R Bays - Comparative Patent Registration

Comparative Patent Registration Processes in the US, UK, and EU Markets

MC Law Presentation 2013

Richard Bays JD, MBA, RN, CPHQ

© R Bays 2013

Introduction

While we may not consciously realize it, patented inventions are all around us. We

use cellphones, home appliances, automotive technology and many other things in

our daily lives that at some point an inventor had secured a patent for.

Patents for an invention grants a property right to the inventor by the government.

This is the right to exclude others from making, using, offering for sale, or selling

the invention in the country in which the patent is filed. On a larger scale,

international treaties provide for patents to be recognized and protected in multiple

countries.

Introduction Apple v. Samsung 2013

Patents are valuable property and subject to heated litigation to protect these rights.

Currently, a patent dispute in federal court in San Jose, California, is ongoing

between Apple and Samsung involving technology used for smartphones.

In the first of two lawsuits, a jury awarded Cupertino, California-based Apple, $1.05

billion in damages (later lowered to $639.4 million) finding Suwon, South Korea-

based Samsung, infringed six of the iPhone

maker’s mobile-device patents.

Introduction

The protections afforded by a patent are only applicable

in the countries that issue the patent.

Therefore when registering a patent it is important to

consider where to file, the scope of protection offered in

that venue, timeframes involved and the costs associated

with the filing.

US Patent Process Overview

USPTO

The United States Patent and Trademark Office

http://www.google.com/url?sa=i&rct=j&q=&esrc=s&frm=1&source=images&cd=&cad=rja&docid=a-adfNNWeCxc4M&tbnid=LQDZvJZGyb2qRM:&ved=0CAUQjRw&url=http://discoverypark.unt.edu/about/technology_transfer&ei=fQlaUrzYOYn48gTrsIHwAQ&bvm=bv.53899372,d.eWU&psig=AFQjCNGP_RB-IKVKOxW1iQ_MXoph24a94g&ust=1381718768648865

What is a Patent?

A patent is an intellectual property right granted by the Government

to an inventor:

“to exclude others from making, using, offering for sale, or selling

the invention throughout the United States or importing the

invention into the United States”

for a limited time in exchange for public disclosure of the invention

when the patent is granted.

What is a Patent?

The right conferred by the patent grant is, in the language of the

statute and of the grant itself, “the right to exclude others

from making, using, offering for sale, or selling” the

invention in the United States or “importing” the invention

into the United States.

What is granted is not the right to make, use, offer for sale, sell

or import, but the right to exclude others from making, using,

offering for sale, selling or importing the invention. Once a

patent is issued, the patentee must enforce the patent without

aid of the USPTO.

What is a Patent?

A patent for an invention is issued by the United States Patent

and Trademark Office. The term of a new patent is generally

20 years from the date on which the application for the patent

was filed in the United States or, in special cases, from the

date an earlier related application was filed, subject to the

payment of maintenance fees.

U.S. patent grants are effective only within the United States,

U.S. territories, and U.S. possessions. Under certain

circumstances, extensions or adjustments may be available.

There are three types of US patents

1) Utility patents may be granted to anyone who invents or

discovers any new and useful process, machine, article of

manufacture, or composition of matter, or any new and useful

improvement thereof.

2) Design patents may be granted to anyone who invents a new,

original, and ornamental design for an article of manufacture.

3) Plant patents may be granted to anyone who invents or

discovers and asexually reproduces any distinct and new variety

of plant.

Patent Laws

The Constitution of the United States gives Congress the power to

enact laws relating to patents, in Article I, section 8, which reads:

“Congress shall have power . . . to promote the progress of

science and useful arts, by securing for limited times to

authors and inventors the exclusive right to their respective

writings and discoveries.”

Under this power Congress has from time to time enacted various

laws relating to patents. The first patent law was enacted in 1790.

The patent laws underwent a general revision which was enacted

July 19, 1952, and which came into effect January 1, 1953. It is

codified in Title 35, United States Code.

Patent Laws

On November 29, 1999, Congress enacted the American Inventors

Protection Act of 1999 (AIPA), which further revised the patent

laws. See Public Law 106-113, 113 Stat. 1501 (1999).

The patent law specifies the subject matter for which a patent may be

obtained and the conditions for patentability. The law establishes

the United States Patent and Trademark Office to administer the

law relating to the granting of patents and contains various other

provisions relating to patents.

America Invents Act Leahy-Smith

The America Invents Act (AIA) is a United States federal statute that

was passed by Congress and was signed into law by President

Obama on September 16, 2011. The law represents the most

significant change to the U.S. patent system since 1952, and

closely resembles previously proposed legislation in the Senate in

its previous session (Patent Reform Act of 2009).

The Act switches the U.S. patent system from a "first to invent" to a

"first inventor to file" system, eliminates interference proceedings,

and develops post-grant opposition. Its central provisions went

into effect on March 16, 2013.


The AIA refers to the new regime as "First-Inventor-to-File (FITF)".

This new regime operates differently than the "First-to-Invent"

(FTI) regime and the various "First-to-File" (FTF) regimes in place

in other locations in the world.

Different outcomes can occur under each of these three different

regimes, depending on whether and how two different inventors

publish or file patent applications.


The law also expands the definition of prior art used in determining patentability.

Actions and prior art that bar patentability will include:

public use,

sales,

publications, and

other disclosures available

to the public anywhere in the world as of the filing date, other than publications by

the inventor within one year of filing (inventor's "publication-conditioned grace

period"), whether or not a third party also files a patent application.

The law also notably expands prior art to include:

foreign offers for sale and

public uses.


Applicants that do not publish their inventions prior to filing will receive no grace

period. The proceedings at the USPTO for resolving priority contests among

near-simultaneous inventors who both file applications for the same invention

(“Interference proceedings") are repealed, because priority will be determined

based on filing date.

An administrative proceeding called a “derivation” proceeding is provided to ensure

that the first person to file the application is actually an original inventor and that

the application was not derived from another inventor.


The America Invents Act included the following changes:

Tax strategy inventions- Provides that any strategy for reducing, avoiding, or

deferring tax liability, whether known or unknown at the time of the invention or

application for patent, shall be deemed insufficient to differentiate a claimed

invention from the prior art.

False marking- Eliminates false marking lawsuits except for ones filed by the

U.S. government or filed by a competitor who can prove competitive injury. In

addition, marking a product with a patent that formerly covered the product, but

has since expired, is no longer a violation.

In 2011 the United States Court of Appeals for the Federal Circuit clarified the standards for pleading False Patent

Marketing Claims, which had become a source of prolific litigation, by providing a standard that a false patent marking

complaint must provide some objective indication to reasonably infer that the defendant was aware that the patent

expired.



Filing by other than inventor- An entity can file an application on behalf of an

inventor who assigned or is under an obligation to assign the invention rights to

the entity (or if the entity otherwise has financial interest in the invention),

without seeking the inventor's execution of the application. Any patent that

issues belongs to the inventor absent a written assignment from the inventor or

inventor's estate to the entity.

Best mode- While an inventor is still required to “set forth” the best mode for

accomplishing the invention, failure to disclose a best mode is not a basis for

invalidating or rendering unenforceable an issued patent. While the law formally

retains the best mode requirement, by making insufficient disclosure no longer

an allowable defense against patent infringement, the law renders best mode

unenforceable. (This has left many patent lawyers wondering why the

requirement was kept at all.)



Prior user rights defense- If an individual/entity begins using an invention more

than a year before a subsequent inventor files for a patent on the same invention,

then the user will have the right to continue using the invention in the same way

after the subsequent inventor is granted a patent as long as the user did not

derive the invention from the subsequent inventor.

These prior user rights are limited in scope and transferability, and they also

have limited applicability to patents held by universities.



Micro-entity- The AIA added a micro-entity status. A micro-entity includes an

independent inventor with a previous calendar year gross income of less than 3

times the national median household income who has previously filed no more

than four non-provisional patent applications, not including those the inventor

was obligated to assign to an employer. A micro-entity also includes a university

or an inventor under an obligation to assign the invention to a university. A

micro-entity is entitled to a 75% reduction in many of the patent fees payable to

the US Patent Office during prosecution of a US patent application. The patent

office is expected to develop regulations to identify which fees will be eligible

for the reduction and how joint inventors may qualify as a micro-entity.

Confidential Sale- Provides that confidential sales of products containing the

patented technology will no longer mark the beginning of the 1 year period to

file the patent.

What Can Be Patented

The patent law specifies the general field of subject matter that

can be patented and the conditions under which a patent may

be obtained.

In the language of the statute, any person who:

“invents or discovers any new and useful process, machine,

manufacture, or composition of matter, or any new and useful

improvement thereof, may obtain a patent,” subject to the

conditions and requirements of the law.


The word “process” is defined by law as a process, act or method,

and primarily includes industrial or technical processes.

The term “machine” used in the statute needs no explanation.

The term “manufacture” refers to articles that are made, and

includes all manufactured articles.

The term “composition of matter” relates to chemical

compositions and may include mixtures of ingredients as well as

new chemical compounds.

These classes of subject matter taken together include practically

everything that is made by man and the processes for making the

products.

What Can Be Patented The patent law specifies that the subject matter must be “useful.”

The term “useful” in this connection refers to the condition that the

subject matter has a useful purpose and also includes operativeness,

that is, a machine which will not operate to perform the intended

purpose would not be called useful, and therefore would not be

granted a patent.

Interpretations of the statute by the courts have defined the limits of the

field of subject matter that can be patented, thus it has been held that:

the laws of nature,

physical phenomena, and

abstract ideas are not patentable subject matter.


A patent cannot be obtained upon a mere idea or suggestion.

The patent is granted upon the new machine, manufacture,

etc., and not upon the idea or suggestion of the new machine.

A complete description of the actual machine or other subject

matter for which a patent is sought is required.

Novelty And Non-Obviousness, Conditions For Obtaining A Patent

In order for an invention to be patentable it must be new as defined

in the patent law, which provides that an invention cannot be

patented if:

“(a) the invention was known or used by others in this country, or

patented or described in a printed publication in this or a foreign

country, before the invention thereof by the applicant for

patent,” or

“(b) the invention was patented or described in a printed

publication in this or a foreign country or in public use or on sale

in this country more than one year prior to the application for

patent in the United States . . .”


If the invention has been described in a printed publication anywhere in the

world, or if it was known or used by others in this country before the date

that the applicant made his/her invention, a patent cannot be obtained.

If the invention has been described in a printed publication anywhere, or has

been in public use or on sale in this country more than one year before the

date on which an application for patent is filed in this country, a patent

cannot be obtained. In this connection it is immaterial when the invention

was made, or whether the printed publication or public use was by the

inventor himself/herself or by someone else.

If the inventor describes the invention in a printed publication or uses the

invention publicly, or places it on sale, he/she must apply for a patent

before one year has gone by, otherwise any right to a patent will be lost.

The inventor must file on the date of public use or disclosure in order to

preserve patent rights in many foreign countries.


Even if the subject matter sought to be patented is not exactly shown by the

prior art, and involves one or more differences over the most nearly

similar thing already known, a patent may still be refused if the

differences would be obvious.

The subject matter sought to be patented must be sufficiently different from

what has been used or described before that it may be said to be

nonobvious to a person having ordinary skill in the area of technology

related to the invention. For example, the substitution of one color for

another, or changes in size, are ordinarily not patentable.


Step by Step Guidelines



Step 1

Applicant - Has your invention already been patented?

• Search the Patent Full-Text and Full-Page Image Databases

• If already patented, end of process

• If not already patented, continue to Step 2


Step 2

Applicant - What type of Application are you filing?

• Design Patent (Ornamental characteristics)

• Plant Patent (New variety of asexually reproduced plant)

• Utility Patent (Most common) (Useful process, machine,

article of manufacture, composition of matter)


Step 3

Applicant - Determine Filing Strategy

• File Globally?

• Need international protection?

• File in U.S.? - continue to Step 4


Step 4

Applicant - Which type of Utility Patent Application to file?

• Provisional (Means to establish an early effective filing date in a

later filed non-provisional patent application )

or

• Non-provisional (Application is examined by a patent examiner,

and may be issued as a patent if all the requirements for

patentability are met)


Step 5

Applicant - Consider expedited examination

• Prioritized Examination

• Accelerated Examination Program

• First Action Interview

• Patent Prosecution Highway


Step 6

Applicant - Who Should File?

• File yourself (Pro Se)

• Use a Registered Attorney or Agent (Recommended)


Step 7

Applicant - Prepare for electronic filing

• Determine Application processing fees

• Apply for a Customer Number and Digital Certificate


Step 8

Applicant - Apply for Patent using Electronic Filing System as a

Registered e-Filer (Recommended)

• EFS Web

EFS-Web is the United States Patent and Trademark Office’s (USPTO’s) Web-based patent application

and document submission solution. Using EFS-Web, anyone with a Web-enabled computer can file

patent applications and documents without downloading special software or changing document

preparation tools and processes.


Step 9

Applicant - USPTO examines application

• Check Application Status

• Allowed?

• Yes, go to Step 12

• No, continue to Step 10


Step 10

Applicant - Applicant files replies requests for reconsideration,

and appeals as necessary


Step 11

Applicant - If objections and rejection of the examiner are

overcome, USPTO sends Notice of Allowance and Fee(s) due


Step 12

Applicant - Applicant pays the issue fee and the publication fee

• USPTO Grants Patent


Step 13

Applicant - Maintenance fees due

3 ½,

7 ½, and

11 ½ years after patent grant

UK Intellectual Property Office

IPO

United Kingdom

http://www.google.com/url?sa=i&source=images&cd=&cad=rja&docid=PtCreg39rjo3bM&tbnid=Ak03IbCK0IJUZM:&ved=0CAgQjRwwAA&url=http://news.softpedia.com/newsImage/UK-to-Launch-New-Unit-to-Tackle-Online-Piracy-and-Other-Intellectual-Property-Crimes-2.png/&ei=vAhaUrrrGoHo8QSp_4GYCQ&psig=AFQjCNGx71dzfNmukNXCnS4BCwpa2D7eJA&ust=1381718588506429

Patent Requirements A patent protects new inventions and covers how things work, what

they do, how they do it, what they are made of and how they are

made.

If a patent application is granted, it gives the owner the ability to take

a legal action under civil law to try to stop others from making,

using, importing or selling the invention without permission. This

may involve suing the alleged infringer through the courts, which is

costly and time consuming because it involves expert legal advice.

The patent owner needs to be able to pay for this civil legal action and

advice themselves, although they may get some costs back if they

win their case.

If you have a granted patent, you must pay a renewal fee to renew it

every year after the 5th year for up to 20 years protection.

Patent Requirements Your invention must:

be new

have an inventive step that is not obvious to someone with knowledge and

experience in the subject

be capable of being made or used in some kind of industry

Not be:

a scientific or mathematical discovery, theory or method

a literary, dramatic, musical or artistic work

a way of performing a mental act, playing a game or doing business

the presentation of information, or some computer programs

an animal or plant variety

a method of medical treatment or diagnosis

against public policy or morality.

Patent Requirements

Applying for a patent:

A granted patent will give you exclusive rights over an invention and you will be able

to try to stop anyone who uses it without your permission. However, patent

infringement is not a criminal offence, and therefore you will have to enforce the

patent rights yourself by taking a legal action under civil law - this can be costly

and time consuming.

To get patent protection your invention must be:

new, not known anywhere in the world prior to filing

have an inventive step, not obvious or a simple adaptation or combination of

existing products

be capable of industrial application, having a technical effect

Patent Protection Benefits of patent protection:

A patent gives you the ability to take legal action to try to stop others

from copying, manufacturing, selling, and importing your invention

without your permission. The existence of your patent may be

enough on its own to stop others from trying to exploit your

invention. If it does not, the patent gives you the right to take a legal

action under civil law to try to stop them exploiting your invention.

This may involve suing the alleged infringer through the courts,

which is costly and time consuming because it involves expert legal

advice. The patent owner needs to be able to pay for this civil legal

action and advice themselves, although they may get some costs

back if they win their case.

Patent Protection

The patent also allows you to:

sell the invention and all the intellectual property (IP) rights

license the invention to someone else but retain all the IP rights

discuss the invention with others in order to set up a business based

around the invention.

The public also benefit from your patent because it is published after 18

months. Others can then gain advance knowledge of technological

developments which they will eventually be able to use freely once

the patent ceases.

Patent Protection

What if no application is made?

If no application is made to protect your invention, it will allow anyone

to use it and you will not be able to try to stop them. You may be

able to protect your invention by keeping it a secret but this will only

be possible if it would be difficult to copy the process, construction

or formulation from your product itself.

Prior to Application Have you considered other forms of protection?

There maybe other forms of protection, that are more suitable for

your invention, instead of or in addition to patent protection.

Does your product meet the requirements for protection?

To be eligible for patent protection, your invention must be new,

inventive and must not be of an excluded type.

Is your invention new?

We cannot grant a patent, if your invention is public, you should try

to find it elsewhere before applying for a patent.

Prior to Application Are you the legal owner of your invention?

A patent applicant may be an individual or a corporate body, and

persons can make joint applications.

Have you received enough advice?

You can get confidential advice regarding your proposed application

from a number of different sources, such as patent attorneys,

solicitors, or our staff.

Have you considered patent protection abroad?

A United Kingdom patent is a territorial right that only gives

protection in the UK. Consider alternatives if you are thinking of

protection abroad.

*Permission to file a patent application abroad may be required in some cases.

Patent Filing Costs

The normal amount we charge to process a UK patent application is

GBP £230 - £280.

If you decide to seek professional IP advice (from a Patent Attorney or

other representative) you will need to factor in the cost of this as

well. If the patent is granted, you must pay a renewal fee to renew it

every year after the 5th year for up to 20 years protection. Renewal

fees start at £70 for the 5th year and rise to £600 for the 20th year.

Patent Filing Costs

Paper filing

GBP £30 (application fee) for a preliminary examination

GBP £150 for a search

GBP £100 for a substantive examination

Electronic filing/web-filing service

GBP £20 (application fee) for a preliminary examination

GBP £130 for a search

GBP £80 for a substantive examination

UK Intellectual Property Office



UK Patent Process Overview

Step 1

Preparing a UK patent application

Forms and fees

Description of Invention

Allowing others to see how it works and could be made.

Drawings

To illustrate the description.


Step 1

Preparing a UK patent application

Claims

Precise legal statements in the form of single sentences that

define the invention by setting out its distinctive technical

features.

Abstract

A summary that includes all the important technical aspects of

your invention.


Step 2

Request for grant of a patent

File form 1

Request for grant of a patent

Office response and your options


Step 3

Request for a search

File form 9A

Office response and your options

Application number assigned and confirms the ‘filing date’ of

the application.


Step 3

Request for a search

If your application includes a declaration of priority, the

deadline for filing form 9A is 2 months from your filing date

or 12 months from your priority date, whichever is later.

After a search has been requested an examiner will search

through published patents and other documents for material

against which assessment whether or not the invention you

have claimed is new and inventive. The aim is to issue the

search report within six months of receiving the form 9A.


Step 4

Publication

Publishing your application and your options

Withdrawing your application before or after publication


Step 4

Publication

The office will publish the patent application shortly after 18 months

from the filing date (or priority date if there is one), as long as the formal

requirements are met and filed with form 9A together and the appropriate

fees and no request to withdraw the application.

“Your application details, including your name and address, will appear

on our records. They will appear in the publication of your application,

once all formal requirements are met. Both our records and the Patents

Journal are open to the public on our website, which can be permanently

searched using most standard search engines. All correspondence

between us will be open to public inspection, including on our website,

once your application is published.”


Step 5

Request for a substantive examination

File form 10

No later than six months after publication to avoid your

application being terminated.

Our response and your options


Step 6

Next steps

Successful applications

If the application meets all the

requirements of the Patents Act

1977, a grant of the patent occurs,

publish the application in its final

form and send the applicant a

certificate.

http://www.google.com/url?sa=i&rct=j&q=&esrc=s&frm=1&source=images&cd=&cad=rja&docid=9mL2qcdbaC2uvM&tbnid=oZjwDg5bGw1FwM:&ved=0CAUQjRw&url=http://oggybloggyogwr.blogspot.com/2013/08/the-importance-of-intellectual-property.html&ei=TlBfUrrHKIf68gSe3oGwCw&bvm=bv.54176721,d.eWU&psig=AFQjCNGoWoa3Liv0JISK4mqAcw-lt9AXRw&ust=1382064550448188

EU Patent Process Overview

EPO

The European Patent Office

http://www.google.com/url?sa=i&rct=j&q=&esrc=s&frm=1&source=images&cd=&cad=rja&docid=1XqXJDZKDLN5pM&tbnid=quu5diRtY_1VDM:&ved=0CAUQjRw&url=http://smart-therapeutics.com/Technology/IntellectualProperty.aspx&ei=egpaUtKNO5LC9QTxsICgBQ&bvm=bv.53899372,d.eWU&psig=AFQjCNEjcvfLnOXKE_OMBEmI3Bk_ChGtlg&ust=1381719030219301

Patent Information in the EU

Patent documents offer a whole host of information on new, and also older technologies, and the state of

the art in all fields imaginable, plus an insight into the current market situation. The information

contained in patent documents enables one to find out, for example, which companies are operating

on which new markets. Information of this kind cannot be drawn in as much detail from other

sources, if at all.

In the European Patent Office’s databases there are more than 60 million published patent documents

from all over the world.

Three patent applications are filed every minute.

A large proportion of all the technical information published is contained in patent documents.

Patent classification and the largely uniform structure of the documents in all countries make it

possible even for the non-specialist to search documents.

These documents can be viewed in the European Patent Office’s databases, many are free of charge.

Patent Information in the EU

The European Patent Convention (EPC) sets the legal framework of the European patent

system.

The EPC has established a single European procedure for the grant of patents on the basis

of a single application and created a uniform body of substantive patent law in order to

provide protection for inventions in the contracting states.

In each contracting state for which it is granted, a European patent gives its proprietor the

same rights as those conferred by a national patent granted in that state.

Currently there are 38 contracting states utilizing the one application / one procedure

system.

The current term granted for a patent is 20 years.


Step 1

Preparing a EU patent application

First, it is important to know what inventions and patents are.

An invention can be a product, a process or an apparatus. To be

patentable, it must be new, industrially applicable and involve an

inventive step.

Patents are valid in individual countries for specified periods.

They are generally granted by a national patent office, or a

regional one like the EPO. Patents confer the right to prevent third

parties from making, using or selling the invention without their

owners' consent.


Step 1


Patents should not be confused with the other kinds of intellectual

property rights available:

Utility models can be registered in some countries, to protect

technical innovations which might not qualify for a patent.

Copyright protects creative and artistic works such as literary

texts, musical compositions and broadcasts against unauthorized

copying and certain other uses.


Step 1


Patents should not be confused with the other kinds of intellectual

property rights available:

Trade marks are distinctive signs identifying brands of products

or services; they may be made up of 2 or 3 dimensional

components such as letters, numbers, words, shapes, logos or

pictures, or even sounds

Designs and models protect a product's visual appearance, i.e. its

shape, contours or color.

Before applying for a patent, a patent search should be performed.


Step 2

Application

There are different routes to patent protection and the best

route will depend on the invention and the markets a company

operates in.

The European Patent Office accepts applications under the

European Patent Convention (EPC) and the Patent Cooperation

Treaty (PCT).

If protection is sought in only a few countries, it may be best to

apply direct for a national patent to each of the national offices.


Step 2

Application

A European patent application consists of:

1. A request for grant

2. A description of the invention

3. Claims

4. Drawings (if any)

5. An abstract.


Step 2

Application

Applications can be filed at the EPO in any language. However,

the official languages of the EPO are:

English,

French and

German

If the application is not filed in one of these languages, a

translation has to be submitted. Although the services of a

professional representative are mandatory only for applicants

residing outside Europe, the EPO advises all applicants to seek

legal advice.


Step 3

Filing and Formalities Examination

One of the first steps in the European patent granting procedure

is the examination on filing.

This involves checking whether all the necessary information

and documentation has been provided, so that the application

can be accorded a filing date.


Step 3


The following are required:

1. An indication that a European patent is sought

2. Particulars identifying the applicant

3. A description of the invention or

4. A reference to a previously filed application.


Step 3


If no claims are filed, they need to be submitted within two

months.

This is followed by a formalities examination relating to

certain formal aspects of the application, including:

The form and content of the request for grant,

Drawings and abstract,

The designation of the inventor,

The appointment of a professional representative,

The necessary translations and the fees due.


Step 4

Search

While the formalities examination is being carried out, a

European search report is drawn up, listing all the documents

available to the Office that may be relevant to assessing novelty

and inventive step.

The search report is based on the patent claims but also takes

into account the description and any drawings. Immediately after

it has been drawn up, the search report is sent to the applicant

together with a copy of any cited documents and an initial

opinion as to whether the claimed invention and the application

meet the requirements of the European Patent Convention.


Step 5

Publication of The application

The application is published, normally together with the search

report, 18 months after the date of filing or, if priority was

claimed, the priority date.

Applicants then have six months to decide whether or not to

pursue their application by requesting substantive examination.

Alternatively, an applicant who has requested examination

already will be invited to confirm whether the application should

proceed. Within the same time limit the applicant must pay the

appropriate designation fee and, if applicable, the extension fees.


Step 5

Publication of The application

From the date of publication, a European patent application

confers provisional protection on the invention in the states

designated in the application.

However, depending on the relevant national law, it may be

necessary to file a translation of the claims with the patent office

in question and have this translation published.


Step 6

Substantive examination

After the request for examination has been made, the European

Patent Office examines whether the European patent application

and the invention meet the requirements of the European Patent

Convention and whether a patent can be granted.

An examining division normally consists of three examiners, one

of whom maintains contact with the applicant or representative.

The decision on the application is taken by the examining

division as a whole in order to ensure maximum objectivity.


Step 7

The grant of a Patent

If the examining division decides that a patent can be granted, it

issues a decision to that effect.

A mention of the grant is published in the European Patent

Bulletin once the translations of the claims have been filed and

the fee for grant and publication have been paid.

The decision to grant takes effect on the date of publication. The

granted European patent is a "bundle" of individual national

patents.


Step 8

Validation

Once the mention of the grant is published, the patent has to be

validated in each of the designated states within a specific time

limit to retain its protective effect and be enforceable against

infringers.

In a number of contracting states, the patent owner may have to

file a translation of the specification in an official language of the

national patent office. Depending on the relevant national law,

the applicant may also have to pay fees by a certain date.


Step 9

Opposition

After the European patent has been granted, it may be opposed

by third parties, usually the applicant’s competitors, if they

believe that it should not have been granted.

This could be on the grounds, for example, that the invention

lacks novelty or does not involve an inventive step.

Notice of opposition can only be filed within nine months of the

grant being mentioned in the European Patent Bulletin.

Oppositions are dealt with by opposition divisions, which are

normally made up of three examiners.


Step 10

Limitation / Revocation

This stage may also consist of revocation or limitation

proceedings initiated by the patent proprietor himself.

At any time after the grant of the patent, the patent proprietor

may request the revocation or limitation of his patent.

The decision to limit or to revoke the European patent takes

effect on the date on which it is published in the European

Patent Bulletin and applies ab initio to all contracting states in

respect of which the patent was granted.


Step 11

Appeal

Decisions of the European Patent Office, refusing an application

or in opposition cases for example, are open to appeal.

Decisions on appeals are taken by the independent boards of

appeal.

In certain cases it may be possible to file a petition for review by

the Enlarged Board of Appeal.

The International Patent Process Overview

PCT

The Patent Cooperation Treaty

http://www.wipo.int/portal/index.html.en

The Patent Cooperation Treaty (PCT)

A United Nations Treaty Signed in June of 1970 at the Washington Diplomatic

Conference

Became operational in June of 1978

Administered by the International Bureau (IB) of the World

Intellectual Property Organization (WIPO) in Geneva,

Switzerland

Purposes of the PCT

A PCT application does not itself result in the grant of a patent,

since there is no such thing as an "international patent", and the

grant of patent is a prerogative of each national or regional

authority.

A PCT application, which establishes a filing date in all contracting

states, must be followed up with the step of entering into National

or Regional phases in order to proceed towards grant of one or

more patents.

The PCT procedure essentially leads to a standard National or

Regional patent application, which may be granted or rejected

according to applicable law, in each jurisdiction in which a patent is

desired.

Purposes of the PCT

To simplify the process of filing foreign patent applications

To give every Regional or National Patent Office designated by the

applicant the benefit of:

A search by a major patent Office

An optional examination by a major patent Office

PCT Contracting States

A country which is a signatory to the PCT

Eighteen (18) Contracting States in 1978

Currently 148 Contracting States

Patent protection is available in each PCT Contracting State through either

A national patent Office

A regional patent Office

Or both

PCT Contracting States

The PCT currently has 148 Contracting States

http://www.wipo.int/pct/en/pct_contracting_states.html

2010 PCT Statistics

0

20000

40000

60000

80000

100000

120000

140000

160000

180000

78 80 82 84 86 88 90 92 94 96 98 00 02 04 06 08 10

Overall +5.7% in 2010

All-time record of 164,300 applications

0

5,000

10,000

15,000

20,000

25,000

30,000

35,000

40,000

45,000

US JP DE CN KR FR GB NL CH SE CA IT FI AU ES

International Applications Received in 2010 by Country of Origin

US: -1.6%

JP: +8%

DE: +4.5%

KR: +20.3%

CN: +55.6%

IN: +36.6%

2010: East Asia overtook North

America and Western Europe to

become the sub-region

accounting for most PCT filings

PCT Applications by Field of Technology (2010)

Electrical

Instruments

Chemistry

Mechanical

Other

Digital comms

Med. tech.

Computer tech.

Electrical mach.

Pharma.Measurement

Telecomms

Semiconductors

Organic chem

Transport

Biotech

Basic materials

chem

Civil eng.

Highest Filing Technical Areas (2010)

6%

76%

15%1%2%

Member States

PCT System

Madrid Sytem

Hague System

Other

Budget 2010-2011: CHF 618 million (decrease of 1.6% (9.8m) on 08-09)

WIPO: Primary Sources of Revenue

National patent systems

Regional patent system (EPO, EAPO, OAPI, ARIPO, GCC)

Patent Cooperation Treaty (PCT) system

Filing patent applications abroad

(Multiple) national Patent Offices

(Several) regional Patent Offices

National Offices

Regional Offices

(Single) receiving Office [National phase]

Patents

[International phase]

- File application

- International publication

- International search

- International preliminary

examination

Using the Traditional Patent System to seek Multinational Patent Protection

Local patent application followed within 12 months by multiple foreign

applications claiming priority under Paris Convention:

- multiple formality requirements

- multiple searches

- multiple publications

- multiple examinations and prosecutions of applications

- translations and national fees required at 12 months

Some rationalization because of regional arrangements:

ARIPO, EAPO, EPO, OAPI

0 12

File

application

locally

File

applications

abroad

(months)

Traditional patent system

vs.

PCT system Fees for:

--translations

--Office fees

--local agents

0 12

File local

application

File

applications

abroad (months)

Traditional

(months)

File PCT

application

12 30

International

search report &

written opinion

16 18

International

publication

(optional)

File

demand for

International

preliminary

examination

File local

application

Enter

national

phase

22 28

(optional)

International

preliminary

report on

patentability

PCT 0

Fees for:

--translations

--Office fees

--local agents

Top PCT Applicants 2010

1. Panasonic—JP (2154)

2. ZTE Corporation—CN (1868)

3. Qualcomm—US (1677)

4. Huawei—CN (1528)

5. Philips—NL (1435)

6. Bosch—DE (1301)

7. LG Electronics—KR (1298)

8. Sharp—JP (1286)

9. Ericsson—SE (1149)

10. NEC—JP (1106)

11. Toyota—JP (1095)

12. Siemens—DE (833)

13. BASF—DE (818)

14. Mitsubishi Electric—JP (726)

15. Nokia—FI (632)

16. 3M—US (586)

17. Samsung Electronics—KR (578)

18. HP—US (564)

19. Fujitsu—JP (476)

20. Microsoft—US (469)

1. Postpones the major costs associated with internationalizing a

patent application

2. Provides a strong basis for patenting decisions

3. Harmonizes formal requirements

4. Protects applicant from certain inadvertent errors

5. Evolves to meet user needs

6. Is used by the world’s major corporations, universities and

research institutions when they seek international patent

protection

The PCT, as the cornerstone of the international patent system,

provides a worldwide system for simplified filing and processing

of patent applications, which:

Certain PCT Advantages

Costs in Traditional and PCT Filing Routes

(months)

File PCT

application

12 0 30

International

search report

& written

opinion

16 18

International

publication

(optional)

File demand for

international

preliminary

examination

File local

application

Enter

national

phase

22 28

International

preliminary

report on

patentability

(months)

12 0

File local

application

Costs for:

– translations (≈ 18–36% of total)

– Patent Office fees (≈33%)

– local agents (≈ 25-50%)

File

applications

abroad

Traditional

route

PCT

route

18 months

0 12

30

National phase

(months)

International phase

Priority period

Should I file

applications abroad?

Should I file a

PCT application?

Should I file a

national patent

application?

Should I withdraw the

application to prevent

publication? Should I

withdraw the priority claim

to delay publication?

Should I enter the

national phase in view of:

(1) assessment of the prospects

of commercial success?

(2) likelihood of patent grant?

In which countries should I

enter the national phase?

18

Publication

Do I want international

preliminary examination to

enable amendment of the

application before the national

phase?

Should I manufacture

or assign or license

the invention?

Can I find a partner

or buyer or licensee?

PCT Decision Points

$

$$

$$$$$$ (translations, official

fees, foreign agents)

($$)

More information about patentability

More information about commercial prospects

The International Patent Process Overview



The PCT System – Typical Use (1)

(months)

File PCT

application

12 0 30

International

search report

& written

opinion

16 18

International

publication

(optional)

File

demand for

international

preliminary

examination

File local

application

Enter

national

phase

22 28

(optional)

International

preliminary

report on

patentability Typically a national

patent application in

the home country of

the applicant

19

Suplementary

International

Search (optional)

Typical Use (2)

(months)

File PCT

application

12 0 30

International

search report &

written opinion

16 18

International

publication

(optional)

File

demand for

international

preliminary

examination

File local

application

Enter

national

phase

22 28

(optional)

International

preliminary

report on

patentability Typically also filed with

local Patent Office.

One set of fees, one

language, one set of

formality requirements.

Legal effect in all PCT

States.

19

Suplementary

International

Search (optional)

Typical Use (3)

(months)

File PCT

application

12 0 30

International

search report

& written

opinion

16 18

International

publication

(optional)

File

demand for

international

preliminary

examination

File local

application

Enter

national

phase

22 28

(optional)

International

preliminary

report on

patentability

Report on state of the

art (prior art documents

and their relevance) +

initial opinion on

patentability

19

Suplementary

International

Search (optional)

Typical Use (4)

(months)

File PCT

application

12 0 30

International

search report &

written opinion

16 18

International

publication

(optional)

File

demand for

international

preliminary

examination

File local

application

Enter

national

phase

22 28

(optional)

International

preliminary

report on

patentability

Public disclosure to

the world of content

of application in

standardized way

19

Suplementary

International

Search (optional)

Typical Use (5)

(months)

File PCT

application

12 0 30

International

search report &

written opinion

16 18

International

publication

(optional)

File

demand for

international

preliminary

examination

File local

application

Enter

national

phase

22 28

(optional)

International

preliminary

report on

patentability

Request an additional

patentability analysis

on basis of amended

application

19

Suplementary

International

Search (optional)

Typical Use (6)

(months)

File PCT

application

12 0 30

International

search report &

written opinion

16 18

International

publication

(optional)

File

demand for

international

preliminary

examination

File local

application

Enter

national

phase

22 28

(optional)

International

preliminary

report on

patentability

Additional patentability

analysis, designed to

assist in national phase

decision-making

19

Suplementary

International

Search (optional)

Typical Use (7)

(months)

File PCT

application

12 0 30

International

search report &

written opinion

16 18

International

publication

(optional)

File

demand for

international

preliminary

examination

File local

application

Enter

national

phase

22 28

(optional)

International

preliminary

report on

patentability

Express intention

and take steps to

pursue to grant in

various States

19

Suplementary

International

Search (optional)

PCT Patent Process Overview

Chapter I Proceedings

1. International application filed

2. International search performed by the International Searching

Authority (ISA)

3. International Search Report and Written Opinion of the

International Searching Authority prepared

4. Optional amendment to the claims only


Chapter I Proceedings

5. File with the International Bureau (IB) of WIPO under Article

19 after Search Report mailed

6. International application, International Search Report and

Article 19 amendment published by IB

7. Published pamphlet sent to designated States by IB

8. Written Opinion of the International Searching Authority not

published with pamphlet


Chapter II Proceedings

1. Demand electing at least one eligible State is filed with a

competent International Preliminary Examining Authority

(IPEA)

May include amendments to description, claims and drawings

under Article 34

2. Written Opinion of the International Searching Authority is

considered the Written Opinion of the IPEA


Chapter II Proceedings

3. A second Written Opinion will be prepared only in very rare

circumstances

4. International Preliminary Report On Patentability or “IPRP”

(form PCT/IPEA/409) is:

Prepared by IPEA and sent to applicant and IB

Sent to elected States by IB


Steps for national stage entry

1. Prepare translations of the international application into

languages required by the desired patent offices as applicable

Translations should be “accurate”

Amendments, even those considered to be minor in nature,

should not be made to the translation

Applicant may file amendments to the application in each

DO/EO

2. Transmit translation and necessary fees to each desired

national or regional patent office previously designated/elected

3. Once national phase entry requirements have been met, each

designated/elected Office decides whether to grant a patent or

reject the claims

Comparative Patent Process Overview

US, EU, UK, PCT Markets

117

The Decision Whether/Where To File

• Always conduct Prior Art search

Guidance as to scope of patent potentially available (broad or narrow patent)

Helps to draft application properly (not to read on prior art)

• Strong recommendation to retain patent counsel to do search

118


• Can search databases on Internet but very difficult to properly search

USPTO i.e. www.uspto.gov

CIPO i.e. www.cipo.ic.gc.ca

WIPO i.e. www.wipo.int

EPO i.e. www.epo.org

• Cost is approximately $3,000 for search and opinion on patentability

• Search has limitations

• 18 month window until publication in most countries

http://www.uspto.gov/

http://www.cipo.ic.gc.ca/

http://www.wipo.int/

http://www.epo.org/

119


• Costs associated with patent protection and enforcement

are very significant and patents are territorial (by country)

• Very general estimate: $10K to $15K for one country

• Over $100K+ for multi-national filing

120


• Scope of likely patent protection

Can you get a broad patent, or only a narrow one?

• What is the commercial life of the invention?

Will commercial life be less than time to get patent (e.g.

computers)? It may be 3 to 5 years until you get a patent.

121


• Consider if it is better As Trade Secret?

Example - The formula of COKE

Must disclose invention in order to get patent

http://www.google.com/url?sa=i&rct=j&q=&esrc=s&frm=1&source=images&cd=&cad=rja&docid=IG9ZqGdfbRtygM&tbnid=0tPB1L0w8HpfTM:&ved=0CAUQjRw&url=http://www.makoyskie.com/2011_02_01_archive.html&ei=tNhiUselDY-E8gS8xIF4&authuser=1&bvm=bv.55139894,d.eWU&psig=AFQjCNFbGJq6H8wYerkqjcHBjD7lcookYA&ust=1382296041090299

122


• Will competitors be able to easily design around?

Often takes years to get patent

Often market lead time is significant

• Do you have money to enforce patent?

Litigation is prohibitively expensive

Often $1M for very simple patent in Canada; more in U.S.

123

Filing Strategies

Picking where to file:

• Your market

• Your competitor’s market

• Your competitor’s manufacturing facilities

• Enforcement potential

• Prosecution charges (budget)

Deciding how to first file:

• Desire for speedy issuance

• Indication of patentability

• Getting filing date to reserve place in line or due to impending public

disclosure

124

Filing with the PCT

The Patent Cooperation Treaty (PCT)

PCT often called the International Application

Administered by the International Bureau at WIPO

Deemed filing in almost every country in the world BUT: Each filing is not crystallized until national phase entry (i.e. filing

in individual country) and is requested within 30 months

In effect only a 30 month delay in exchange for ~ $6,000

National phase filings very expensive -Translation may be required, etc.

In certain countries you can delay entry into national phase by up to 42 months from first filing

Why delay? Evaluate market and patentability, raise money, license invention, keep options open, etc.

Certain PCT Advantages:

Postpones the Major Costs associated with “Internationalizing” a Patent Application

Typical Costs:

Translations of the patent application (a highly technical document)

into various national languages

Official fees for payment to national/regional Patent Offices (for

example, filing fees, claims fees, etc.)

Fees for the services of local patent agents/attorneys in the

designated states

Cost Issues

For a single invention

PCT not cheaper than direct applications in 15 countries

PCT international phase costs are 5% of total patenting costs

For a portfolio of applications at 30 months

20% of applications are abandoned by not entering national phase

30% of designated countries in original plan are dropped

National phase entry decisions are critical

Other PCT Advantages

Time:

18 months more time

Information:

Patentability information

International search report and written opinion

International preliminary report on patentability (optional)

Other PCT Advantages

Decisions:

Prospects of commercial success

Production costs, market appeal, profitability

Potential partners, licensees, buyers

Competitors

Results:

Better decisions

Better spent money

Comparative Patent Process

The decision of which country to file a patent is contingent on numerous factors

and the objectives of the applicant. Since protections afforded by a patent are

only applicable in the countries that issue the patent, timing must be considered

in addition to the location(s) selected.

Whether registering a patent in the US, UK, EU markets, or through the PCT, it

is important to also consider the scope of protection offered in that venue and

the costs associated with the filing.

All of these considerations, along with sound business judgment, will comprise

the ultimate decision on when and where to file a patent.

Comparative Patent Registration Processes in the US, UK, and EU Markets

MC Law Presentation 2013

Richard Bays JD, MBA, RN, CPHQ

[email protected]


mailto:[email protected]




R Bays - Comparative Patent Registration

Law

Transcript of R Bays - Comparative Patent Registration