News & Updates

The U.S. Supreme Court has granted certiorari in the Bilski case, a challenge to the decision handed down by the Federal Circuit last October excluding pure business methods from patent protection. Additionally, the Bilski decision set some roadblocks in the way for obtaining software patents. In its decision, the Federal Circuit held that in order to be patent eligible under 35 U.S.C. § 101, a claimed process must either: (1) be tied to a particular machine or apparatus, or (2) transform a particular article into a different state or thing. The Board of Patent Appeals and Interferences at the U.S. Patent Office has handed down a few decisions in the wake of Bilski, however potential patentees are still left with a great deal of uncertainty in the future of business method and software patents. The U.S. Supreme Court’s ruling in this case will be an important and significant decision affecting patentable subject matter under § 101.

Applicants of international PCT patent applications filed on or after January 1, 2009, can now view the file contents of their published applications online. Over the next couple of months, the service will begin including applications for which early publication has been requested. In addition, you may obtain an International Application Status Report containing the latest bibliographic data; important status dates; information about certain withdrawals; the title and abstract; and information on the international search report, preliminary examination report, and supplementary search report. The Status Report is intended for Applicants, designated/elected Offices, and third parties and is generated upon request. To view this information, access the _PATENTSCOPE_® search service at www.wipo.int/pctdb.

Germany has now agreed to participate in the Patent Prosecution Highway Program (PPH). Under the PPH, an applicant receiving a favorable ruling from one nation may request that the corresponding application filed with the other nation advance out of turn for examination. Other patent offices already participating in the PPH with the U.S. include those in Canada, Europe, Japan, Korea, UK, Australia, Denmark and Finland.

There are some lesser known alternatives for protecting and enforcing patents in China that can save patent owners both time and money. For example, a utility model patent application can be a quicker and less expensive alternative for obtaining patent protection. The utility model application has no substantive examination and allows an unlimited number of claims (until October 1, 2009, when the limit will be 10 claims) directed only to a product (no method claims). The utility model patent is granted in 9-14 months and is effective for 10 years. Only when a challenge is made to the utility model patent is proof of validity required. A popular strategy is to file a utility model application in China and a PCT application at the same time; then, upon entry of the PCT into the Chinese national stage, the utility model is abandoned in favor of the utility patent application.

The Hague System allows companies to seek international protection for industrial designs inexpensively. For example, an Applicant could save in excess of $5,800 for a design patent application filed in the European Community, Switzerland, and Turkey. However, there are a number of limitations. Currently, the Hague Agreement covers 56 member countries (contracting parties), and of greatest interest are the European Union countries. At this time, the Hague Agreement does not cover Australia, Canada, China, Japan, Mexico, or the United States.

Similar to the Madrid Protocol international registration for trademarks, the Hague Agreement offers protection for industrial designs in a number of contracting states with a single application filed with the World Intellectual Property Organization (WIPO). While the United States has signed the Agreement, it has not yet passed implementing legislation. However, a U.S. party meeting one of the following criteria may still be able to file an application if the party: (a) is a national of a Contracting Party; (b) is domiciled in a Contracting Party; or (c) has an industrial or commercial establishment in a Contracting Party.

The application can be filed first at the international level without a prior national application or registration and may include up to 100 designs, all in the same class. It is possible to defer publication for 12 to 30 months from the filing date or the priority date. Substantive examination is handled by each Contracting Party. International registrations are effective for 5 years, with 5-year renewals to the total term allowed by each member country. Renewals are made in one place and allow for non-renewal of individual embodiments in multiple countries in the same transaction if desired.

A cost comparison of official filing fees: Filing a design application having 4 embodiments (one in color) directly in Europe, Switzerland and Turkey would be $6,928 for the basic filing and publication fees, not including attorney fees. Filing the same application under the Hague Agreement would be $1,102 for the basic filing and publication fees, a savings of over $5,800. In addition, by filing internationally, there would be no additional foreign associate fees for each country.

Please contact us if you would like additional information relating to the Hague Agreement concerning the international registration of industrial designs.

Unfortunately, it is not uncommon for IP owners to receive phony invoices from third-party organizations. These organizations often monitor notices of acceptance of patents and trademarks in various countries and transmit official-looking, unsolicited bills to IP owners on the hope and expectation that some percentage will get processed for payment without proper verification. In an effort to combat this practice, a foreign law firm used by Woodard, Emhardt, Moriarty, McNett & Henry LLP has prepared a list of companies known or expected to send out these sham bills. Please contact us if you receive an invoice from a third-party organization and are questioning its legitimacy. According to the list received from our foreign associate firm, the suspect companies might include:

* American Trademark Agency (USA)
* Central Data Register of International Patents (Germany)
* Central Patent & Trademark Database (CPTD)(Hong Kong)
* Commercial Centre for Industry and Trade (Switzerland)
* Company of Economic Publications Ltd (Austria)
* Company for Publications and Information Anstalt (CPI)(Liechtenstein)
* Edition The Marks KFT (Hungary)
* European Institute for Economy and Commerce (EIEC)(Belgium)
* Federated Institute for Patent & Trademark Registry (FIPTR)(US)
* Globus Edition SL (Spain)
* INFOCOM (Switzerland)
* Institut of Commerce for Industry, Trade, Commerce (Switzerland)
* International Bureau for Intellectual Property (IBIP)(USA)
* International Data Medium Anstalt (IDM) (Liechtenstein)
* International Organization for Intellectual Property (Switzerland)
* International Organization for Patent & Trademark Service (USA)
* IPTR International Patent and Trademark Register (Germany)
* IT&T AG (Switzerland)
* Register of International Patents – Office Data Management (Italy)
* Register of International Patent Bulletin (Germany)
* Société pour Publications et Information (SARL)(Austria)
* TM-Collection Kft (Hungary)
* Trademark Renewal Service (TRS)(USA)
* United States Trademark Protection Agency (USA)
* ZDR – Datenregister GmbH (Germany)