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Archived updates for Monday, March 26, 2007

IPR HelpDesk Summarizes European Grace Period Requirements

According to "Grace Period in the Industrial Property Law" from the IPR Helpdesk, the European Patent Convention (EPC) and Member States' patent laws do not offer a general grace period, except

Disclosure of an invention is not taken into account if it occurred less than six months before the filing of a patent application and if:

(1) a third person has disclosed the invention in an abusive way that obviously harms the applicants' interests;

(2) the applicant has displayed the invention at an official international exhibition falling within the terms of the Convention on international exhibitions.

. . . [however,] the Spanish patent law offers a grace period for tests carried out by the applicant or by his legal predecessor provided that they do not imply using the invention or offering it for sale, and that they were carried out during the six months preceding the filing of the application. Under Portuguese patent law, the novelty of an invention shall not be eliminated by communications made before scientific societies or professional technical associations or for the purpose of Portuguese or international competitions or exhibitions if the patent application is filed in Portugal within 12 months. Furthermore, the grace period for abusive disclosures does not have any time limit.

Applications for community design registration, on the other hand, can be filed up to a year after the first disclosure of a design without the designer's own disclosures counting against the registration. Six month grace periods for utility model applications are available in some countries.

For more on countries outside of Europe, see "Grace Period and Invention Law in Europe and Selected States."

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Archived updates for Thursday, March 01, 2007

USPTO Proposes Rules for Implementing PCT Filing Error Correction

On February 16, 2006, the United States Patent and Trademark Office (USPTO or Office) proposed amending the rules of practice in title 37 of the Code of Federal Regulations (CFR) to conform them to certain amendments made to the Regulations under the Patent Cooperation Treaty (PCT) that will take effect on April 1, 2007.

These amendments will result in the addition of a mechanism to the PCT system whereby applicants may request that the right to claim priority be restored in applications that meet certain requirements. In addition, these
amendments will provide a means for applicants to insert a missing portion of an international application without the loss of the international filing date. These amendments also will clarify the circumstances and procedures under which the correction of an obvious mistake may be made in an international application. Finally, the Office is proposing to revise the search fee for international applications.

Written comments must be received on or before March 19, 2007. No public hearing will be held.
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USPTO Proposes Three-Month Deadline and Electronic Response to Final Refusal

On February 14, 2007, The United States Patent and Trademark Office (‘‘USPTO’’) proposed amending 37 CFR 2.64 to require a request for reconsideration of an examining attorney’s final refusal or requirement to be filed through the Trademark Electronic Application System (‘‘TEAS’’) within three months of the mailing date of the final action. Comments must be received by April 16, 2007 to ensure consideration.

According to the USPTO:

Under the current version of the rule, wherein the applicant may file a request for reconsideration at any time between the final action and the six-month deadline for appealing or petitioning, many applicants simultaneously seek reconsideration and file an appeal. Because the examining attorney loses jurisdiction over the application upon the filing of an appeal to the TTAB, this simultaneous pursuit of reconsideration and appeal often necessitates a remand by the TTAB to the examining attorney for a decision on the request for reconsideration. If the request is denied, then the case is transferred back to the TTAB. If the request is granted, and the
examining attorney reconsiders the final action, the appeal or petition may become moot. The need for these remands and transfers contributes to the burden on the applicant and the USPTO, and prolongs the pendency of the case.

In order to eliminate some appeals and petitions and reduce the need for these remands and transfers, the proposed rule provides that a request for reconsideration must be filed within
three months of the final action, while the six-month period for appeal or petition remains unchanged. . . .

The proposed rule still affords applicants the opportunity to submit amendments for the full six-month period from the date of the final action, and maintains the practice under the current rule that such amendments are entered if they comply with the
applicable rules and statutory provisions. . . .

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USPTO Proposes Disciplinary Rule Changes

On February 28, 2007, the U.S. Patent and Trademark Office published
a supplemental notice of proposed rule changes
governing the conduct of investigations and disciplinary proceedings. Interested individuals are invited to comment on the proposed revisions in the rules. To be ensured of consideration, written comments must be received on or before May 29, 2007.
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European Patent Opposition Statistics for 2005

According to James Wilding and Andy Bridle writing for Managing Intellectual Property, oppositions were filed against 5.4% of granted patents in Europe in 2005:
  • Of the 2,330 opposition cases decided at first instance in 2005, patent revocation was ordered in about 38% of cases,
  • maintenance of the patent in amended form was ordered in about 32% of cases, and
  • the opposition was rejected in about 30% of cases.
  • Appeals were filed against 943 decisions by the Opposition Division in 2005
  • The average duration of appeal proceedings pursuant to inter partes disputes before the EPO in 2005 was 31 months.

"It is relatively inexpensive to file an opposition," they write, "but it can have the effect of removing a patent which blocks a technology area of interest, restricting the scope of an overly broad patent or simply provoking licensing discussions with the patentee."

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