From International

Protection to Patentability

search - 2

Chen JingFung (Grace)

@csie.ntut.edu.tw 2012/05/15

Chapter 6, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825 USPTO.gov – International Protection

outline

• Intellectual Property Offices work on International Protection

– improving work-sharing & international cooperation

• How to enhance your patent search

– Find or hire another one

2 Grace@iii.org.tw & cise.ntut

International Protection

• Provide information & agreements on improving work-sharing & international cooperation among various Intellectual Property Offices

– Patent cooperation treaty (international)

– Patent prosecution highway (fast track examination)

– Common application format & common citation document

– New route (work-sharing pilot btw USPTO & JPO)

– Triway (Search sharing pilot btw EPO, JPO & USPTO)

– Share (work-sharing pilot btw USPTO & KIPO)

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Patent Cooperation Treaty (PCT)

• PCT legal Administration – Branch 1: PCT special programs

Responsible to educate & assist the patent community • Provide training courses <- help patent application

• Provide instruction to patent examiners <- search & examination

• Provide direct assistance regarding PCT application

– Branch 2: PCT legal affairs

Resolve legal issues in PCT international application & in US national stage application (35 USC 371)

• Interpret and/or suggests changes to patent laws & rules & study their effect on PCT

• Deal with other aspects of – international patent law (as harmonization),

– Patent Law Treaty

– Electronic filing

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Patent examination jam

(2010)Average exam Pendency numbers (ref: WIPO 2009 & npf.gov.tw 2011)

SIPO (China’s State Intellectual Property

Office) 24.2 months

KIPO (Korean) 24.6 months 0.47 millions (2008)

USPTO 34.9 months 1.25 millions (2008)

JPO (Japan) 35.3 months 2.37 millions (2008)

EPO (European) 40.6 months 0.58 millions (2008)

TIPO (Taiwan) 41.04 months 44 thousands (2004)

153 thousands (2010)

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Patent Prosecution Highway (PPH)

Pair-PPH

• PPH speeds up the examination process

– Participate countries by allowing examiners to re-sue search & examination results

• a streamline patent processing

– Ex. The OSF can use OFF’s work products

» All claims in the OSF application must sufficiently correspond to the allowable claims (/search results) in OFF

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Applicant’s file

Office of First Filing (OFF)

Office of Second Filing (OSF)

> 1 claim (patentable)

2010/5/25 USPTO has eliminated the fee for the petition to make special under PPH program

PPH benefits

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Accelerated examination (2~3 months)

PPH request (application) -> pre-exam processing -> grant

Greater Efficiency

Decreased costs of prosecution

(PPH vs. non-PPH) average of PPH save both applicants & offices time & expense

Reduced pendency PPH can use the applications filed based on another office’s work product

No Petition Fee USPTO eliminated the petition fee in 2010/5

90% PPH cases are allowed

<50% non-PPH

cases >

PCT-PPH

• PPH program -> permit PPH eligibility for national- and regional-phase under the basis positive results in PCT international phase (PCT-PPH)

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Participating offices in PCT-PPH

Trilateral Offices KIPO (Korean

Intellectual Property

office)

APO (Austrian

Patent Office)

ROSPATENT (Russia)

SPTO (Spanish Patent &

Trademark office)

• USPTO • JPO (Japan) • EPO (European)

International Authority (USPTO)

a corresponding national phase entry

a national application filed from the fast-track examination

2011/9/1 TIPO join USPTO’s PPH program (ref: npf.org.tw 2011) <- the speed of TW patent exam 2012/3/1 TW -SUPA (TIPO-Support Using the PPH Agreement)

Ref: TIPO 2012

TW –SUPA

(TIPO-Support Using the PPH Agreement)

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• TW-SUPA vs. PPH

Ref: TIPO.gov.tw 2012

Patent DB - Machine translation

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KIPO + WIPO - the joint development of “E-learning content” (2004-2007)

• IP PANORAMA relies on the design strategy - “Storytelling” with a practical story regarding intellectual property

• Focus on the situation of SMEs • 2005-2006 English version, 2008

Mongolia, Portugal, Poland, Estonia, Morrison Francis & Thai, 2009 Arabic version, 2010 Spanish & Russian

SME (small and medium-sized enterprises)

2009 patent applications (world economic storm)

EPO & SIPO sign agreement on Chinese-English machine

translation for patents (2011) • Especially SME stand to

benefit from this improved access to information on new technologies

(ref: EPO 2011)

(ref: EPO 2011)

EPO & Google signed a agreement (completed by the end of 2014) to collaborate on machine translation into European (28), Slavonic (Russian) & Asian (Chinese, Japanese & Korean) languages • Provide a free, real-time translation of millions of

patents granted • speed up R+D efforts with searches in their own

language

Common format & document

• Trilateral Common application format (2007 Trilateral conference) – Simplified and streamlined patent application filing requirements – Example format (XML e-filing: “tags”)

• Description – Title of invention, Technical field, Background art, Summary of invention (Technical

problem, solution to problem, advantageous effects of invention), Brief description of drawings (figs), Description of embodiments (examples), Industrial applicability, Reference signs list, Reference to deposited biological material, Sequence listing free text, Citation list (patent literature, non patent literature)

• Claims • Abstract • Drawings • Sequence listing

• Triateral Common citation document (CCD)

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Category Patent no. Kind code Application name Pub. date

Claims

Relevant passages

New route pilot project btw JPO &

USPTO

• Start this new rout pilot project on 2008/1/28

• Objective – Paris-Route: a patent application filed with the

OFF will be regarded as being filed on the same date as the filing date in the OSF • Speed up OSF to get the result of the pilot in a limited

time period

– providing for the mutual utilization of search/examination results on a full scale • an applicant sufficient time (30 months from the filing

(priority) date)

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Triway Pilot Among USPTO, EPO, & JPO

• Triway Pilot can eliminate certain timing issues • A search sharing to leverage the searching expertise of

each of the Trilateral Offices (EPO, JPO, and USPTO) to the benefits of both applicants and the Offices

• Worksharing effects (as PPH program) can improve the resulting quality of any patents issued on the corresponding applications by each of the Trilateral Offices

– Important dates • The Trilateral Offices agreed (2007/11) -> A notice

regarding the requirements/procedures on USPTO website (2008/7/14) -> The start date (2008/7/28)

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work-sharing pilot btw USPTO & KIPO

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Pos.

Neg.

neutral

• 2008~2009 KIPO + USPTO want to increase bilateral cooperation between the Offices – the Strategic Handling of Applications for Rapid

Examination (SHARE) pilot (as PPH program) – Scope

• their examination of the corresponding cross-filed application • The technical areas selected were Semiconductor (IPClass H01L)

and Fuel Cell (IPClass H01M). 344 applications were included in the pilot.

Intellectual Property Overseas

• Toolkits only can provide an overview http://www.uspto.gov/ip/iprtoolkits.jsp

• Some basic, often low-cost, steps small companies should consider include – Working with legal counsel to

• develop an overall IPR protection strategy

– Developing detailed IPR language for • licensing and subcontracting contracts

– Conducting due diligence of potential foreign partners • (The U.S. Commercial Service can help, see Export.gov)

– Recording their U.S.-registered trademarks and copyrights with Customs and Border Protection; and

– Securing and registering patents, trademarks, and copyrights in key foreign markets, • including defensively in countries where IPR violations are common.

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HOW TO IMPROVE YOUR

PATENT SEARCH

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Why your search may not be perfect

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• Some prior-art reference can be missing from database – drop out “class & subclass”

– Without being published or have been previously invented

• Most patent computer searches do not contain – foreign, non-patent, or other references (as

theses, service manuals, magazines, textbooks …)

• Very recently issued may not in the computer’s database <- new!!

• Pick up “terms” only from your view – People may select other terms to describe the

same thing

Patent Agents & Patent Attorneys

Patent Agents Patent Attorneys

Work ability

• Generally an undergraduate degree in engineering or science

• May get a license by the PTO (or TIPA at TW)

• US: Get certifications by the PTO & the attorney-licensing authority (such as the state bar , supreme court ..) of at least one state

• TW: pass the national exam

Clarifying the issue

• Express an opinion on patentability

• Help to find out the issue who make

Handle the patent application, copyrights and trademark

Prosecute in court

X O

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How to use a lawyer or Agent

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Generate documents (letter/official paper) for you

Official papers bills letters

Keep saving in file

In advance • List the cost of every task • Send the bill state by time/fixed rate

Understand practitioner’s propose & take the course of action

Lawyer/Agent

evaluation

Ask practitioner to explain it Be entitled know what & why to do

Another Patent Agent

Pay $$

Send document

Change The practitioner isn’t acting

competently, ethically or honestly …

Find “discount” patent attorneys & agents

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Active patent professionals are either in private practice ( a law firm or solo practice)

• Charge about ($100 ~ $600)/hour

Many corporate-employed or semiretired patent professionals or retired (but still licensed)

• Less payment than their downtown counterparts

• Have less overhead (rent, books, secretaries)

Just as good or better than those of the full-priced law

firm lawyers

• Generally, hiring an lawyer in you locality is very costly – That attorneys will travel or hire

another one to Alexandria near DC – PTO (local) website at

https://oedci.uspto.gov/OEDCI/GeoRegion.jsp (A&ARTP)

Patent Bar exam information

• Participate a Bar exam to verify your ability

– USPTO bar exam info http://www.uspto.gov/ip/boards/oed/exam/index.jsp

– Taiwan IP certification http://www.tipa.org.tw/certify_1/

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Summary

• Start from overseas patent protection including

– PCT (patent cooperation treaty), PPH (patent prosecution highway), CAF/CCD, new route pilot (work-sharing), tripway pilot (search sharing) …

• How to audit work of patent agent/lawyer

– Keep document & bill

• Pass a Bar exam to show your ability

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Reference

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• David Pressman, chapter 6, “Patent It Yourself: Your Step-by-Step Guide” to Filing at the U.S. Patent Office, 2011, 15th edition, ISBN-10: 1413313825 – Reference by “Previous Course Slide” record set: introduce invention,

evaluate invention, WM2Patent, Patent Requirement (novelty & nonobviousness), Patent search (classification search)

• TW patent online search – http://twpat.tipo.gov.tw/

• Blog: http://fungsiong.blogspot.com/ – Introduce hybrid TV/Smart TV (hbbTV) including widget design,

Android technology (API), system, ecosystem, framework, service, application…,

– Agile for progressing: http://fungsiong.blogspot.com/search/label/Agile • About how to teamwork

– Some programming info. as Apache wookie, refactoring tech, CE-HTML, a solution about removing a backdoor “Trojan” & surveillance paper