The European Patent Office (EPO) recently announced that its Enlarged Board of Appeal (EBA) is accepting written statements regarding pending referral G 3/08 pertaining to the patentability of computer programs. Third parties to the appeal have until the deadline of April 30, 2009 to submit written comments and any new cited documents in connection with the following four referred questions:

1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

2.
(a) Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(c) and (3) merely by explicitly mentioning the use of a computer or a computer-readable data storage medium?

(b) If question 2(a) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?

3.
(a) Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?

(b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

(c) If question 3(a) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used?

4.
(a) Does the activity of programming a computer necessarily involve technical considerations?

(b) If question 4(a) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?

(c) If question 4(a) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?

According to the EPO announcement (link below), "The referral does not call into question EPC Article 52(2) and (3), which states that programs for computers as such are not to be regarded as inventions and are therefore excluded from patentability. Instead, it seeks guidance on how the details of this exclusion are to be applied."

Copies of the referral (including summary letter, definitions, the questions with additional commentary, and the current state of the law), referral references, the text of Article 10 of the Rules of Procedure of the Enlarged Board of Appeals, The November 11, 2008 decision of the EBA, and the questions as presented in the Official Journal of the EPO (1/2009) are provided within the second link below.

EPO Announcement: LINK
Case G 3/08 (large PDF): LINK
Specific Pending Referral Webpage: LINK
Specific Referral FAQ Webpage: LINK

The European Patent Office (EPO) announced yesterday on its website that its annual compilation of patent statistics has been completed and is publicly available for the year 2007. According to the EPO announcement (first link below), the statistics include the following:

- the number of European patent applications filed per technical domain and origin
- the number of European patents granted per technical domain and origin
- the most active patent filers

Statistical data, based upon extracts from the EPO’s monitoring database EPASYS, is available for the following categories:

1. Top 100 applicants in 2007 – The top 10 applicants, in order with number of applications in parentheses, are Philips (3,222 applications), Samsung (2,478), Siemens (1,850), BASF (1,474), Matsushita (1,395), Robert Bosch (1,166), LG (1,080), Sony (929), Nokia (873), and Fujitsu (819). A chart of the top 100 is provided at the link below.
Top 100 Webpage: LINK

2. European patent applications filed in 2007 per technical field and origin
Summary Webpage: LINK
Table (PDF): LINK
Chart (PDF): LINK

3. European patent applications 1998-2007 per country of residence of the applicant
Summary Webpage: LINK
Table (PDF): LINK
Chart (PDF): LINK

4. European patents granted 1998-2007 per country of residence of the patentee
Summary Webpage: LINK
Table (PDF): LINK
Chart (PDF): LINK

EPO Announcement: LINK

The Canadian Intellectual Property Office ("CIPO") recently announced that its Trade-marks Opposition Board will be revising its procedures effective March 31, 2009. According to the CIPO announcement (link below), the new practice is provided in a formal notice entitled "Practice in Trademark Opposition Proceedings," with changes including (quoted directly from the announcement):

- "Simplifying and clarifying the Registrar's benchmarks for granting extensions of time.

- Providing guidance with respect to the granting of extensions of time in exceptional circumstances.

- Encouraging parties to pursue settlement and mediation early in the opposition proceeding.

- Introducing a new practice of granting extensions of time amounting to a cooling-off period for parties to pursue settlement and mediation. In particular, the new practice notice will allow the opponent to request one extension of time up to a maximum benchmark of nine (9) months on consent either prior to filing its statement of opposition or its Rule 41(1) evidence with the possibility for the applicant to also request one further extension of time up to a maximum benchmark of nine (9) months on consent either prior to filing its counter statement or its Rule 42(1) evidence.

- Introducing a new practice with respect to the scheduling of hearings."

These new procedures as detailed within the aforementioned Practice notice will effectively replace the current notice entitled "Procedure before the Trade-marks Opposition Board as of October 1, 2007."

CIPO Announcement: LINK
Current Practice Notice: LINK
New Practice Notice (as of 3/31/09): LINK

On Friday, February 13th, the USPTO will be providing to the public, via webcast, the public sessions of the next Patent Public Advisory Committee (PPAC) meeting. The actual meeting, held at USPTO headquarters in Alexandria, VA, will commence at 9:30am local time and will continue to 3:00pm, with a public stream of the event available at a specific USPTO webpage (link provided below). According to the USPTO announcement (also linked below), the meeting will begin with a discussion of specific action items within the 2008 PPAC annual report, including the following (directly quoted/reproduced from the announcement itself):

A. Definitions of a "quality" issued patent, "quality" patent application and "quality" patent prosecution and examination.
B. Revisions to the current information disclosure statement requirements (e.g., Rules 1.98 and 1.99), including the ramifications of the Inequitable Conduct theory on any proposed rules.
C. Pre-examination interviews.
D. Nationwide USPTO workforce.
E. USPTO/University pilot program to offer loans to qualified engineering students willing to become examiners.
F. Market-based examination model.
G. Full utilization of foreign prior art searches and expanded IPC search capability.

The afternoon session will continue the same discussion and include details as to what the PPAC seeks to accomplish in 2009.

In addition to the webcast, if you are interested in listening to the event via listen-only conference call, dial-in instructions are provided within the USPTO announcement link provided below.

USPTO Announcement: LINK
Webcast URL: LINK
2007 PPAC Annual Report (PDF): LINK
2008 PPAC Annual Report (PDF): LINK
2008 PPAC Annual Report Scorecard (PDF): LINK

The World Intellectual Property Organization (WIPO) announced last week that it will be holding a meeting next month at WIPO headquarters to discuss the use if intellectual property (IP) assets as a tool to raise financing. This meeting, to be held on March 10, 2009, will discuss using IP assets, namely "copyright, patents, trademarks, designs – as collateral, particularly for small and medium-sized enterprises which depend on know-how and IP assets to bolster company value" as referenced within the WIPO press release (link below). As further noted within the press release, "[u]sing untapped intangible assets to secure finance is all the more crucial for companies in the current economic environment," recognizing that "[i]ntangible assets are estimated to account for the bulk of corporate value today," and that "the financial potential of IP assets has yet to be fully realized, largely because systems of financial accounting remain primarily tailored to tangible assets. The continued growth and success of IP financing hinges on legal and regulatory support, the awareness of the banking industry and sophistication of capital markets."

In addition, and if you are in Indianapolis tomorrow evening, I will be one of three panelists at an evening presentation for the Indiana Biomedical Entrepreneur Network (IBEN) to be held at the Ruth Lilly Learning/Riley Outpatient Center Auditorium on the Indiana University Purdue University Indianapolis (IUPUI) campus. As noted within the IBEN seminar webpage (link below), "[t]he program will be a panel discussion focusing on the start-up company and the importance of protecting its intellectual property, reasons to secure formal IP protection, common strategies employed by companies, the importance of IP to investors, and recent changes in patent law and the potential impact." The presentation, as referenced above, will include a discussion of leveraging a company’s IP assets, covering a similar scope as the upcoming March WIPO meeting. The other two panelists at tomorrow evening’s seminar are Melinda Schriver, President of LacPro Industries, LLC, and Dustin DuBois, a partner at my firm in the Private Equity and Venture Services Group. This event will be moderated by Michael Swift, a partner at Ice Miller LLP in the Intellectual Property Group. I hope to see you there.

WIPO Press Release: LINK
IBEN Website: LINK
IBEN Seminar Webpage: LINK

On Monday, the USPTO announced that it "successfully" tested the delivery of its own continuing education materials to patent practitioners through its Learning Management System. Last fall, the USPTO allowed over 850 patent attorneys and agents to participate in the pilot program, which included courses on how the USPTO handles patent applications post-KSR, common errors made by patent practitioners in petitions practice, and how the USPTO handles electronic signatures and powers of attorney. Although the number of patent attorneys outnumbered the number of patent agents by more than three to one, the program completion rate was slightly higher for patent agents (83% vs. 76%). According to the USPTO announcement (link below), "Feedback provided by the volunteers gave high grades for course content, but noted a number of areas where delivery of the courses through the Learning Management System could be improved. The USPTO is working on system improvements to address concerns and suggestions noted during the CEP Pilot Program. Final rules concerning Continuing Education for Practitioners are currently under consideration. Further announcements will be made as developments occur."

USPTO Announcement: LINK

In the January 28, 2009 Federal Register, the USPTO announced that it will be hosting a roundtable event to discuss the topic of deferred patent examination. According to the Federal Register (excerpt link below), the roundtable will be held on February 12, 2009, from 9 a.m. until 12:30 p.m. at USPTO headquarters in Alexandria, VA, and will provide a select number of public representatives the opportunity to participate and share their views on examination deferrals. As noted in the excerpt, the roundtable is being conducted "to determine whether the support expressed for deferral of examination is isolated or whether there is general support in the patent community and/or the public sector generally for the adoption of some type of deferral or examination," noting that "many intellectual property (IP) offices that substantively examine patent applications do not perform a substantive examination on every patent application that is filed in the respective office." The USPTO is accepting participation requests through 5 p.m. this Thursday, February 5th.

As a side note, the USPTO actually does have a procedure in place (as noted within the excerpt link below) to defer substantive examination for up to three years from the earliest filing date for which a benefit is claimed under Title 35 of the U.S. Code. Since November 29, 2000, which was also the effective date of the USPTO eighteen month publication rule, less than 200 applications have utilized this deferral procedure (provided under 37 C.F.R. § 1.103(d)).

Federal Register Excerpt (PDF): LINK
37 C.F.R. § 1.103(d): LINK