Intellectual Property Intelligence Blog

Chinese Patent Office Still Red Hot

2010-03-16T18:51:00.000-07:00

According to this, the number of patent applications filed in China in 2009 has increased by 30%. There is no other place in the world for such an important increase in the number of patent applications filed.
The interesting element is that a majority of patent applications are filed by domestic applicants.

Did you know? Korea is in the top 5 for filings

2010-02-09T20:09:00.001-08:00

An interesting article on patent filings in South Korea (http://bit.ly/aWWfQS). This country is number 4 for patent filings. According to the article the top filer there is LG Electronics. It is "becoming the world's seventh-biggest international patent applicant".

What to expect for 2K10 in IP?

2009-12-31T12:21:00.000-08:00

2010 will be a crucial year for Intellectual Property practitioners and users, especially for those in the high-technology sector.

In fact, a couple of key decisions are expected in 2010.

Bilsky: What will be the boundaries of patentable subject-matter in the US?
As all the readers of this blog know, the long-awaited case of Bilski and Warsaw v. Kappos, which could reshape the (US) patent world, is now at the U.S. Supreme Court. At stake is the scope of patentable subject-matter. In fact, the Supreme Court has agreed to review the decision of the US Court of Appeals for the Federal Circuit which held that in order for a process claim to be patentable subject matter, the claims had to satisfy the machine-or-transformation test. More precisely, an applicant has to show either that:
1. A claim is tied to a particular machine or apparatus, or
2. A claim transforms a particular article to a different state or thing.
Well, the Supreme Court decision is expected by June 2010.

Enlarged Board of Appeals of the European Patent Office: Patentability of software and computer-implemented innovations in Europe
On October 22, 2008, the president of the European Patent Office (EPO) has asked the Enlarged Board of Appeals to answer four questions related to the patentability of software and computer-implemented inventions in order to clarify what can and what cannot be patented. More precisely, the questions were aimed at defining the limits regarding software. The four questions can be summarised as:
1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?
2. Can the exclusion be bypassed by tying the claimed invention to a piece of hardware?
3. Must a claimed feature cause a technical effect in the real world in order to contribute to the technical character of the claim? and
4. Does the programming of a computer necessarily involve technical considerations?
According to some sources, the Enlarged Board of Appeals should render its decision in 2010.

I do not know if 2010 will the year of a global recovery for the economy but 2010 will definitely be a key one for IP.

On that note, Happy New Year 2010 to everyone! Health, success and happiness!

Thailand Joins PCT

2009-12-30T08:02:00.000-08:00

As of December 24 2009, Thailand is a contracting state of the PCT. The two-letter code is TH.

U.S. innovation victim of recession?

2009-12-12T18:46:00.000-08:00

An interesting and pessimistic article from CNNMoney.com (link). The article points out some scary facts:

The number of patent filings in the United States fell 2.3% in 2009 to 485,500 from 496,886.
U.S. patents issued to foreign applicants jumped 6.3%.
Patent filings (from US applicants) were down 25%.

It is interesting to note that PCT filings have never decreased since the creation of the PCT Treaty.

Fastracking Green Innovations

2009-12-08T05:55:00.000-08:00

The USPTO has announced (link) a new program for fastracking patent applications related to certain "green" innovations. This announcement happens during the United Nations Climate Change Conference taking place in Copenhagen from Dec. 7-18, 2009.
Since pendency is also a big issue in most patent offices of the world, I hope that other patent offices who do not already offer similar opportunities will follow this US initiative.
Everyone benefits from reducing patent pendency. Applicants are able to market their products and secure their monopoly quicker. The public is able to determine quicker the scope of the monopoly given to the patentee.
Patent pendency unbalances the equilibrium between the patentee, the public and the government.

End of the controversial USPTO patent regulations

2009-10-08T16:35:00.000-07:00

The USPTO has announced that David Kappos has signed a new Final Rule rescinding highly controversial regulations, proposed by the previous administration. (link)
This is a good fate for those regulations.
Kudos to Kappos!

Make Millions with Maintenance Fees.

2009-09-14T14:48:00.000-07:00

According to this, the maintenance fees business seems to be very lucrative. Of course this company has a long standing reputation but still... it seems that this is a good business today even though, for practitioners, paying maintenance fees is usually a big burden since they have to chase clients to get their instructions!
In any cases, this is a clear demonstration that well-managed operations always pay!

The Case For Not Accelerating Prosecution

2009-09-12T14:46:00.001-07:00

It is key, in many instances, to get patent protection as soon as possible.
In most of the countries, it is possible to fast-track prosecution providing that at least a petition and fees are paid. Moreover, aside "Patent Prosecution Highways (PPH)", local (national)procedures exist.
In Canada, for instance, it is possible to make a patent application "special". To file a petition to "make (the application) special".
In the US also it is possible to expedite prosecution using, inter alia, the "Accelerated Examination Program". The issue with this program is that you have basically to do the work of the examiner and to present it after to him for approval. Needless to say that a nice file-wrapper is therefore built by the Applicant... Good for future litigation!!!
In any cases, I think that expediting prosecution right now in the US could be very harmful in many cases since the Bilsky case is now right now in front of the Supreme court. Practitioners should therefore, in my opinion, wait before the dust settle to expedite prosecution. I strongly believe that the Supreme court decision in Bilsky will reshape the future of the protection of software/business methods innovations in the US.
We should therefore be very cautious before the Supreme court speaks!
Do you agree?

Brazil Ready To Infringe?

2009-08-31T21:08:00.000-07:00

According to this, Brazil is preparing to infringe patents on US pharmaceutical products, in retaliation against US subsidies for its 25000 cotton farmers. The World Trade Organization (WTO) has just set conditions (see below) for how Brazil can retaliate against the United States over its cotton subsidies.
Brazil said the ruling would entitle it to about $800 million in sanctions against the United States this year, including $340 million of "cross-retaliation" against intellectual property or services.
The United States said the sanctions would be worth about $300 million, and that Brazil would be unlikely in the near future be able to retaliate against intellectual property -- for instance, lifting patent protection on pharmaceuticals, rather than simply raising tariffs on U.S. goods.

More: Link to the decision

Did You Know? Filings In Japan Decrease

2009-08-30T20:18:00.000-07:00

In China patent application filings keep increasing, this is a fact. This is another story in Japan. In this country, whether it is domestic patent applications or patent applications originating from foreign countries, the figures were down for 2008.

Take domestic patent application, the number of filings in 2008 was 330110 while in 2007 the number of filings was 333498.

For the patent applications originating from foreign countries, the number of filings in 2008 was 60892 while it was 62793 in 2007.

I do not believe that 2009 will be brighter than 2008!

I have a suggestions for the JPO: cut the filing/maintenance fees!

Source: http://tr.im/xwdz

Chinese Defense Industry Ready To Fight Outside the Battleground

2009-08-26T20:20:00.001-07:00

The Chinese patent office has announced that in 2008, the Chinese defense industry has filed 10,983 patent applications, 67.4% of which were for inventions. Interestingly this number is up 35.1 times what it was in 1998.
Will courts become a new battleground for this industry?

Busting patents Using Open Source Advocacy?

2009-08-06T21:08:00.000-07:00

An interesting article on cnet.com (link) about a theory that Open Source is used by Google as a tool to escape patent lawsuits.

Achieving High RO(Ip)

2009-07-27T19:17:00.000-07:00

The Globe and Mail has an interesting article about Nortel (link). Now that Nortel has announced that it was going to sale all its business units (link), Close studies have been done on its IP assets.

Interestingly, an analyst of JPMorgan Chase has apparently estimated recently that Nortel's wireless patents could generate royalties of $1-billion – and possibly upwards of $3-billion – over the next 15 years.

Question: How much would you offer, if that is true, to buy the patent portfolio?

China For What?

2009-07-16T18:36:00.000-07:00

In my work as an IP practitioner I often get the question of the pertinence of securing Intellectual Property in China. There is no straithforward response and I know that some people will disagree with me but I think that it is possible to solve the China/IP equation. This equation has many variables. It is just foolish to ignore China when we are talking about managing IP.
It is clear that China makes a lot of effort to get up to speed with IP.
Many initiatives are done on this front. Check this.
In any cases, many Chinese companies take IP seriously and are not afraid to enforce their IP rights in foreign jurisdictions. Check this interesting story about US companies being sued in the US by a Chinese company!

Michael Jackson's IP

2009-07-02T20:00:00.000-07:00

Believe it or not, Michael Jackson had also at least one patent in his own IP. In 1992, he filed a patent application for a "Method and means for creating anti-gravity illusion". He is a co-inventor in this patent (link).
He claimed small entity and the patent became abandonned by failure to pay a maintenance fee. The invention is at least used in Smooth criminal.

Claim 1 reads as follows:

1. A system for engaging shoes with a hitch mans to permit a person standing on a stage surface to lean forwardly beyond his or her center of gravity, comprising:
at least one shoe having a heel with a first engagement means, said first engagement means comprising a recess formed in a heel of said shoe covered with a heel slot plane located at a bottom region of said heel, said heel slot plate having a slot formed therein with a relatively wide opening at a leading edge of said heel and a narrower terminal end rearward of said leading edge, said recess being larger in size above said terminal end of said slot than is said terminal end of said slot; and
a second engagement means, detachably engageable with said first engagement means, comprising a hitch member having an enlarged head portion connected by a narrower shank portion to a means for raising and lowering said head of said hitch member above and substantially level with or below said stage surface, said head portion being larger in size than said terminal end of said slot and said shank portion being narrower than said terminal end of said slot, wherein said hitch member can be moved through apertures in said stage surface between a projecting position raised above said stage surface and a retracted position at or below the stage surface, and when said head portion of said hitch member is raised above said stage surface, said first engagement means can be detachably engaged with said projecting hitch member, thereby allowing a person wearing the shoes to lean forwardly with his or her normal center of gravity beyond a front region of said shoes, and maintain said forward lean.

For More: Click there.

Chavez Attacks IP

2009-06-21T20:25:00.000-07:00

According to this (link), Chavez is now attacking IP. His target seems to be the pharmaceutical industry. Since patents are key for promoting science and developping industry, this is sad news for Venezuela.
Venezuela is part of the WTO and the Paris Convention. However it is not a member of the PCT.
One of his quote: "That a laboratory does not allow us to make a medicine because they have the patent, no, no, no".
AIH AIH AIH!

More Software Patent Infos

2009-06-10T21:33:00.000-07:00

More information (link) available about software patents, thanks (again) to the EPO! However, it is not very detailed. I guess the purpose is just to give a broad idea of the situation.

Follow Me On Twitter!

2009-06-07T21:31:00.000-07:00

Microblogging is Cool.
Follow me on Twitter at: http://twitter.com/Alex_Abecassis
Join & Enjoy!

Regional or National Route? Don't Get Lost

2009-06-07T21:27:00.000-07:00

No the debate is not over. It should be reopen. Seriously, fees and pendency have increased so much in Europe that the EPO route may not be the straightforward and good choice.
In Germany for instance it is possible to obtain a patent in a relatively short period of time and at relatively good budget via a national route. Of course many parameters have to be taken into consideration when selecting one of the two routes: number of countries (a large amount of countries in Europe will favor the EPO route), a number of claims in the application (EPO now punishes harshly applicants filing large amount of claim), existence of a national route (some European countries do not accept direct national filings), etc.
It might therefore be a good idea to get a good road map before making decisions!

Patentability of Computer-Implemented Inventions in Europe

2009-06-06T21:39:00.000-07:00

Kudos again to the EPO for providing new e-learning modules on Computer-implemented inventions.
-Module 1 (link)
-Module 2 (link)

I hope that the other patent offices will soon follow the EPO and offer also pertinent materials like those.

Bilski Goes To Supreme Court

2009-06-05T12:28:00.000-07:00

This is now official since a couple of days, the recent landmark case that has modified the test for the patentability of business methods will now go to Supreme Court. All IP practitioners are eager to see what will be the outcome since the consequences of the future decision are big. Some practitioners even call it the case of a lifetime!! The public and the industry are also looking forward to the future decision since there are a lot of controversies attached to business methods.
(link to the petition)

Automatic Grant For PCT Applications?

2009-05-17T14:18:00.000-07:00

WIPO has published a proposal (link) for a reform of the PCT procedure. The reform proposes that search reports drawn up by two separates authorities should be examined by a third one. The result would then be, if the third examination is positive, an automatic grant in all member states!
This is a very substantive reform! While the idea might seem interesting, there are many drawbacks associated with it.

Strategic IP

2009-05-05T18:36:00.001-07:00

PWC has published an interesting report "Exploiting intellectual property in a complex world", Vol 4 Technology executive connections (link).

This publication has been made using a survey of senior execs. It gives some very interesting thoughts on IP and its management...

This is worth reading.

Did You Know? First Patent Holder Woman In The US?

2009-05-05T18:20:00.000-07:00

...was in May 5, 1809, exactly 200 years ago! More in this article...(link)

Very interesting! I learnt that the United States passed its first patent law in 1790, but that "few women applied to patent their inventions. One reason was that many states had laws that did not allow women to own property in their own right if they were married."