Navigating Patents- Law and Process to File

Overview of International Intellectual Property Laws Treaties and Use August 18, 2009

Treaties
Multiple parties/nations
Highly negotiated
Compromise
Vague language
Inconsistent between treaties
Culture and value standards

WIPO
Administers intellectual property treaties (~24)
Aids in setting up national laws on IPR
Maintains records of various international agencies – IP search sites
184 members
Geneva headquarters

Paris Convention
7 July 1884
Method to have 1 year priority
Global novelty
Many negotiated amendments with different nations signed to different ones
173 members

PCT
Subset from Paris
24 January 1978
Originally for formalities – paper, margins
141 members

WTO
1 January 1995
153 members
Major task is trade issues among nations
WTO members must treat all members alike – duty, fees for import, security, health
Membership is IMPORTANT for fair trade practices

WTO - 2
Developed Countries – US etc – should be fully in compliance from 1996
Developing Countries – CA? CN? – should be fully in compliance since Jan 2000
Least Developed Countries – 32 [UN 49] – compliance extended until 2016

WTO - 3
Enforcement is provided including loss of membership, penalties (CN?)
Disputes are only between nations
Usually on bans to import or unfair practices – dumping, piracy of IPR, protection of home industry

TRIPs
A part of GATT so that when nations had to sign to join WTO they had to accept TRIPs too
More uniform IPR protection globally for innovators
Cut down on piracy (copyright) and counterfeit (patents/trademarks) and have stiff penalties (WIPO/Paris/PCT has no enforcement)

TRIPs - 2
Basic principles – minimum standards
Adequate protection – years, types
Enforcement by nations must be strong in local systems
Settle disputes between WTO members
Transitional provisions for compliance

TRIPs - 3
Patents
At least 20 years from filing
All technology areas must be patentable unless public order or morality issue (applied to all uniformly)
Include microorganisms, drugs, process includes the product – Budapest Treaty
Geographical Indications (Article 22-24)
Plant varieties – UPOV Convention

US Provisional
Provisional Application
Just as hard to write for priority claim
Needs to be global – have at least 1 claim, inventors
Only 12 months – then another case –US utility or PCT
Low cost $220 LE/$110 SE; >100 sheets $220/ $135 SE
Not examined
Not published
Never issues as a patent

Errors on Provisional
Disclose before filed – public or TM
Not well written
Enablement
Written description
Does not comply with all the US laws or treaties

US Utility
Original US Application
Can issue
Publishes at 18 months from 1 st filed (unless file a request)
Is examined
Cost higher: Filing $330 LE/ $165 SE/ $82 electronic
More costs for claims >3 indep.; >20 claims total, size >100 pgs $270/$135 per 50 pgs; Search $540 LE/ $270 SE; Exam $220 LE/ $110 SE

Requirements
Novelty – absolute, global
Non-obvious – Philips, KSR, Festo Cases
Utility – useful vs. industrial applicability

US Prosecution
Several Office Actions over time, time delays
RCE when needed $840 LE/ $405 SE
Takes effort and knowledge
Claims can cost too
Patent valuable when issued

Maintenance Fees on US Patent
Due after issue of patent
3.5 years = $980 LE/ $490 SE
7.5 years = $2,480 LE/ $1,240 SE
11.5 years = $4,110 LE/ $2,055 SE

Time Line
0 = filed US Provisional
12 months = PCT or US Utility filed
17.5 months = withdraw publication/abandon
18 months = published
30 months = national countries files

PCT - Advantages
File in language of Receiving Office (RO) – many national offices qualify as RO
Must have 1 inventor a citizen of that country or the assignee is incorporated there [IB will always accept the case from a member]
Up to 30 months to decide where to file national (7 Countries is break even on costs; EP = 1 with 34 ctry)
Get all countries at filing

PCT - Concerns
Export license – US if an inventor is US or data generated in US
Security clearance if US government funding (DOD; DOE; etc.)
Costs – if intend less than 7 countries at national stage
Publication at 18 months

PCT – Where to File
Technology driven
Speed to market
Where are the markets?
Obsolesce
Licensing
Value received for the cost incurred

PCT – Content of Case
Specification – problems between countries (US – written description & enablement; EP - solution)
Claims – number, type, multiple dependencies, independent claims, wording (complex – meaning and translations)
How to draft PCT case is a separate course for IP lawyers as it is complex

PCT - Procedure
0 Month - File Priority Case
12 months – file PCT Case + Non-PCT Country Cases
16 months – receive ISR/WO – can informally comment within 2 months; Article 19 - amend only claims [AT, AU, CA, CN, EP, ES, FI, JP, KR, RU, SE, US; IB]

PCT – Procedure - 2
17.5 months – stop publication; revoke priority claim; withdraw all designations but US
18 months – publication
22 months – demand; IPRP; can amend entire application; Article 34
28 months – IPRP; informal comments
30 months – National Phase

National Phase
Some countries give strong weight to a positive IPRP
Examination should be in 54 languages of members (no one examiner does this so many countries re-examine)
Examination standards are different so the art is applied wrong – 35 USC § 102(e)
Maintenance fees are national and exponentially increase with patent life

Now Global Ready?
The world is small, so know how to work in it.

Navigating Patents- Law and Process to File

by Incuba8 on Aug 26, 2009

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