In Excela Pharma Sciences, LLC v. Lee (2015), the Federal Circuit held a third party does not have "the right to challenge, by way of the Administrative Procedure Act (APA), a ruling of the Patent and Trademark Office reviving a patent application that had become abandoned by failure to meet a filing schedule established by the Patent Cooperation Treaty."
The Federal Circuit stated the Patent Act's "intricate scheme for administrative and judicial review of PTO patentability determinations" demonstrates Congress did not intend such challenges. See Pregis Corp. v. Kappos, (Fed. Cir. 2012).
Copyright © 2015 Robert Moll. All rights reserved.
Showing posts with label PCT. Show all posts
Showing posts with label PCT. Show all posts
Monday, March 30, 2015
Wednesday, April 16, 2014
US Design and Utility Patents - How Do They Differ?
Don't let the term "patent" confuse you, design patents and utility patents are different forms of legal protection. Generally, a utility patent, which is what most people mean when they don't specify what type of patent, protects the way an invention works or is used (35 U.S.C. 101). In contrast, a design patent protects the way the invention looks (35 U.S.C. 171). Making it confusing at times, an invention may be eligible for one or more design patents and/or utility patents!
Some of the other differences between US design and utility patents are as follows:
1. Patent term: An utility patent application filed on or after June 8, 1995 has 20-year patent term from the earliest effective U.S. filing date (subject to any patent term adjustment, e.g., for PTO delay), while the term of a design patent is 14 years from the issue date (35 U.S.C. 173).
2. Maintenance fees: For a utility patent to remain in force, one must pay maintenance fees 3.5., 7.5., and 11.5 years (extendible six months with a surcharge fee) from the issue date (37 CFR 1.20), while design patents require no maintenance fees.
3. Claims: Design patents have a single claim, while utility patents typically have multiple claims.
4. Restrictions: The Examiner has discretion whether to restriction on multiple inventions in a utility application, but it's mandatory in design patent applications (MPEP § 1504.05).
5. International applications: the Patent Cooperation Treaty (PCT) permits extending foreign deadlines for multiple countries for utility patents, while design patents await implementation of Hague agreement hopefully late 2014.
6. Foreign filing deadlines: utility patent applications have up to 12 months after the first filing, while design application only have up to 6 months (35 U.S.C. 172). Don't forget this difference!
7. Provisionals: Utility patent applications may claim the benefit of a provisional application, while design patent applications cannot.
8. Request for Continued Examination: Available for utility patents application, but not for design applications.
9. Continued Prosecution Application (CPA): only available for design applications today.
10. Publication of Application: Required for all utility patent applications unless foreign filing rights are waived by the applicant, but design applications are not subject to publication.
This is a plain English version of MPEP 1502.01. See MPEP 1500 Design Patents for details.
Copyright © 2014 Robert Moll. All rights reserved.
Some of the other differences between US design and utility patents are as follows:
1. Patent term: An utility patent application filed on or after June 8, 1995 has 20-year patent term from the earliest effective U.S. filing date (subject to any patent term adjustment, e.g., for PTO delay), while the term of a design patent is 14 years from the issue date (35 U.S.C. 173).
2. Maintenance fees: For a utility patent to remain in force, one must pay maintenance fees 3.5., 7.5., and 11.5 years (extendible six months with a surcharge fee) from the issue date (37 CFR 1.20), while design patents require no maintenance fees.
3. Claims: Design patents have a single claim, while utility patents typically have multiple claims.
4. Restrictions: The Examiner has discretion whether to restriction on multiple inventions in a utility application, but it's mandatory in design patent applications (MPEP § 1504.05).
5. International applications: the Patent Cooperation Treaty (PCT) permits extending foreign deadlines for multiple countries for utility patents, while design patents await implementation of Hague agreement hopefully late 2014.
6. Foreign filing deadlines: utility patent applications have up to 12 months after the first filing, while design application only have up to 6 months (35 U.S.C. 172). Don't forget this difference!
7. Provisionals: Utility patent applications may claim the benefit of a provisional application, while design patent applications cannot.
8. Request for Continued Examination: Available for utility patents application, but not for design applications.
9. Continued Prosecution Application (CPA): only available for design applications today.
10. Publication of Application: Required for all utility patent applications unless foreign filing rights are waived by the applicant, but design applications are not subject to publication.
This is a plain English version of MPEP 1502.01. See MPEP 1500 Design Patents for details.
Copyright © 2014 Robert Moll. All rights reserved.
Thursday, February 13, 2014
USPTO - US Residents Filing A Design Application under Hague Agreement?
Can US residents file an international application for a design patent?
When I first reviewed this question, I checked to see if the PCT allows for design patent applications. The PCT permits filing a single application in English that starts the process of seeking protection of the invention in many countries. Although not strictly a patent application, a PCT gives applicants an 18-month extension past the convention year to consider whether the cost of foreign filing is justified while keeping the benefit of the priority filing date.
However, the PCT does not permit filing a design application. Instead, an international design application must be filed under the Hague Agreement Concerning International Registration of Industrial Designs, 35 USC 381- 390, Title I of the Patent Law Treaty that President Obama signed into law on December 18, 2012.
However, a USPTO staff member informed he expects legislative processes to delay the ability for US residents to file Hague application until late 2014. First, the Senate must consent to a complete package of laws, since it's a Treaty. Although 35 USC 381-390 is law, the USPTO proposed rules are still open to public comments. The USPTO must review the comments and make any revisions to the proposed rules to produce the final rules. After this Senate consent requires Senate Foreign Relations Committee recommendation and 2/3 or more of Senators to vote in favor of the complete package.
Until that day, US residents may still file a Hague application in a country (i.e., Hague contracting state outside the US) if the applicant has a "real and effective industrial or commercial establishment" in the country. What's a real and effective industrial or commercial establishment is determined by that country's laws. It may not require applicant have its principal place of business in that country, but the more business activity in a country the more likely the Hague application will be valid. Thus, operation of a warehouse may not suffice, while a manufacturing factory might. A third party distributor or a subsidiary might not suffice, while applicant's sales office might. As was explained to me, "the establishment must be operated by the applicant, rather than merely with the applicant’s consent or approval" and not a "sham establishment." Finally, a Hague application on this basis would typically require engaging a foreign associate knowledgeable with the specific requirements of that country.
Copyright © 2014 Robert Moll. All rights reserved.
When I first reviewed this question, I checked to see if the PCT allows for design patent applications. The PCT permits filing a single application in English that starts the process of seeking protection of the invention in many countries. Although not strictly a patent application, a PCT gives applicants an 18-month extension past the convention year to consider whether the cost of foreign filing is justified while keeping the benefit of the priority filing date.
However, the PCT does not permit filing a design application. Instead, an international design application must be filed under the Hague Agreement Concerning International Registration of Industrial Designs, 35 USC 381- 390, Title I of the Patent Law Treaty that President Obama signed into law on December 18, 2012.
It may appear a US resident can file a Hague application in the USPTO today, because 35 USC 382 states any person who is a national of the United States, has a domicile, a habitual residence, or a real and effective industrial or commercial establishment, may file an international design application in the USPTO.
However, a USPTO staff member informed he expects legislative processes to delay the ability for US residents to file Hague application until late 2014. First, the Senate must consent to a complete package of laws, since it's a Treaty. Although 35 USC 381-390 is law, the USPTO proposed rules are still open to public comments. The USPTO must review the comments and make any revisions to the proposed rules to produce the final rules. After this Senate consent requires Senate Foreign Relations Committee recommendation and 2/3 or more of Senators to vote in favor of the complete package.
Until that day, US residents may still file a Hague application in a country (i.e., Hague contracting state outside the US) if the applicant has a "real and effective industrial or commercial establishment" in the country. What's a real and effective industrial or commercial establishment is determined by that country's laws. It may not require applicant have its principal place of business in that country, but the more business activity in a country the more likely the Hague application will be valid. Thus, operation of a warehouse may not suffice, while a manufacturing factory might. A third party distributor or a subsidiary might not suffice, while applicant's sales office might. As was explained to me, "the establishment must be operated by the applicant, rather than merely with the applicant’s consent or approval" and not a "sham establishment." Finally, a Hague application on this basis would typically require engaging a foreign associate knowledgeable with the specific requirements of that country.
Copyright © 2014 Robert Moll. All rights reserved.
Wednesday, October 30, 2013
USPTO - Changes to Implement the Patent Law Treaty
On October 21, 2013, the USPTO published Changes to Implement the Patent Law Treaty which will implement some revisions to the rules of practice before the USPTO that may help some recover patent rights in some situations so are worth reading. Here is the summary that the USPTO provided:
"The Patent Law Treaties Implementation Act of 2012 (PLTIA) amends the patent laws to implement the provisions of the Hague Agreement Concerning International Registration of Industrial Designs (Hague Agreement) in title I, and the Patent Law Treaty (PLT) in title II. The PLT harmonizes and streamlines formal procedures pertaining to the filing and processing of patent applications. This final rule revises the rules of practice for consistency with the changes in the PLT and title II of the PLTIA. The United States Patent and Trademark Office (Office) is implementing the Hague Agreement and title I of the PLTIA in a separate rulemaking.
The notable changes in the PLT and title II of the PLTIA pertain to: The filing date requirements for a patent application; the restoration of patent rights via the revival of abandoned applications and acceptance of delayed maintenance fee payments; and the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application.
This final rule also revises the patent term adjustment provisions to provide for a reduction of any patent term adjustment if an application is not in condition for examination within eight months of its filing date or date of commencement of national stage in an international application, and contains miscellaneous changes pertaining to the supplemental examination, inventor’s oath or declaration, and first inventor to file provisions of the Leahy-Smith America Invents Act (AIA)."
Copyright © 2013 Robert Moll. All rights reserved.
"The Patent Law Treaties Implementation Act of 2012 (PLTIA) amends the patent laws to implement the provisions of the Hague Agreement Concerning International Registration of Industrial Designs (Hague Agreement) in title I, and the Patent Law Treaty (PLT) in title II. The PLT harmonizes and streamlines formal procedures pertaining to the filing and processing of patent applications. This final rule revises the rules of practice for consistency with the changes in the PLT and title II of the PLTIA. The United States Patent and Trademark Office (Office) is implementing the Hague Agreement and title I of the PLTIA in a separate rulemaking.
The notable changes in the PLT and title II of the PLTIA pertain to: The filing date requirements for a patent application; the restoration of patent rights via the revival of abandoned applications and acceptance of delayed maintenance fee payments; and the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application.
This final rule also revises the patent term adjustment provisions to provide for a reduction of any patent term adjustment if an application is not in condition for examination within eight months of its filing date or date of commencement of national stage in an international application, and contains miscellaneous changes pertaining to the supplemental examination, inventor’s oath or declaration, and first inventor to file provisions of the Leahy-Smith America Invents Act (AIA)."
Copyright © 2013 Robert Moll. All rights reserved.
Saturday, December 22, 2012
USPTO Opens Patent Prosecution Highway with Taiwan Intellectual Property Office
On December 21, 2012, the USPTO announced its Patent Prosecution Highway (PPH) partnership with the Taiwan Intellectual Property Office.
The USPTO says, "Under the Patent Prosecution Highway (PPH), an applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim in an application filed in the OFF is patentable may request that the Office of Second Filing (OSF) fast track the examination of corresponding claims in corresponding applications filed in the OSF. PPH will leverage fast-track examination procedures already available in the OSF to allow applicants in the OSF to obtain corresponding patents faster and more efficiently."
Note on May 25, 2010, the USPTO eliminated the fee for a petition to make special under PPH so it sounds like a good deal.
However, I am not sure how certain circumstances would play out under the US-Taiwan PPH partnership, because PPH is not mentioned in 37 CFR nor in Title 35. For example, if you initially file in the USPTO then file in Taiwan can you use a favorable Taiwanese ruling to fast track the US prosecution (i.e., swap who is the first Office)? This would be desirable, given the USPTO is backlogged and Taiwan is not a member of the PCT and requires a Taiwanese filing within 12 months of the US filing date. Admittedly this issue may only pertain to this PPH partnership because other partnerships among PCT members permit a second application filing up to 30 months from the priority date.
PPH seems to assume participating countries have similar patentability standard. Otherwise, why fast track examination of one country's application based on another country's patentability rulings? Yet even the USPTO and EPO have important differences especially on patentability of software related invention.
In addition, the USPTO has high standards on the content of applicant's petition to expedite examination of an application. Given this is it factually correct to say all claims of a second application "correspond" to a single allowable claim in a first filed application? PPH seems to stretch the term "correspond." Is it a problem? What if the applications overlap but are not identical? Could a defendant successfully argue applicant's statement that claims correspond is false rendering the US patent unenforceable in court? I am not sure and litigation is a harsh place to find out.
Copyright © 2012 Robert Moll. All rights reserved.
The USPTO says, "Under the Patent Prosecution Highway (PPH), an applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim in an application filed in the OFF is patentable may request that the Office of Second Filing (OSF) fast track the examination of corresponding claims in corresponding applications filed in the OSF. PPH will leverage fast-track examination procedures already available in the OSF to allow applicants in the OSF to obtain corresponding patents faster and more efficiently."
Note on May 25, 2010, the USPTO eliminated the fee for a petition to make special under PPH so it sounds like a good deal.
However, I am not sure how certain circumstances would play out under the US-Taiwan PPH partnership, because PPH is not mentioned in 37 CFR nor in Title 35. For example, if you initially file in the USPTO then file in Taiwan can you use a favorable Taiwanese ruling to fast track the US prosecution (i.e., swap who is the first Office)? This would be desirable, given the USPTO is backlogged and Taiwan is not a member of the PCT and requires a Taiwanese filing within 12 months of the US filing date. Admittedly this issue may only pertain to this PPH partnership because other partnerships among PCT members permit a second application filing up to 30 months from the priority date.
PPH seems to assume participating countries have similar patentability standard. Otherwise, why fast track examination of one country's application based on another country's patentability rulings? Yet even the USPTO and EPO have important differences especially on patentability of software related invention.
In addition, the USPTO has high standards on the content of applicant's petition to expedite examination of an application. Given this is it factually correct to say all claims of a second application "correspond" to a single allowable claim in a first filed application? PPH seems to stretch the term "correspond." Is it a problem? What if the applications overlap but are not identical? Could a defendant successfully argue applicant's statement that claims correspond is false rendering the US patent unenforceable in court? I am not sure and litigation is a harsh place to find out.
Copyright © 2012 Robert Moll. All rights reserved.
Sunday, March 25, 2012
European Patent Filings Increase in 2011
Despite the debt crisis and economic uncertainty, companies have reversed the slow down in European patent filings in 2008-2009 and increased filings in the European Patent Office (EPO) to record levels in 2011.
The EPO allows an applicant to file a single patent application which designates up to 38 countries at the front of the process, and get national patents in one or more of the designated countries after the application is accepted by the examiner as patentable.
This EPO Annual report 2011 - Statistics and trends gives further details of total European patent filings in 2011, and the residence of applicants by EPO member states and by non-EPO member states.
The desire to defer the expense of the European patent filing is the reason for the increase in PCT filings and decrease in direct EP filings.
See the details in Patent requests in Europe reach record in 2011 - Japan Today.
Thanks to Alan Cooper for sending this article!
Copyright © 2012 Robert Moll. All rights reserved.
The EPO allows an applicant to file a single patent application which designates up to 38 countries at the front of the process, and get national patents in one or more of the designated countries after the application is accepted by the examiner as patentable.
This EPO Annual report 2011 - Statistics and trends gives further details of total European patent filings in 2011, and the residence of applicants by EPO member states and by non-EPO member states.
The desire to defer the expense of the European patent filing is the reason for the increase in PCT filings and decrease in direct EP filings.
See the details in Patent requests in Europe reach record in 2011 - Japan Today.
Thanks to Alan Cooper for sending this article!
Copyright © 2012 Robert Moll. All rights reserved.
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