREASED from $1,237 to $1,119

Fee Code 1710 – International filing fee (first 30 pages) - filed electronically with PCT Easy zip file – DECREASED from $1,137 to $1,028

Fee Code 1702 – International filing fee (first 30 pages) – DECREASED from $1,338 to $1,210

Fee Code 1703 – Supplemental fee (for each page over 30) – DECREASED from $15 to $14 per page

Fee Code 1704 – International search (EPO) – DECREASED from $2,665 to $2,410

Fee Code 1709 – International search (KIPO) – INCREASED from $220 to $609

Fee Code 1708 – Sequence listing and/or sequence-related table on electronic medium only (PCT AI Section 801) – DECREASED from $6,000 to $5,600

The fee for selecting the USPTO as the searching authority remained unchanged at $1,800.

Current USPTO Fee Schedule (January 1, 2009): LINK
Prior USPTO Fee Schedule (December 17, 2008, cached): LINK

January 07, 2009

On January 1, 2009, the Yugoslav Republic of Macedonia became a member of the European Patent Organisation after its ratification of the European Patent Convention. As noted within the recent European Patent Office (EPO) press release (link below), "The European Patent Organisation's members now include all 27 EU member states plus Croatia, the former Yugoslav Republic of Macedonia, Iceland, Liechtenstein, Monaco, Norway, Switzerland and Turkey. Apart from the Organisation's members, its observer states Albania, Bosnia and Herzegovina, and Serbia also recognise European patent applications and patents on their territory." According to Alison Brimelow, President of the European Patent Office (EPO), "The accession of the former Yugoslav Republic of Macedonia means that companies and individual inventors can extend the protection of their intellectual property even further in the dynamic region of southeast Europe."

EPO Press Release: LINK
Macedonia State Office of Intellectual Property Website: LINK

January 06, 2009

The U.S. Copyright Office recently announced that it is soliciting comments on proposed exemptions in rulemaking on exemption from prohibition on circumvention of technological measures that control access to works. In its announcement (first link below), "[i]n its triennial rulemaking proceeding regarding possible exemption by the Librarian of Congress of certain classes of works from the prohibition against circumvention of technological measures that control access to copyrighted works, the Copyright Office has received 19 proposals for classes of works to be subject to exemptions." A notice has been published to announce the proposed exemptions and seeks comments, with the purpose of the rulemaking proceeding being "to determine whether there are particular classes of works as to which users are, or are likely to be, adversely affected in their ability to make noninfringing uses due to the prohibition on circumvention." The formal notice of proposed rulemaking was published in the December 29, 2008 Federal Register (excerpt link below). Comments may be submitted through February 2, 2009.

U.S. Copyright Office Announcement: LINK
Comment List: LINK
Federal Register Excerpt: LINK

January 05, 2009

1. The World Intellectual Property Organization (WIPO) has posted its final volume of the WIPO Magazine (no. 6, November/December 2008) on its website. Some highlighted articles include a summary of the various WIPO member state assembly meetings in 2008, a construction update regarding the status of the new WIPO facility, and commentary regarding software patentability.

Nov./Dec. 2008 WIPO Magazine: LINK
Main WIPO Magazine Webpage: LINK

2. The Canadian Intellectual Property Office (CIPO) has held a number of official consultation periods to obtain feedback regarding a number of amendments to its formal Patent Rules. Four separate amendment "packages" have been submitted, with comments on the first package due today and comments on the second package (including amendments regarding applicants’ failures to meet certain procedural requirements, reinstating abandoned applications, and the waiver of some fees relating to the electronic submission of sequence listings) are due by February 28, 2009.

CIPO News Release: LINK
CIPO Consultations Schedule: LINK

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


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.


Click HERE to join the e-mail list for my blog

Click HERE to provide feedback on the DDIP blog

Fellow Blogs/Bloggers

AwakenIP (Kuester)
Counterfeit Chic (Scafidi)
I/P Updates (Heinze)
Internet Cases (Brown)
Likelihood of Confusion (Coleman)
Patent Baristas (Albainy-Jenei)
Patent Docs (Zuhn et al.)
Patently-O (Crouch)
The 271 Patent Blog (Zura)
The Ice Loop (Ice Miller LLP)
The Indiana Law Blog (Oddi)
The Invent Blog (Nipper)
The Patent Prospector (Odom)
The TTABlog (Welch)