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Transcript LAIPLA-Intl-Prosecut..

Update on International
Utility and Design Patents
Las Vegas
• Vanessa Owen (Seyfarth Shaw LLP)
– “Trends & Developments in Foreign Patent Filing
• Alex Zhang (King & Wood Mallesons)
– “Patent Filing in China, What Should You Know?”
• Alexander Schlee (Schlee IP)
– “The EU Patent, the Unified Patent Court and its
implications for the EPC Patent”
• Scott Hansen (Fulwider Patton LLP)
– “Cutting Costs: A Quick Look at the Hague System
for Design Patents”
Trends &
Developments in
Foreign Patent Filing
Vanessa Owen, Esq.
Seyfarth Shaw LLP
Los Angeles
2013 U.S. Global Patent & IP Trends
Survey of 125 US companies and universities
- Conducted by Inovia: foreign filing company
- Annual survey for past 4 years, identify trends
- Survey conducted January 2013
Foreign Filing Patterns
• Foreign filing becoming more important
• 50% of respondents file more ½ of their patent
applications overseas
• Up 20% since 2011
• 70% file in 4 or more countries (up 11% since 2012)
PCT v. Paris Convention (Direct) Filing
• 99% of respondents used PCT for some or all of
their foreign filings in 2012
• When foreign filing in 4 or 5 countries or more,
PCT makes financial sense
• BUT filing in just 1-3 foreign countries, direct filing
under Paris Convention may be more cost
• Also, for non-PCT countries (e.g. Taiwan) – PCT
isn’t an option
PCT v. Paris Convention (Cont.)
• PCT International Preliminary
Examination Report assists in
deciding whether/where to file
national stage applications
• PCT provides delay to make better
informed decisions at a later time
Specific Country/Regional Trends
• Some companies cut back on filing in European
Patent Office
• High cost
• Value of patents should justify the high cost of current EPO
• Filings in China continue to increase
• Less concern about enforceability
• South America, India getting more attention
• Big potential markets
• Patent systems still developing
Most Important Overseas Countries
(for US Patent Filers)
• Respondents ranked foreign countries most
important for 10 year patent strategy
• Europe
• China
• Japan
• India
• Brazil
• South Korea
Big Issue: Cost Containment
• Large-scale foreign filing programs are expensive
• Measures to Cut Costs
• Majority (57%) of respondents bringing some FF steps in-house
• Negotiating with foreign counsel to lower what they charge
• Using non-law firm FF providers
• Some companies specialize in foreign filings, not law firms
• Filing in fewer countries
• Using lower-cost translation services
10 |
Cost Containment (Cont.)
• Reduce # of claims in expensive foreign countries (EPO,
Japan, etc.)
• Consolidate claims to create claims having multiple
• Delete claims that are not likely to be allowed
• Amend claims to track already-allowed claims in another
country (e.g. claims allowed in the US case)
• Odds of allowance increase when claims have already
been allowed in a major patent country
11 |
Miscellaneous Developments
• Keep up w/ changes to patent law in important countries
• Example: Australia
• “Raising The Bar” Act of 2012
• Makes Australian patent law more like UK patent law
• Intend to use UK patent case law as authority on some
• Expanded definition of prior art –
• not just what is known in Australia, but what is known
elsewhere in the world
• Enablement requirement added
• Written description must be more thorough
• No more post-filing amendments to Spec that add “new
12 |
Miscellaneous: Saudi Arabia
• Saudi Arabia has joined PCT
• Takes effect August 3, 2013
• Country Code will be “SA”
13 |
• Technological Field with Most PCT Applications in 2012
• Electronic Machinery
• Just beats out Digital Communications for #1
• Companies Filing Largest Number of PCT Apps in 2012
• ZTE Corporation (China) – 3,906 published applications
• Panasonic (Japan) – 2,951 published applications
• PCT National Phase entries in 2011: 507,400
• 146 Member States
• Applications filed in 120 of the member states in 2012
• For More Fun Facts, see the PCT Yearly Review from WIPO
14 |
Contact Information
Vanessa J. Owen, Esq.
Seyfarth Shaw LLP
One Century Plaza, Suite 3500
2029 Century Park East
Los Angeles, CA 90067-3021
Phone: (310) 277-7200
Email: [email protected]
15 |
Patent Filing in China, What Should You Know?
June 8, 2013
Prepared for LAIPLA Spring Seminar |
Type of Patents and Terms
 Invention
a product, a process or improvement thereof
- 20 years
 Utility Model: shape, structure, or their combination of a product
- 10 years
 Design:
a new design of the shape, the pattern or their combination
which creates an aesthetic feeling
- 10 years |
Filing an Application in China
 First Filing in China
 Filing an Application under Paris Convention
12 months from the priority date
No grace period
 Entering the Chinese National Stage of a PCT Application
30 months from the priority date
Another 2 months grace period |
Foreign Filing License
 Any entity or individual may file an application in a foreign country for an
invention or utility model completed in China, subject to a prior
secrecy review by SIPO
 Violation: loss of patent rights in China
 Ways to obtain a foreign filing license |
Consider Utility Model Patents
 Only Formality review, no substantive examination
 Normally granted within one year
 Same protection as that of an invention patent
 Only product can get a patent protection for Utility Model
 The product shall be objects manufactured by industrial methods
 having definite shape and structure
No method claim allowed |
Same Invention Double Filing
 Applying patent for utility model and patent for invention
 Indicating double filing when submitting applications
 Granting utility model patent within one year from filing date
 Granting patent for invention
 Abandoning utility model patent |
Duty of Information Disclosure
The Examiner can ask for any search reports and examination results from a
foreign patent office, such as USPTO and EPO
The applicant has no duty to disclose all known prior art references that
would be material to the patent application
 Inform your Chinese applicant and/or attorney you have the duty to
disclose information material to patentability in the U.S. |
Formality Examination and Substantive Examination
Formality Examination
Checking the formality-related issues, e.g. missing of drawings, assignment, etc.
Substantive Examination
 Within 3 years from the filing date or priority date
 A request and possible amendments (if any)
 Voluntary amendments:
when requesting substantive examination
within 3 months after receiving a Notification of entry of substantive examination |
Overcoming Rejections
 No novelty
 Lack of inventive step
 Amendment exceeds the original disclosure scope
 The textual content of the original written description and claims
 Any content that can be directly and unambiguously determined from the original
 Opinion of Supreme Court on Seiko v. PRB |
Reasonable Scope of Claim
A narrow claim can be easily designed around
A broad claim may be invalid or unpatentable over the prior art
It’s not allowed to introduce elements from the spec to a claim during an
invalidation proceeding
Independent claims with reasonable protection scope
Dependent claims correspond to preferred embodiments or having meaningful
features |
Amendment and translation
 Amendment during prosecution
 is not allowed to go beyond the origin discourse
 Translation
 A precise Chinese translation of the documents is of most importance
 Can’t correct the translation error based on the original English version
 Post-grant Amendment
 Is generally not allowed
 Corrections of clerical errors such as a typo is okay
 Only deletion of claims is allowed in an invalidation proceeding |
Divisional Application
 Time:
 Any time before the deadline of the Notice of Allowance
 Can’t be based on a divisional application
 No Continuation
 No Continuation in Part
 No Substitute
 No CPA
 No Reissue |
Post- Grant Patent Invalidation
 Anyone, including patent owner, may request invalidation
 No need to disclose the identity of the true party in interest
 Grounds for filing an invalidation request
novelty, inventiveness, and practical applicability
enablement and written description
amendments that go beyond the scope of the patent application’s original disclosure
whether the subject matter is patentable;
formal matters, etc
 Much broader than those available in the United States
A substantial new question of patentability based on any patent or printed publications
qualifying as prior art |
Thank You
Alex Zhang
[email protected] | Tel: 650 858 1285 |
The EU Patent, the Unified Patent Court
and its implications for the EPC Patent
(European Patent Convention)
Alexander R. Schlee
E-mail: [email protected]
Schlee IP International, P.C.
Viering, Jentschura & Partner “VJP”
Manhattan Beach, CA
Tel: 310 545 9851
The Unitary Patent Package
- Regulation on the European patent with
unitary effect (Unitary Patent, UP Regulation)
(In the following named EU Patent)
- Agreement on a Unified Patent Court for
litigation on infringements and revocation of
European and unitary patents (UPCt
The ultimate goal of the EU Patent
The goal is to eventually cover the entire European
Union (EU) (Currently 27 countries) by one single
patent that is centrally
granted for the entire EU
invalidated for the entire EU
enforced for the entire EU
24 EU countries to ratify the entire
Unitary Patent Package
Austria, Belgium, Bulgaria, Czech Republic,
Cyprus, Denmark, Estonia, Finland, France,
Germany, Greece, Hungary, Ireland, Latvia,
Lithuania, Luxembourg, Malta, Netherlands,
Portugal, Romania, Slovakia, Slovenia,
Sweden, UK
3 EU member countries that have currently
opted not to ratify the Unitary Patent
Package in part or in its entirety
Italy (signed UPCt Agreement only,
not UP regulation)
Spain (strongly adverse if Spanish
not official language)
Poland (signed UP regulation but
wait-and-see approach on UPCt)
11 Non-EU countries that are
members to the EPC
These countries cannot join the Unitary Patent
unless joining the EU:
Switzerland, Norway, Albania, Croatia, The
Former Yugoslav Republic of Macedonia,
Iceland, Lichtenstein, Monaco, San Marino,
Serbia, Turkey
Map Unitary Patent Countries
Hurdles to clear for achieving the ultimate
goal of a truly unitary patent system (1)
Italy and Spain have currently not joined the UP
Regulation and it is not certain whether they will and
if so when. For now, this leaves just 25 EU countries.
The agreement will enter into force when 13 of the
remaining 25 countries have ratified the Agreement
(Including France, Germany and the U.K.), but at the
earliest on January 1, 2014. Some speculations say
that ratification by 13 countries will more likely be
completed by end of 2014 or early 2015.
Hurdles to clear for achieving the ultimate
goal of a truly unitary patent system (2)
At the time the Agreement will enter into force, it
seems unlikely that all 25 countries will have ratified,
so the Unitary Patent might not be all that unitary for
quite some time in the future.
The Unified Patent Court has not been established
yet. Further, for EPC Patents a transitional period of
7 years extendable by another 7 years applies,
allowing transitionally to opt out of the Unified Court
Procedure of the EU Patent
The prosecution of an EU Patent is identical to an
EPC patent including the post-grant opposition and
is hosted by the European Patent Office (EPO).
Opting for a unitary EU Patent is simply an option
that can be exercised within 1 month from the issue
Opting for an EU Patent does not preclude validation
of the patent in non-EU countries.
Language of the EU Patent
For the EU patent, the same choice between
the same 3 official languages English, French,
German as for EPC patents applies.
Pursuant to EPC procedure, the allowed claims
need to be translated into the 2 remaining EPO
languages for the patent to issue.
Eventually no further translations will be
required, but for some transitional provisions
Transitional translation
requirements for the EU Patent
Until the EPO has developed a high-quality
machine translation tool for machine translating
into all EU languages:
- Translation into English if filed in German or
French required.
- If filed in English, translation into any EU
member country language required.
Renewal Fees
Only 1 renewal fee needs to be paid for an EU
Patent, but will be probably set to an amount
that is the equivalent amount of average
renewal fees to be paid for 3-4 countries.
Basic structure of the Unified
Court System (First Instance)
Central Division: Seat in Paris (default for all classes
if not handled by London or Munich sections),
sections in London (Human Necessities, Chemistry
and Metallurgy) and Munich (Mechanical
Engineering, Lighting, Heating, Weapons, Blasting)
Local Divisions (Up to four in countries having over
100 cases a year)
Regional Divisions (For groups of countries with
fewer than 100 cases per year)
Jurisdiction of Court of First
Local/Regional Division where alleged infringement has
Local/Regional Division where the Defendant is domiciled
or established
Central Division if no Local/Regional Division has
If infringement in 3 or more Local/Regional Division
territories and the Defendant has no residency or place of
business in the EU, the Plaintiff has the choice of Central
Possible referral by Local/Regional Division
to Central Division
- Upon invalidity counter-claim by the Defendant:
the Local/Regional Divisions can opt to refer the
entire case or the invalidity portion only (bifurcate)
to the Central Division.
- The Defendant can demand referral to the
Central Division if the law suit is pending before the
Regional Division but infringement has occurred in
the territories of three or more Local/Regional
Jurisdiction for EPC Patents under
the Unified Court system
For UPCt member countries, EPC patents (upcoming
and existing) can be litigated either in the Unified Court
system or in National Courts for a transitional period of
7 years that may be extended by another 7 years.
Opting out of the Unified Court System is possible up to
1 month prior to the expiration of the transitional period
for the remainder of the patent term (opting back in
possible later)
Appellate Court
A central Appellate Court has jurisdiction for all
decisions from the Courts of First Instance.
This central Appellate Court will be located in
European Court of Justice (ECJ)
This court has jurisdiction over legal matters
involving European Union Law and its equal
application across all EU member states. The
Courts of First Instance and the Appellate
Court can refer cases of legal importance
under the EU contract to the ECJ.
Competence of UPC for UP and EP
Infringement proceedings
Declaratory judgment Actions of non-infringement
Preliminary injunctions based on patents
Invalidity proceedings
Prior use rights claims
Compulsory license actions
Competence for both UPs and EPs that are validated in the
participating Member States, but opting out of UPC System
for at least 7 years possible.
Practical considerations
Nothing is happening very soon and nothing for all EU
countries at once since the ratification process first needs to be
completed. At least 13 countries need to ratify and the Unitary
Patent does not come into force before January 1, 2014, but
2015 is more likely.
Neither the procedure, nor the Authority EPO will change.
Unitary Patent will just be an option after the European
Patent/Unitary Patent issues, and when it comes to this point
this option can be easily exercised without requiring further
Eventually, patents will cover all of the EU and will become
more affordable and centrally enforceable.
The EU Patent, the Unified Patent Court
and its implications for the EPC Patent
(European Patent Convention)
Alexander R. Schlee
E-mail: [email protected]
Schlee IP International, P.C.
Viering, Jentschura & Partner “VJP”
Manhattan Beach, CA
Tel: 310 545 9851
Cutting Costs:
A Quick Look at the Hague System
for Design Patents
Scott R. Hansen, Esq.
Fulwider Patton LLP
Presented to:
Las Vegas
June 8, 2013
Hague System Comes to the US
December 2012: President signed
Patent Law Treaties Implementation
Act of 2012 into law
Hague (or “Den Haag”) Cometh
Centralized acquisition, maintenance & management of int’l
design rights
File a single English-language international
application in the USPTO or WIPO
Designate one or more “contracting” countries when filing
If filed in US, USPTO forwards application to WIPO
WIPO examines for formalities, publishes application, etc
WIPO forwards to the designated countries for substantive
The Hague (Illustrated)
Den Haag for Designs (cont.)
Applicant can monitor all
applications/registrations online
E.g. like Madrid Protocol trademark filings
US rules currently published
System comes into effect in a few
Follow for latest status
• #1 SWATCH (Switzerland)
• #2 DAIMLER (Germany)
How to File in Other Countries
Indirect Filing
Security Clearance
Formalities Examination
International Register
Certificate of International Registration
(immediate; standard; deferred)
Substantive Examination
No Refusal
Contact Information:
Scott R. Hansen, Esq.
Fulwider Patton LLP
6060 Center Drive, 10th Floor
Los Angeles, California 90045
Telephone: 310-242-2731
Email: [email protected]