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WIPO’s March PCT Newsletter Recap

Posted by Liz Curtin

Thursday, Mar 19, 2015 @ 03:26 PM

Good afternoon! Each month, we look through WIPO’s PCT Newsletter to share the latest news impacting the international patent system. As always, there are several country-specific rules, fee changes and patent office notifications to report. Please see below for a recap of the major headlines from March:

Continue reading WIPO’s March PCT Newsletter Recap

The EPO Releases their 2014 Annual Report

Posted by Liz Curtin

Wednesday, Mar 11, 2015 @ 12:58 PM

 The EPO’s Annual Report 2014 was released which we previously wrote about in January. Here are the final statistics:

Highlights from 2014 included improving access to Asian patent information while consolidating patent data from around the world. Preparation for the unitary patent was also in full swing with significant progress made in the area. Many countries ratified the unitary patent agreement and progress was made in ironing out the practicality of the system.

PCT filings increased over the past five years and in 2014 the total number of filings at the EPO included around 60,000 direct European filings and 214,000 international filings under the PCT (274,174 total, up 3.1% from the previous year).

Roughly 1/3 of the total filings in 2014 came from the EPO member states and 2/3 came from outside of Europe. Once again, the top 5 countries were the United States, Japan, Germany, China and South Korea. China showed the largest increase (+18%), followed by the United States (+7%) and South Korea (+2%).

The top list of applicants were as follows: 1) Samsung – 2,541 applications, 2) Philips – 2,317 applications, 3) Siemens – 2,133 applications, 4) LG – 1,638 applications and 5) Huawei – 1,600 applications. Among the top ten filers, five came from Europe, three from Asia and 2 from the United States. The sectors were primarily from electronics and IT.

Design Protection Goes Global: The Hague Agreement Will Change Industrial Design Strategies

Posted by Liz Curtin

Thursday, Mar 5, 2015 @ 11:05 AM

Guest post by John Nemazi, Co-chair of Brooks Kushman‘s patent prosecution group:

On February, 13, 2015, the U.S. took a major step towards implementing the Hague Agreement Concerning the International Registration of Industrial Designs by depositing an instrument of ratification with World Intellectual Property Organization (“WIPO”). As a result, the treaty – which the U.S. initially signed in 1999 – will go into effect for U.S. applicants on May 13, 2015. 

The Hague Agreement establishes a streamlined, international system for filing applications to protect industrial designs, such as product configurations and surface ornamentation. Instead of filing separate applications in each country where protection is required, an applicant will be able to file a single, standard format application with WIPO designating the jurisdictions where proceedings are to be initiated. A single application may include up to 100 different designs (if they all belong to the same class) and may designate any number of contracting countries or international organizations, such as the European Union.

In addition, the Hague Agreement and its implementing legislation, the Patent Law Treaties Implementation Act of 2012, make several important substantive changes to U.S. law and procedures affecting design patents. These changes include: extending the design patent term to 15 years, publishing international design applications, and creating provisional rights based on published applications. 

To see the complete article, please read on here

Foreign Filing Roundup

Posted by Liz Curtin

Friday, Feb 27, 2015 @ 01:08 PM

 Good afternoon. Here are the latest headlines in foreign patent filing news for the week of February 23rd:

  • According to the European Patent Office medical technology topped the list of technical fields with the highest volume of patent applications filed.
  • The EPO also released their completed 2014 Annual Report. A record number of total filings was reported (274,174), an overall increase of 3.1%. Read the entire report here
  • In case you missed it: Read about the latest updates regarding the America Invents Act and learn how to plan for the large volume of filings expected to hit in September and October.
  • From the USPTO: CFO Tony Scardino recently published their fiscal year 2016 Congressional Budget Justification. Read more here. 

Follow us on Twitter @inoviaIP for more patent updates and check back next week for more updates.

inovia’s Spring Event Schedule

Posted by Liz Curtin

Tuesday, Feb 24, 2015 @ 01:48 PM

Good afternoon! We are attending numerous events from Stockholm to San Diego throughout the upcoming months. There’s a good chance we might be in your area. So read on and get in touch with an inovia office near you to schedule a meeting:

International Women’s Leadership – February 24th – London, United Kingdom

This forum will discuss Intellectual Property developments in Europe and provide an opportunity to listen and mingle with thought leaders in the IP field. Topics range from litigation and patent prosecution to copyright and trademark protection.

Nordic IPR – March 24-26 – Stockholm, Sweden

This is the longest running IPR forum in the Nordic region. Discussion formats, roundtables, panel debates and networking opportunities ensure that this is not one to miss!

Intellectual Property SpringPosium 2015 – April 10-11 - Adairsville, GA

Once again we will be sponsoring at the IP SpringPosium in Georgia. Here, you’ll be able to earn CLE credit, network and relax in a beautiful resort in the mountains of Adairsville. 

INTA Annual Meeting 2015 – May 2-6 – San Diego, California

Probably the biggest IP event in the world, INTA is returning to the United States this year. We will be sending five team members to San Diego to attend educational sessions, meet with clients and prepare for another great year in Intellectual Property.

IPBC Global 2015 – June 14-16 – San Francisco, California

The IP Business Congress Global returns to the Bay Area after four years. The unitary patent system and heightened regulatory scrutiny throughout IP will be two major points of discussion at this years conference.

For links to register, please visit our events page and follow us on Twitter @inoviaIP for continuous updates!

Update: The Leahy-Smith America Invents Act

Posted by Liz Curtin

Monday, Feb 23, 2015 @ 05:13 PM

Although the America Invents Act (AIA) involves US laws, the ramifications have been relevant to applicants all over the world for nearly two years. When the final changes of the AIA came into effect on March 16, 2013, applicants scrambled to file in large numbers as the Act included a number of provisions that would make it more difficult to obtain patent protection in the United States.

Read on to see how the uptick in filing numbers prior to March 16, 2013 is now contributing to a higher-volume filing period in September and October of 2015.

First, a bit of background on the America Invents Act 

Before we discuss an increase in filing numbers this fall, here is a bit of background on the America Invents Act. One of the most significant changes that occurred in implementing this new law was that the US lost its unique status as a first-to-invent jurisdiction. Previously, patent rights were granted to the first inventor who conceived of the invention and reduced it to practice (or diligently worked towards reducing it to practice). Starting on March 16, 2013, the first inventor to file got the patent rights. Now, the date of invention is irrelevant.

This change was monumental for the United States, as it aligned the US with almost every other country in the world. The next change that occurred on March 16, 2013 (hard to believe almost 2 years ago!), was the definition of prior art for assessing patentability. Previously, prior art included various uses (including sale) in the US, or written disclosures anywhere in the world. The AIA changed this so that any form of disclosure anywhere in the world forms part of the prior art.

Lastly, the change to first-inventor-to file meant that interference proceedings were no longer required. Instead, a derivations proceeding was available. This enabled inventors to challenge the owner of a patent with an earlier filing date, where the challenging inventor believed the earlier filer derived the invention from the challenging inventor.

Continue reading Update: The Leahy-Smith America Invents Act

Foreign Filing Roundup

Posted by Liz Curtin

Friday, Feb 20, 2015 @ 11:02 AM

Good morning and Happy Friday. We hope everyone is staying warm in the midst of these freezing temps in New York City. Read on for the latest updates in patent news:

  • IP-driven shareholder activism is at an all time high, with many shareholders realizing that there is plenty of money to be made from strong Intellectual Property assets.
  • Our friends at RWS Group recently released this article. They look at China as a growing patent market for translations and filings during the next five years.
  • An innovator that was pushed from the market is suing Apple and Best Buy for infringement. This article debates whether Comarco, Inc, the company suing these two giant companies, is a patent troll. Read on.
  • inovia news: We just released our brand new overview video. Watch now.

Have a great weekend. Don’t forget to follow us on Twitter @inoviaIP if you haven’t already. 

WIPO’s February PCT Newsletter Recap

Posted by Liz Curtin

Thursday, Feb 19, 2015 @ 12:55 PM

We’ve compiled a shortlist of highlights from WIPO’s PCT newsletter, an excellent resource for IP professionals and patent applicants looking to stay on top of changes to the PCT system. Please see below for a recap of this month’s edition:

Meeting of International Authorities

The 22nd Meeting of International Authorities under the PCT was held in Tokyo, Japan from February 4th to 5th. The meeting discussed the following 5 issues as possible areas of further work:

1. Transfer of search fees and search copies via the International Bureau (IB)
2. Mandatory replies to negative indications by the ISA/IPEA on national phase entry
3. Formal incorporation of the Patent Prosecution Highway (PPH) into the PCT
4. Review and identification of reservations
5. Mandatory written opinion in Chapter 11

Other very valuable things were discussed, so please click here to read up on the entire meeting agenda.

Continue reading WIPO’s February PCT Newsletter Recap

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