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Archived updates for Wednesday, November 07, 2007

IPO Calls for Trilateral Patent Format Changes

According to a paper prepared by J. Jeffrey Hawley and circulated by the Intellectual Property Owner's Association, overall patenting costs could be significantly reduced by harmonizing the formal requirements for patent applications in different jusrisdictions, including:

  • Changing U.S. practice to allow “National Legends” to be cited by applicants in a paper that is seperate from the specification. Thanks to Chriostopher Singer at Patent Docs for explaining that
    This refers to the requirement in the U.S. that applications must contain
    sections such as "Cross-Reference to Related Applications" and "Statements of Federal Sponsored Research." Since these sections are particular to the U.S. and need to be removed upon filing in Europe and Japan (and must be added to original EP and JP applications when filed in the US), these sections would not be required in the filed patent specification.
  • Changing U.S. practice to preclude any claim scope limiting effect based on the presence of reference numbers in the abstract or claims.
  • Changing European practice to preclude requiring conformance of the specification and allowed claims.
  • Changing European practice to preclude requiring the insertion of a description of the prior art applied during the examination into the description.
  • Changing Japanese practice to provide for the citation of specific prior art references in a separate paper rather than in the description of the application.

The Trilateral Patent Offices (USPTO, EPO and JPO) have reportedly agreed to consider a working group to consider these five issues, while WIPO has been conspicuously left on the sidelines.

And while we're at it, how about

  • Changing U.S. practice to abolish the Declaration and get rid of the inventor/applicant distinction
  • Changing U.S. practice to abolish the mutiple dependent claiming surcharge, per commenary from Bob Lelkes.
  • Agreeing on a universal incorporation by reference practice
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