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Euro-PCT Applications

Jim Ruttler, Patent Attorney

Posted Thursday, April 21, 2016 by Jim Ruttler

A patent application filed in the United States with the USPTO can serve as the basis for a later European patent application. That is, a later European patent application can be treated as if were filed on the earlier U.S. filing date if certain steps are taken.

The first is to file at least a provisional patent application in the United States fully disclosing your invention and including at least one claim, prior to any disclosures, offers for sale, or publications of your invention. Upon filing, it is possible to wait up to one year to file a PCT application with the World Intellectual Property Organization.

This PCT application undergoes a search, and optional non-binding examination, but it does not issue into a patent anywhere. Instead, within 30 months from the first filed application (e.g., the provisional in this case), the PCT application can be used to enter national stage with the European Patent Office. The EPO will examine the national stage application and determine whether to grant a patent on the invention. Importantly, the EPO will treat the national stage application as if it were filed on the U.S. provisional filing date (in this example).

Hence, disclosures and offers for sale and other inventions that occurred after the filing date of the provisional (again in this example) would not impact the patentability determination of the national stage application in Europe, even those the national stage application was not filed for years after the provisional application.

This procedure can be effective to obtain a Unitary European Patent, which will be enforceable across most of the EU via the new unified court system.

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Patent Gold Rush in Europe

Jim Ruttler, Patent Attorney

Posted Friday, March 4, 2016 by Jim Ruttler

Europe has historically been a difficult place to register and protect inventions. Any European patent granted had to be registered in each separate country and then enforced in a country by country basis.

That is all about to change with the new unitary patent and unified patent court. The unitary patent is an EU wide (with the exception of only Spain for now) patent that can be enforced across the EU countries in one court. This new patent regime will cover about 400 million people, which is larger than the total population of the United States. Expectations are that the unitary patent and unified patent court will be fully operational in 2017, but it is possible to convert existing European patents obtained now.

Furthermore, Europe has maintained more favorable treatment toward patent owners than the United States has. In the United States, Alice and the inter partes review proceedings and the difficulty obtaining injunctions has made it difficult for innovators to protect inventions, particularly software and scientific discoveries. In contrast, Europe has a more predictable test for eligibility and courts there are awarding injunctions. Many have come to believe that Europe is a preferred destination for protecting intellectual property.

It is no surprise then that the European Patent Office has reported yet another record year for filings (5% increase in 2015 over the previous record in 2014). For U.S. inventors, this means that consideration of Europe as a patent destination can no longer be ignored.

There are tools for filing here in the United States and transitioning applications to European unitary patent applications and patents. This means that inventions that are difficult to protect here can utilize the U.S. patent office to reach Europe thereby providing the benefit of a more favorable patent regime and a larger population base.

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Trademark Public Advisory Committee Highlights

Daniel Mills, Trademark Attorney

Posted Monday, February 22, 2016 by Daniel Mills

The Trademark Public Advisory Committee held a meeting on February 15th to review the current fiscal year status, provide budget for 2017, and review fees and rulemaking for the coming year. There were several interesting pieces of information from the presentation:

  • Q1 2016 FY (Oct. 2015-Dec. 2015) filings are up 12.6% over same period last year
  • The Office is expecting a 7% increase in filings for the entire 2016 FY
  • The USPTO did a great job of “weathering the storm” when the blizzard that hit Washington DC this winter. At one point 77% of the USPTO workforce was able to telework and trademark examining attorneys were able to complete 90% of the normal workload despite the city being shut down for a week
  • The time from first filing to first office action is 3.1 months (within their target range)
  • The time from filing date to allowance, issuance, registration, or abandonment is averaging 10 months (well ahead of 12 month target)
  • Electronic filings are ahead of target at just over 80%
  • There are currently 474 examining attorneys for trademarks with another 40 to be added by the end of the year
  • Through telework, there are examining attorneys working in 30 states
  • New fees schedule is planned for spring 2016 release for 60 day comment period
  • The Office will continue to enhance IT modernization and technology

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IPR Proceedings Reviewed by Supreme Court

Jim Ruttler, Patent Attorney

Posted Sunday, February 14, 2016 by Jim Ruttler

The America Invents Act created new proceedings at the Patent Office to challenge issued patents called inter partes review proceedings (IPR). These proceedings can be brought by private parties to challenge whether a patent should have been issued. Since inception, IPRs have been popular because of the speed and high likelihood of success for invalidation. Meanwhile, patent owners and innovators have protested these proceedings as being unfair, unjust, and even unconstitutional.

Well, the day of reckoning has finally arrived for the Patent Office. The Supreme Court has recently accepted one of the first cases to reach this level of the judicial process. In Cuozzo, the Supreme Court will be reviewing the policy of the patent office to interpret claims using the broadest reasonable interpretation standard. Many expect the Patent Office to be taken to task over the use of this standard, which is inconsistent with the Phillips standard used by the Courts when reviewing issued patents and inconsistent with the presumption of validity enjoyed by issued patents.

Cuozzo is just the tip of the iceberg as there are more coming, such as Cooper which the Supreme Court is being asked to accept on the heals of Cuozzo. In Cooper, the Supreme Court is being asked to declare the entire IPR proceedings as being unconstitutional. This is on the basis that the Patent Office is invalidating private property rights, patent rights, which activity has been deemed by past Supreme Court decisions to be entirely within the purview of the judicial system.

If the Supreme Court accepts Cooper along with Cuozzo, it is highly likely that the IPR proceedings will be substantially limited or scrapped altogether, which would be a very positive development for innovators and patent owners.

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CAFC Strengthens Patent Rights by Limiting Exhaustion

Jim Ruttler, Patent Attorney

Posted Sunday, February 14, 2016 by Jim Ruttler

Patents just became more valuable thanks to a recent decision by the Federal Circuit. The majority opinion in Lexmark v. Impression came down on Friday whereby the Court held that a patent owner can limit the use and resale of a patented article. That is, patent owners can prevent customers from using or reselling a product and such limitation is binding not only on the customer but also on downstream purchasers of the product from the customer.

Lexmark sold certain printer cartridges that were covered by a patent and expressly limited the printer cartridges for single use. Impression bought the single use printer cartridges and then adapted them to make the reusable and then sold them at a discount compared to Lexmark’s other reusable cartridges. Lexmark sued for infringement and Impression defended on the basis that Lexmark lost patent rights in the sold printer cartridges because they were sold to impression. This is otherwise known as exhaustion. The Federal Circuit said in a very lengthy opinion that patent rights are different from copyrights, which are subject to copyright exhaustion. Used books and CDs and paintings can be resold on the secondary market when the copy is lawfully purchased. Here, the Court said that patents are different. According to the court, the Patent Act expressly allows for the patent owner to prevent others from making, using, and selling the patented invention. There is no statute as with copyright law that limits the patent rights via exhaustion. Thus, the Court held that if a patent owner limits the rights that accompany the sale of a product and there is not implied or express license granted to the purchaser, then the patent owner retains those rights.

For example, if a patent owner sells an article and states the the customer is only to use the article one time and cannot resale the article, then it would be infringement for the customer to resale the article. Moreover, it would be infringement of any purchaser to purchase and use the article from the customer.

It is clear for the time being, unless the Supreme Court or Congress intervenes, that patent owners can place limits on the use and resale of patented products and have those limits be binding on customers and all downstream purchasers. This is great news for innovators as it will allow patent owners to have greater control of patented products and maximize the benefit associated therewith.

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