Foreign Patent Law

USPTO Begins Patent Prosecution Highway Pilot Program with Russian Patent Office (ROSPATENT)

September 7, 2010

The United States Patent and Trademark Office (USPTO) is participating in a one-year patent prosecution highway pilot program with the Russian Patent Office.  The pilot program will last for one year beginning on September 1, 2010.  Under the Patent Prosecution Highway agreement, an applicant receiving a favorable ruling from one nation’s patent office on at least one claim in an application can request and generally obtain fast-track examination in the other corresponding country.  The Patent Prosecution Highway can be an efficient way in which an applicant can obtain patent protection in additional countries after first receiving a patent in a first country.  Click here for more information on the pilot program.


I Started Selling My Invention; Can I Still Get a Patent?

July 7, 2010

Clients often want to know if they can file a patent application after they started selling, offering for sale, or telling the public about their invention. In most circumstances, the answer is ‘yes'; however, it is not without some caveats.

One drawback is the loss of patent protection in some foreign countries. Therefore, a patent application should be filed in the U.S. before any public disclosure of the invention if the right to file foreign patent applications is to be preserved.

A U.S. patent application can be filed any time within one year of publicly disclosing, publicly using, selling or first offering to sell the invention to another. This “in public use or on sale” in the U.S. results in an inventor losing their right to a patent on their invention and is termed a “statutory bar”.

The “on-sale bar” applies when two conditions are satisfied before the critical date. First, the product must be the subject of a commercial offer for sale. Second, the invention must be ready for patenting.

It seems very little use and very little publicity are required to constitute a “public use.” Typically public use is defined by its natural and intended way. However, private use of one’s own invention is permissible.

There is an exception to the “on-sale” or “public use” bars – an experimental use. The experimental use exception provides that an activity that would place an invention “in public use or on sale” would not trigger the statutory bar if the use or sale was incidental to experimentation.

The preceding discussion is intended for informational purposes only and should not be construed as legal advice. Please contact one of our attorneys to learn more about statutory bar dates or any other aspect of intellectual property law.


Clock Ticking on European Patent Office Divisionals

June 30, 2010

The European Patent Office (“EPO”) has changed its rules for filing Divisional applications. Previously, divisional applications could be filed from any pending European application. Now, the deadline for filing voluntary divisional applications is 24 months from the date of the first official communication by the Examining Division. Note that search reports and search opinions do not trigger the 24 month period because they are issued by the Search Division, not the Examining Division. Also note that a new unity of invention objection establishes a new 24 month period for filing a divisional application. 

For pending applications for which the 24 month period has expired or expires before October 1, 2010, the deadline for filing a divisional application will be extended to October 1, 2010. Please let us know if you would like for us to review your European patent portfolio before the October 1, 2010 deadline. Additionally, if you have a European case of particular importance and would like more information regarding filing a divisional application, please let us know that as well. 

Click here for related information regarding changes to EPO patent practice


Fast-Track Examination

June 30, 2010

A pilot program of the Trilateral Patent Cooperation Treaty (“PCT”)-Patent Prosecution Highway began January 29, 2010, and is planned to run for two years. The program fast-tracks patent examinations in the European Patent Office (“EPO”), the Japan Patent Office (“JPO”) and the United States Patent and Trademark Office (“USPTO”) for PCT applications receiving a positive written opinion of the International Searching Authority or the International Preliminary Examinating Authority from the EPO, JPO or USPTO. In effect, the work product from any of these patent authorities (acting in its PCT capacity) serves as the basis for a petition to make special in the USPTO. 

US Applicants may request participation by filing the appropriate form (Form PTO/ SB/20PCT-EP or Form PTO/SB/20PCT-JP). When filled via EFS-Web, the form is indexed as “Petition to make special under PCT-Patent Pros Hwy”. 

On a related note, Applications may now be prepared in a Common Application Format (CAF) developed by the Trilateral Office. This format streamlines direct filings in the EPO, JPO and USPTO where applications in this format are not subject to additional formality requirements. For US applicants, the CAF goes beyond what is required in the US. However, using the CAF can provide significant savings when nationalizing PCT applications in the EPO and JPO. More information may be found at by clicking here

Please contact us if you have any questions regarding this update to the patent prosecution highway.


Patent Prosecution Highway Update

March 18, 2010

A pilot program of the Trilateral (EPO, JPO and USPTO) PCT-Patent Prosecution Highway began January 29, 2010 and is planned to run for two years.  The program fast-tracks patent examinations in the EPO, JPO and USPTO for PCT applications receiving a positive written opinion of the International Searching Authority or the International Examining Authority from the EPO, JPO, or USPTO.  Such a positive opinion must come in the form of: (i) a written opinion from the ISA; (ii) a written opinion from the IPEA; and/or (iii) an IPER from the IPEA. 

In effect, the work product from any of these patent authorities (acting in its PCT capacity) serves as the basis for a petition to make special in the USPTO.

US Applicants my request participation by filing the appropriate form (Form PTO/ SB/20PCT-EP or Form PTO/SB/20PCT-JP).  When filled via EFS-Web, the form is indexed as “Petition to make special under PCT-Patent Pros Hwy”.

On a related note, Applications may now be prepared in a Common Application Format (CAF) developed by the Trilateral Office.  This format streamlines direct filings in the EPO, JPO and USPTO where applications in this format are not subject to additional formality requirements.  For US applicants, the CAF goes beyond what is required in the US.  However, using the CAF can provide significant savings when nationalizing PCT applications in the EPO and JPO.  More information may be found at http://www.trilateral.net/projects/pct/CAF.html and http://www.wipo.int/pct/en/filing/caf_example.html.


EPO Patent Practice Update

March 12, 2010

The EPO has changed its rules for filing Divisional applications.  Previously, Divisional applications could be filed from any pending European application.  Now, the deadline for filing voluntary divisional applications is 24 months from the date of the first official communication by the Examining Division.  Note that search reports and search opinions do not trigger the 24 month period because they are issued by the Search Division, not the Examination Division.  Also note that a new unity of invention objection establishes a new 24 month period for filing a divisional application.

 For pending applications for which the 24 month period has expired or expires before October 1, 2010, the deadline for filing a Divisional application will be extended to October 1, 2010.  We suggest you review any pending applications well before the October 1, 2010 deadline to allow enough time to prepare and file any desired divisional applications before the deadline. 

 For more information see EPO Rule 36(1).

 Also see EPO Rules


CAFC Upholds Finding of Inequitable Conduct For Failure to Disclose Contradictory Statements Regarding Prior Art

February 11, 2010

The Federal Circuit has recently affirmed a Northern District of California decision finding, among other things, U.S. Patent No. 5,820,551 (the ‘551 patent) unenforceable due to inequitable conduct. Therasense, Inc. v. Becton, Dickinson and Co., Case No. 2009-1511 (Fed. Cir. 2010). During prosecution before the U.S. Patent and Trademark Office (USPTO), the ‘551 patent was rejected on prior art grounds. In order to avoid the rejection, the Applicant submitted a declaration attesting that the cited prior art’s disclosure of an element being “optionally, but preferably” present in the disclosed device would be interpreted by one of ordinary skill as being “required”. The Applicant then failed to disclose to the USPTO statements made by the Applicant to the European Patent Office (EPO) in a related European application. During a proceeding before the EPO, the Applicant argued that the identical prior art language was “unequivocally clear” that the particular element was “optionally utilized” in the disclosed device. The Federal Circuit found that the Applicant violated its duty of disclosure for failing to make the USPTO aware of the contrary position presented to the EPO.

As a result of the Therasense decision, inventors and their patent attorneys should be mindful of the assertions made to the USPTO and patent offices abroad. In the event contrary representations are made to another forum, an Applicant should consider whether the USPTO should be made aware of the statements.

To download a copy of the Therasense decision, please click here.


Thailand Becomes the 142nd PCT Member

October 27, 2009

On September 24, 2009, Thailand (TH) became the 142nd Contracting State of the PCT.  Thailand will become bound by the PCT on December 24, 2009, and all PCT applications filed on or after December 24 will automatically designate Thailand.


Changes to European Patent Office Practice

September 28, 2009

Although it is still several months away, the EPO will dramatically changes its practice effective April 1, 2010 relating to divisional applications and European search reports.  A review of the changes is presented below:

  •   Limitation on Filing Divisional Applications
    In addition to tight substantive limitations on divisional applications, the EPO will temporally limit such applications.  As of the effective date, any divisional application must be filed within 24 months of the Examiner’s first communication or a unity-of-invention communication.  A six-month grace period is provided for filing of divisional applications based on parent applications filed before the effective date.
  •  Requirement to Respond to Search Report
    As of the effective date, a response must be filed with respect to each EP search report.  The deadline for the response is six months from the publication date of the search report, or two months in the case of an extended search report.
     
  • Invitation to Respond to PCT Written Opinion
    The EPO will not conduct a new search in PCT applications for which it performed the international search.  In line with the response requirement for EP search reports, the EPO will issue a notice requiring a response to the PCT Written Opinion after entry into the European regional phase.  The response will be due one month after the EPO’s notification.
     
  • Changes to Amendment Practice
    As of the effective date, no voluntary amendments are permitted except when filed with a response to a written opinion, and further amendments are subject to the examiner’s discretion.  Applicants will be required to provide basis for amendments in the application text, and a one-month deadline will be set by notification if such basis is not provided with the amendments.
     
  • Searching Multiple Independent Claims
    Present EPO practice is to search the first of multiple independent claims, particularly where a lack of unity of invention exists.  The new practice will have the applicant elect which claim to have searched.

 Please contact us if you have any questions regarding the upcoming changes to EPO practice or would like to discuss the effects of these changes in greater detail.


WIPO Joins PDX

September 18, 2009

The USPTO announced on June 30, 2009, that the World Intellectual Property Office (WIPO) became the fourth country to participate in the Priority Document Exchange Program (PDX).  This allows patent applicants to exchange electronic priority documents between the USPTO and WIPO at no cost to them.  In addition, the USPTO may electronically exchange non-participating priority documents between the Japanese Patent Office and the European Patent Office via a corresponding JPO or EPO application file wrapper.                

– USPTO Commerce Alert dated June 30, 2009

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