006 International Patent

International Patent Prosecution

Todd L. Juneau

Patent Prosecution - PCT

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

PCT BasicsChapter I – thru 20th month, Chapter II –

thru 30/31st monthDemand previously required at 19th

month is no longer required for most countries

Unity of Invention is the standard – special technical feature

PCT Regional PhaseEPO

European Patent OfficeARIPO

African Regional IP OfficeEAPO

Eurasian Patent OfficeOAPI PO

Oceania Asia Pacific Patent Office

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 appealswww.european-patent-office.org

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)

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

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

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.

Patent Prosecution - JapanFirst to file, absolute novelty

Publication at 18 monthsExamination must be requested within 3

years after filing (Y84,000 plus Y2000 per claim)

Patent term 20 yearsUtility Model term 6 years

Opposition within 6 months after grant

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

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

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

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

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

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

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 licenseIn general, not greatly used

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

Thank You

[email protected]

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