Overseas protection & patent search


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Start from overseas patent protection including
PCT (patent cooperation treaty), PPH (patent prosecution highway), CAF/CCD, new route pilot (work-sharing), tripway pilot (search sharing) …
How to audit work of patent agent/lawyer
Keep document & bill
Pass a Bar exam to show your ability

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Overseas protection & patent search

  1. 1. From International Protection to Patentability search - 2 Chen JingFung (Grace) @csie.ntut.edu.tw 2012/05/15Chapter 6, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825USPTO.gov – International Protection
  2. 2. outline• Intellectual Property Offices work on International Protection – improving work-sharing & international cooperation• How to enhance your patent search – Find or hire another one Grace@iii.org.tw & cise.ntut 2
  3. 3. International Protection• Provide information & agreements on improving work-sharing & international cooperation among various Intellectual Property Offices – Patent cooperation treaty (international) – Patent prosecution highway (fast track examination) – Common application format & common citation document – New route (work-sharing pilot btw USPTO & JPO) – Triway (Search sharing pilot btw EPO, JPO & USPTO) – Share (work-sharing pilot btw USPTO & KIPO) Grace@iii.org.tw & cise.ntut 3
  4. 4. Patent Cooperation Treaty (PCT)• PCT legal Administration – Branch 1: PCT special programs Responsible to educate & assist the patent community • Provide training courses <- help patent application • Provide instruction to patent examiners <- search & examination • Provide direct assistance regarding PCT application – Branch 2: PCT legal affairs Resolve legal issues in PCT international application & in US national stage application (35 USC 371) • Interpret and/or suggests changes to patent laws & rules & study their effect on PCT • Deal with other aspects of – international patent law (as harmonization), – Patent Law Treaty – Electronic filing 4 Grace@iii.org.tw & cise.ntut
  5. 5. Patent examination jam Pendency numbers (2010)Average exam (ref: WIPO 2009 & npf.gov.tw 2011) SIPO (China’s StateIntellectual Property 24.2 months Office) KIPO (Korean) 24.6 months 0.47 millions (2008) USPTO 34.9 months 1.25 millions (2008) JPO (Japan) 35.3 months 2.37 millions (2008) EPO (European) 40.6 months 0.58 millions (2008) 44 thousands (2004) TIPO (Taiwan) 41.04 months 153 thousands (2010) Grace@iii.org.tw & cise.ntut 5
  6. 6. Patent Prosecution Highway (PPH) Pair-PPH • PPH speeds up the examination process – Participate countries by allowing examiners to re- sue search & examination results • a streamline patent processing Office of First > 1 claim Office of SecondApplicant’s Filing (OFF) (patentable) Filing (OSF) file – Ex. The OSF can use OFF’s work products » All claims in the OSF application must sufficiently correspond to the allowable claims (/search results) in OFF 2010/5/25 USPTO has eliminated the fee for the petition to make special under PPH program 6 Grace@iii.org.tw & cise.ntut
  7. 7. PPH benefits Greater Efficiency 90% PPH <50% cases are > non-PPH allowed cases Accelerated examination Decreased costs of (2~3 months) prosecutionPPH request (application) (PPH vs. non-PPH)-> pre-exam processing average of PPH save-> grant both applicants & offices time & expense Reduced pendency No Petition Fee PPH can use the applications USPTO eliminated the filed based on another office’s petition fee in 2010/5 work product Grace@iii.org.tw & cise.ntut 7
  8. 8. PCT-PPH• PPH program -> permit PPH eligibility for national- and regional-phase under the basis positive results in PCT international phase (PCT-PPH) Participating offices in PCT-PPH Trilateral Offices KIPO APO ROSPATENT SPTO • USPTO (Korean (Austrian (Russia) (Spanish • JPO (Japan) Intellectual Patent Patent & • EPO (European) Property Office) Trademark office) office) 2011/9/1 TIPO join USPTO’s PPH program (ref: npf.org.tw 2011) <- the speed of TW patent exam 2012/3/1 TW -SUPA (TIPO-Support Using the PPH Agreement) Ref: TIPO 2012 a corresponding a national application filed from national phase entry the fast-track examination International Authority (USPTO) 8 Grace@iii.org.tw & cise.ntut
  9. 9. TW –SUPA (TIPO-Support Using the PPH Agreement)• TW-SUPA vs. PPH Ref: TIPO.gov.tw 2012 Grace@iii.org.tw & cise.ntut 9
  10. 10. Patent DB - Machine translation EPO & Google signed a agreement (completed by the end of 2014) to collaborate on machine translation into European (28), Slavonic (Russian) & Asian (Chinese, Japanese & Korean) languages • Provide a free, real-time translation of millions of (ref: EPO 2011) patents granted • speed up R+D efforts with searches in their own language KIPO + WIPO - the joint development of EPO & SIPO sign agreement on “E-learning content” (2004-2007) Chinese-English machine • IP PANORAMA relies on the design translation for patents (2011) strategy - “Storytelling” with a • Especially SME stand to practical story regarding intellectual benefit from this improved property access to information on • Focus on the situation of SMEs new technologies • 2005-2006 English version, 2008 (ref: EPO 2011) Mongolia, Portugal, Poland, Estonia, 2009 patent applications  Morrison Francis & Thai, 2009 Arabic (world economic storm) version, 2010 Spanish & RussianSME (small and medium-sized enterprises) 10 Grace@iii.org.tw & cise.ntut
  11. 11. Common format & document• Trilateral Common application format (2007 Trilateral conference) – Simplified and streamlined patent application filing requirements – Example format (XML e-filing: “tags”) • Description – Title of invention, Technical field, Background art, Summary of invention (Technical problem, solution to problem, advantageous effects of invention), Brief description of drawings (figs), Description of embodiments (examples), Industrial applicability, Reference signs list, Reference to deposited biological material, Sequence listing free text, Citation list (patent literature, non patent literature) • Claims • Abstract • Drawings • Sequence listing• Triateral Common citation document (CCD) Category Patent no. Kind code Application name Pub. date ClaimsRelevantpassages 11 Grace@iii.org.tw & cise.ntut
  12. 12. New route pilot project btw JPO & USPTO• Start this new rout pilot project on 2008/1/28• Objective – Paris-Route: a patent application filed with the OFF will be regarded as being filed on the same date as the filing date in the OSF • Speed up OSF to get the result of the pilot in a limited time period – providing for the mutual utilization of search/examination results on a full scale • an applicant sufficient time (30 months from the filing (priority) date) Grace@iii.org.tw & cise.ntut 12
  13. 13. Triway Pilot Among USPTO, EPO, & JPO• Triway Pilot can eliminate certain timing issues • A search sharing to leverage the searching expertise of each of the Trilateral Offices (EPO, JPO, and USPTO) to the benefits of both applicants and the Offices • Worksharing effects (as PPH program) can improve the resulting quality of any patents issued on the corresponding applications by each of the Trilateral Offices – Important dates • The Trilateral Offices agreed (2007/11) -> A notice regarding the requirements/procedures on USPTO website (2008/7/14) -> The start date (2008/7/28) Grace@iii.org.tw & cise.ntut 13
  14. 14. work-sharing pilot btw USPTO & KIPO• 2008~2009 KIPO + USPTO want to increase bilateral cooperation between the Offices – the Strategic Handling of Applications for Rapid Examination (SHARE) pilot (as PPH program) – Scope • their examination of the corresponding cross-filed application • The technical areas selected were Semiconductor (IPClass H01L) and Fuel Cell (IPClass H01M). 344 applications were included in the pilot. Pos. neutral Neg. 14 Grace@iii.org.tw & cise.ntut
  15. 15. Intellectual Property Overseas• Toolkits only can provide an overview http://www.uspto.gov/ip/iprtoolkits.jsp• Some basic, often low-cost, steps small companies should consider include – Working with legal counsel to • develop an overall IPR protection strategy – Developing detailed IPR language for • licensing and subcontracting contracts – Conducting due diligence of potential foreign partners • (The U.S. Commercial Service can help, see Export.gov) – Recording their U.S.-registered trademarks and copyrights with Customs and Border Protection; and – Securing and registering patents, trademarks, and copyrights in key foreign markets, • including defensively in countries where IPR violations are common. 15 Grace@iii.org.tw & cise.ntut
  16. 16. HOW TO IMPROVE YOURPATENT SEARCH Grace@iii.org.tw & cise.ntut 16
  17. 17. Why your search may not be perfect• Some prior-art reference can be missing from database – drop out “class & subclass” – Without being published or have been previously invented• Most patent computer searches do not contain – foreign, non-patent, or other references (as theses, service manuals, magazines, textbooks …)• Very recently issued may not in the computer’s database <- new!!• Pick up “terms” only from your view – People may select other terms to describe the same thing 17 Grace@iii.org.tw & cise.ntut
  18. 18. Patent Agents & Patent Attorneys Patent Agents Patent Attorneys • Generally an undergraduate • US: Get certifications by the PTO degree in engineering or & the attorney-licensing authorityWork science (such as the state bar , supremeability • May get a license by the PTO court ..) of at least one state (or TIPA at TW) • TW: pass the national exam • Express an opinion onClarifying patentability Handle the patent application,the issue • Help to find out the issue copyrights and trademark who makeProsecute X Oin court 18 Grace@iii.org.tw & cise.ntut
  19. 19. How to use a lawyer or Agent In advance • List the cost of every task • Send the bill state by time/fixed rateLawyer/ Agent Keep saving in file Generate documents Send document Official (letter/official bills letters papers paper) for you Understand Ask practitioner to explain it practitioner’s propose & Be entitled know what & why to do take the course of action Pay $$ evaluation The practitioner isn’t acting Change competently, ethically or honestly …AnotherPatent Agent 19 Grace@iii.org.tw & cise.ntut
  20. 20. Find “discount” patent attorneys & agents• Generally, hiring an lawyer in you locality is very costly – That attorneys will travel or hire another one to Alexandria near DC – PTO (local) website at https://oedci.uspto.gov/OEDCI/Geo Region.jsp (A&ARTP) Active patent professionals are either in private practice ( a law firm or solo practice) • Charge about ($100 ~ $600)/hour Just as good or better than those of the full-priced law Many corporate-employed or semiretired patent firm lawyers professionals or retired (but still licensed) • Less payment than their downtown counterparts • Have less overhead (rent, books, secretaries) 20 Grace@iii.org.tw & cise.ntut
  21. 21. Patent Bar exam information• Participate a Bar exam to verify your ability – USPTO bar exam info http://www.uspto.gov/ip/boards/oed/exam/index .jsp – Taiwan IP certification http://www.tipa.org.tw/certify_1/ Grace@iii.org.tw & cise.ntut 21
  22. 22. Summary• Start from overseas patent protection including – PCT (patent cooperation treaty), PPH (patent prosecution highway), CAF/CCD, new route pilot (work-sharing), tripway pilot (search sharing) …• How to audit work of patent agent/lawyer – Keep document & bill• Pass a Bar exam to show your ability Grace@iii.org.tw & cise.ntut 22
  23. 23. Reference• David Pressman, chapter 6, “Patent It Yourself: Your Step-by-Step Guide” to Filing at the U.S. Patent Office, 2011, 15th edition, ISBN- 10: 1413313825 – Reference by “Previous Course Slide” record set: introduce invention, evaluate invention, WM2Patent, Patent Requirement (novelty & nonobviousness), Patent search (classification search)• TW patent online search – http://twpat.tipo.gov.tw/• Blog: http://fungsiong.blogspot.com/ – Introduce hybrid TV/Smart TV (hbbTV) including widget design, Android technology (API), system, ecosystem, framework, service, application…, – Agile for progressing: http://fungsiong.blogspot.com/search/label/Agile • About how to teamwork – Some programming info. as Apache wookie, refactoring tech, CE- HTML, a solution about removing a backdoor “Trojan” & surveillance paper 23 Grace@iii.org.tw & cise.ntut
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