006 International Patent


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006 International Patent

  1. 1. International Patent Prosecution Todd L. Juneau
  2. 2. Patent Prosecution - PCT
  3. 3. Patent Cooperation Treaty  Main reasons for using PCT filings: Defer translation costs Obtain a search & opinion Reserve patent rights in 119 countries while evaluating potential market of inventive subject matter Accelerate and standardize prosecution in some countries Can file in Chinese, English, French, German, Japanese, Russian, Spanish to obtain a search Can claim benefit of a U.S. provisional (21 years) Obtain a publication of the invention
  4. 4. PCT Basics Chapter I – thru 20th month, Chapter II – thru 30/31st month  Demand previously required at 19 th month is no longer required for most countries  Unity of Invention is the standard – special technical feature
  5. 5. PCT Regional Phase  EPO European Patent Office  ARIPO African Regional IP Office  EAPO Eurasian Patent Office  OAPI PO Oceania Asia Pacific Patent Office
  6. 6. Patent Prosecution – EPO (year 2000) 2600 examiners, 100 Board of Appeal members 142,000 applications in 2000; 53,000 searches; 45,000 examinations; 2,300 oppositions; and 1,200 appeals  www.european-patent-office.org
  7. 7. Patent Prosecution - Europe Novelty, Inventive Step, Clarity, Industrial Use First to File Registration only, need to perfect in each member country 18 month publication Request examination within 6 months of publication Opposition at EPO Validity, Enforcement locally AT, BE, BG, CY, CZ, DE, DK, EE, ES, FI, FR, GR, HU, IE, IT, LI, LU, MC, NE, PT, RO, SK, SI, SE, CH, TR, UK Extensive search capabilities (SE, DK)
  8. 8. EPO grant Must request exam within 6 months after EPO search report published (extendible by 1 month)  Usually receive multiple office actions  Receive Rule 51(4) Request for Approval of Text; answer due within 4 months (extendible by 2 months) Upon receipt of approved text, 3 months to pay grant fees and provide translation of priority documents if necessary  EP patent effective upon publication in Eur.Pat. Bulletin  Opposition period for 9 months thereafter
  9. 9. Perfecting an EP grant into the contracting states  Translation of claims required within 3 months: Austria, Belgium, Denmark, France, Germany, Greece, Italy, Netherlands, Portugal, Spain, Sweden, Switz./Lch, United Kingdom  Translation of claims within 6 months: Ireland
  10. 10. EPO and the European Market Austria, Belgium, Bulgaria, Cyprus, Czech, Switzerland, Germany, Denmark, Estonia, Spain, Finland, France, The United Kingdom, Greece, Hungary, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, The Netherlands, Portugal, Romania, Slovenia, Slovakia, Sweden, and Turkey. Extension States: Albania, Latvia, Lithuania, Macedonia  Market Size: about 485 million people.
  11. 11. Patent Prosecution - Japan  First to file, absolute novelty  Publication at 18 months Examination must be requested within 3 years after filing (Y84,000 plus Y2000 per claim)  Patent term 20 years  Utility Model term 6 years  Opposition within 6 months after grant
  12. 12. Patent Prosecution - Australia  First to file, absolute novelty  Publication at 18 months  Examination - must be requested within 6 months after receiving notice to do so, usually within 1 or 2 years after filing  Standard Patents - Examined, opposition available, 20 year term, no online application  Innovation Patents - Not examined, less costly, opposable, 8 year term, can apply online, unenforceable in Court until examined  Opposition within 3 mos. of grant
  13. 13. Patent Prosecution - Brazil  18 month publication  Request examination within 36 months of earliest filing date Application examined for form, substance, and novelty  Third parties can file observations between publication and conclusion of examination  Limited search Room
  14. 14. Patent Prosecution - Canada  Novelty, unobviousness; limited exam  First to File Patent application open to public inspection 18 months from the earliest filing date Request examination within 5 years of earliest filing date Before a patent is granted a third party can file an opposition to the patent  Web-site search possible
  15. 15. Patent Prosecution - Mexico  18 month publication No request for examination is required; the application is examined after publication  Patent Office may accept examinations performed by foreign patent offices, or may request technical assistance from other national institutes  No public search capability
  16. 16. Patent Renewal FeesAnnuity or maintenance fees must be paid to avoid patent abandonment: U.S. maintenance fees due 4, 8, and 12 years after patent grant Europe annuity fees due every year starting 3 years after filing
  17. 17. Working RequirementsA patentee is sometimes required to “work” the invention once it is patentedIf the invention is not worked within a specified time period, the patentee must compulsory license the patent at a specified government royaltyA patent may not be used as the basis for a lawsuit if it is not worked
  18. 18. Triggers to Compulsory Licenses Germany-if it is “in the public interest”; very rare UK, Italy, Belgium-lack of sufficient use of the patent France, Spain, Austria-both in the public interest and lack of sufficient use U.S.-no compulsory license In general, not greatly used
  19. 19. UK filing vs. U.S. provisional  UK filing Inexpensive Can obtain a search within 6 months Can obtain a refund of amounts paid against the EPO filing  U.S. provisional Inexpensive Effective date under 102(e) both against prior art and against other applicants 21 year term
  20. 20. Thank Youtodd@juneaupartners.com
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