International patent prosecution

On September 21, 2017, the Comprehensive Economic and Trade Agreement (CETA) signed between the European Union (EU) and Canada provisionally entered into force in Canada.  Among other things, this agreement seeks to harmonize laws relating to protection of intellectual property in the EU and Canada, thereby bringing about a number of changes in Canadian patent law, particularly with respect to laws relating to the issuance of patents covering pharmaceutical products.  One of the biggest changes is the implementation of a Certificate of Supplementary Protection (CSP) Regime in Canada for pharmaceutical products that have been granted regulatory approval.

Continue Reading Canada Institutes Certificates of Supplementary Protection for Approved Drug Products

A variety of options are available to applicants to speed up patent application examination at the U.S. Patent and Trademark Office.  Four of the more common programs are explored in depth below, and other options for speeding up examination are available in a previous post provided by Mintz Levin.

Track One Prioritized Examination

Track One examination allows an applicant to pay for prioritized examination and to receive a final disposition usually in less than one year (compared to two to four years for regular examination) from the time Track One status is granted.  A final disposition may be a Notice of Allowance, a Final Rejection, or a Notice of Abandonment.  The program on average boasts a first Office Action in approximately 4 months and final disposition in less than 8 months. Continue Reading Fast Track Examination in the U.S. Patent and Trademark Office

We are excited to announce the arrival of Bill Kezer, PhD, the newest Member in our Intellectual Property Practice.  Bill joins our team in San Francisco, where he deepens our bench in the professional_william-b-kezer
chemical and pharmaceutical spaces.   He brings a unique perspective to client service, with experience as a research scientist and project leader at two major companies prior to law school, and then as in-house patent counsel before entering private practice.

Bill takes a business-based, product-driven approach to the strategic development of patent portfolios, due diligence reviews of targeted companies and technology, and comparative evaluations of competitive patented technologies. He also works with clients to procure global patent protection for pharmaceutical inventions, and focuses on product protection strategies involving formulations, drug delivery technologies, and dosing methods.

To read more about Bill’s arrival, please click here.

As 2016 begins and IP strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2015.  According to the many readers of Global IP Matters, hot topics included navigating the waters of U.S. patent prosecution, analyzing Federal Circuit appeals from the International Trade Commission, and handling Japanese patent oppositions.

Here are 2015’s top 5 most popular blog posts at Global IP Matters:

  1. RCEs and the New USPTO Patent Term Adjustment Rules – This post discusses U.S. Patent and Trademark Office (USPTO) rules for Patent Term Adjustment for patents where a request for continued examination (RCE) was filed during prosecution. In general, the first new rule, effective January 9, 2015, provides that applicants are entitled to B-Delay between allowance and issuance, and the second new rule, effective March 10, 2015, creates a new type of applicant delay when an RCE is filed after allowance.
  1. Suprema v. ITC: En Banc Federal Circuit Overturns Panel Decision, Finds ITC Has Jurisdiction Over Induced Infringement of Method Claims – This decision is particularly important for cases involving the software and high tech industries, which often rely heavily on induced infringement allegations. This blog post provides a detailed breakdown of the Federal Circuit’s opinion.
  1. Prepare for the Japanese Patent Opposition System Coming Soon – In advance of Japanese Patent Act revisions effective May 14, 2015, this post provided an overview of the changes and indicated how parties may wish to begin preparing and considering being more aggressive in monitoring competitors’ Japanese patent applications and allocating resources to file oppositions in Japan.
  1. Understanding Post-AIA Power of Attorney Procedures – Although the America Invents Act (AIA) implemented changes affecting Powers of Attorney in U.S. patent applications on September 16, 2012, pre-AIA Powers of Attorney are still relevant for many pending applications filed before that date. This post discusses in simple terms how Power of Attorney can be properly established before the USPTO in pre-AIA and post-AIA cases.
  1. ClearCorrect v. ITC: Federal Circuit Hears Argument in Case Which Will Decide Whether ITC Has Jurisdiction Over Digital ImportsClearCorrect v. International Trade Commission decided whether the ITC has power to exclude intangible items imported digitally rather than physically. This post summarizes the case’s intense oral arguments. (Global IP Matters later covered the case’s decision that overturned the ITC’s opinion.)

Two new Collaboration Search Pilot Programs are or will soon be available to patent applicants.  The Collaboration Search Pilot Program (CSP) between the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) is available as of August 1, 2015.  The CSP between the USPTO and the Korean Intellectual Property Office (KIPO) becomes available on September 1, 2015.  The CSPs, which are free, afford applicants the opportunity to expedite prosecution of related applications at the USPTO and at the JPO or KIPO.  Unlike the Patent Prosecution Highway, allowance need not be secured in one of the participating offices prior to expediting examination in another office.

In general, the CSPs allow the USPTO and the JPO/KIPO to each conduct a prior art search for its pending application and share the search results with the applicant before a first action is mailed to the applicant.  The pilot nature of the CSPs will allow the offices to evaluate whether the search sharing improves the examination process or provides more consistent results across the patent offices.  Additionally, U.S. applications under either CSP will be granted special status and placed on the examiner’s special docket, effectively moving the application up in the queue for speedier examination.

Continue Reading Expediting Patent Prosecution with the New Collaborative Search Pilot Program

From 1 March 2015, a new agreement will come into force that allows European patents to be validated in Morocco. This is the first time that a non-member country of the European Patent Organisation will have recognised European patents as national patents. It takes the number of countries in which patent protection can be obtained with a single European patent application to 41.

A request for validation in Morocco will be automatically included in any European or international application filed from 1 March 2015. For the request to take effect, however, a validation fee of €240 must be paid to the European Patent Office within 6 months of the publication of the European search report or on expiry of the time limit for regional phase entry of an international application, which is the same period within which the designation and extension fees are due. Limited and costly remedies for late payment of the validation fee will be available.

Similar agreements are expected to enter into force in Tunisia and Moldova in the future, pending ratification by their respective national governments.

The Japanese Patent Act was revised on May 14, 2014 to provide for post-grant oppositions within one year of the rule change, i.e., by May 14, 2015 (the exact effective date has not yet been set). Under the new opposition system, any party, including non-interested parties and straw men, will be able to file an opposition within 6 months of patent issuance and thus potentially cause invalidation soon after patent grant. In anticipation of the new system less than four months away, parties may wish to begin preparing now and consider being more aggressive in monitoring competitors’ Japanese patent applications and allocating resources to file oppositions, as discussed further below. Continue Reading Prepare for the Japanese Patent Opposition System Coming Soon

Authored by Julian Crump.

The Patent Prosecution Highway (PPH) gives applicants the opportunity to accelerate the examination of their patent applications in multiple countries once they have received a favourable report in one country.  This is useful to inventors and businesses because it allows foreign patents to be granted sooner, and by having IP offices make use of the work products of other offices also yields cost savings and other efficiencies to the benefit of all stakeholders.  In January 2014, further improvements to the system will be launched in the form of the Global Patent Prosecution Highway (GPPH).

The first PPH agreements were bilateral, allowing favourable examination reports in the office of first filing to be employed in a second office to short-circuit the examination process.  Since 2006, 30 separate bilateral PPH arrangements have been implemented, resulting in a complex network of agreements that is sometimes called “The Spaghetti Bowl“.  The problems with these early PPH agreements is that they required an applicant to have a positive examination report in his office of first filing before he could accelerate processing in the office of second filing, which was not always possible, especially if the first application was withdrawn in favour of an international application under the PCT, and there were disparate formalities requirements under different agreements, leading to even greater complexity.  Subsequent developments were the PCT-PPH, allowing users to make use of a favourable international preliminary examination report in participating offices, and, most significantly, PPH 2.0 or “Mottainai” which allowed applicants to make use of any positive examination report – not just one from the office of first filing.

Continue Reading New Global Patent Prosecution Highways to Accelerate Examination of Patents

Authored by Isobel Finnie and Jennifer Karnakis.

On 4 December 2013, the High Court of Australia handed down a decision confirming that methods of medical treatment can fall within the scope of patentable subject-matter.

It is interesting to note that this is the first time that the High Court of Australia has explicitly considered this question.  Accordingly their consideration involved an extensive analysis of case law on what is excluded from being a manner of manufacture and hence excluded from patentability.

The conclusion is good news in the form of certainty for patent applicants and patentees in the healthcare sector.

While methods of medical treatment fall within the scope of patentable subject-matter in the United States, it remains the case that methods of medical treatment are not considered patentable subject-matter by the European Patent Office. Patent protection for such subject-matter in Europe should be sought via alternative claim types, such as first and second medical use claim formats.

Authored by Alison Haile

The European Patent Office (EPO) has announced rule changes that will provide applicants with the option to have additional searches carried out during the European regional phase of Euro-Patent Cooperation Treaty (PCT) applications.

In future, for any applications for which the EPO was not the International Searching Authority (ISA) and the supplementary European search report has not been drawn up by 1 November 2014, the EPO will issue an invitation to pay one or more additional search fees for the second and subsequent inventions identified by the examiner.  An additional search report will then be drawn up for those inventions for which an additional fee has been paid and the applicant will be allowed to select the invention to be prosecuted within the application.

This is a significant improvement on the current situation, in which the search report is only drawn up in relation to the invention first mentioned in the claims and the applicant is forced into pursuing this invention or filing costly divisional applications if the subsequently mentioned inventions are of more interest.  Applicants who have avoided using other ISAs, such as the United States Patent and Trademark Office (USPTO), for this reason may therefore now select the ISA of their choice without fear of restricting their future options in Europe. Continue Reading More EPO Rule Reversals – Additional Searches Available During European Regional Phase