Follow-Up to Chinese Patent Filings
December 23, 2011 By
As a follow-up to a previous post regarding China’s surge in patent applications, it is worth noting several important aspects of the Chinese patent system. The first is that most patent applications in China are not based on substantive examination. Instead, the applications are simply approved if the application is correctly filled out. Essentially, most of the patents issued are “registered” rather than examined. Secondly, the filing costs for domestic companies are subsidized by the Chinese government, making it rather cheap to file in China. Third, companies which own a certain number of patents are classified as “high tech” companies which are subject to lower taxation, providing a powerful incentive for filing patents. As a result of the forgoing, at the present time, Chinese patents are oftenn of low quality.
An excellent blog post on this subject can be found here in the Intellectual Asset Management blog.
Worldwide Patent Filings Surge
December 21, 2011 By
The World Intellectual Property Office (WIPO) has issued a report (2011 World Intellectual Property Indicators (WIPI) Report) which details the state of world intellectual property filings — and the findings are that despite the economic downturn, 2011 has seen a marked increase in worldwide patent filings. According to the report, which shows data up to 2010, the US and China accounted for about 80% of the 7.2% growth in patent filings. After two years of almost no growth in patent filings, the US Patent and Trademark Office saw a 7.5% increase in 2010. China saw a 24.2% increase. The European Patent Office experienced a 12.2% growth. Also, for the first time, the Chinese Patent Office has surpassed the Japanese Patent Office in terms of number of filings.
The report shows that computer technology, electrical machinery, audio-visual technology and medical technology accounted for the largest shares of patent filings worldwide.
China Leads World in Patent Filings
December 20, 2011 By
Thomson Reuters has issued two research reports assessing innovation in China. The first, Invented in China assesses total patent volumes and highlights growing areas of innovation activity in China. Special Report: Trademarks in China tracks trends in trademark activity in China over the last 20 years and analyzes trademark activities of the world’s leading brands.
The findings are astounding:
Patent Filings: According to estimates, China now leads the world in patent application filings. By the year 2015, China will publish about 393,000 applications annually. In contrast, US companies (and individuals) now account for about 240,000 patent applications per year. However, the US Patent & Trademark Office processes about 500,000 applications per year, some of which are filed by foreign entities.
Trademark Applications: Despite being seen as a country that does not respect branding and where counterfeiting is still widespread, since the year 2000, trademark filings have increased 450%.
However, the research also shows that the most innovative companies in the world are located in the United States, Europe, and Japan. Furthermore, Chinese companies have been slow to expand globally — only 5.6 percent of Chinese inventions are protected by international filings. From what I see, this is going to change in the next few years.
Exhibit Honors Patents and Trademarks of Steve Jobs
December 5, 2011 By
A new exhibit at the United States Patent and Trademark Office (USPTO) honors the patent and trademarks of Steve Jobs. The free exhibit will be open to the public until January 15th at the atrium of the Madison Building, in Alexandria, Virginia, and features 30 giant iPhones displaying over 300 patent and trademarks in which Jobs was named an inventor.
The exhibit was designed by Invent Now, Inc., a non-profit organization dedicated to fostering invention and creativity through its many programs. Invent Now also runs the National Inventors Hall of Fame and Musem located on the USPTO campus.
Photo used by permission from Mac Rumors.
Miscellaneous IP Nuggets #6
November 24, 2011 By
- The USPTo has announced an exhibit highlighting the patents and trademarks of Steve Jobs. Located at the atrium of the Madison Building at the Patent Office’s headquarters in Alexandria, Virginia, the exhibit features more than 300 patents in which Jobs was named an inventor. The exhibit was created and designed by InventNow, Inc. a non-profit group fostering creating and invention.
- There is an interesting article in Wall Street Journal’s Law Blog concerning attempts to trademark the term “Occupy Wall Street”. As has been reported elsewhere, several people have filed applications for this mark. Now the Trademark Office will have to decide to whom it should award the mark. None of the applicants are using the mark in commerce, so the rule is to give it to the applicant who applied first. The applications were submitted within a few hours of eah other. One applicant who applied three hours after the first applicant stated that he searched the Trademark Office website and did not find a pending application… which just goes to show the limitations of a trademark search.
- The new Amazon Kindle tablet computer has already come under fire for alleged patent infringement. A company called Personal Audio, LLC, which was successful against Apple, has filed law suit against Amazon for infringement of its “Playlist” patent.
Worldwide Licensing Revenues Estimated at $180 Billion
November 15, 2011 By
According to a recently published report by the World Intellectual Property Organization, worldwide royalty and licensing revenues amount to an estimate $180 billion per year. The report concludes that growing demand for such rights is stimulating innovation in business. According to the report, royality and licensing revenue was only $2.8 billion in 1970 and $27 billion as late as 1990.
The report notes that intellectual proptery (IP) “allows firms to control which knowledge to guard and which to share so as to maximize learning – a key element of modern open innovation strategies.”
While the traditional model has been for IP to be largely developed in the richer countries, the fastest growth in IP is now coming from the less developed countries. The reports asserts that the gap between richer and poorer countries is narrowing.
Hidden Heroes
November 11, 2011 By
An interesting exhibition has opened at the Science Museum in Londen called “Hidden Heroes”. The exhibit celebrates those every day objects that most people take for granted. Examples include the paper clip, pencil, clothes pin, and the tea bag. My personal favorite in terms of simplity and usefullness is the rubber band which was patented in Britain in 1847 by Stephen Perry.
The complete list of items in the exhibit are as follows:
| Pencil | Corkscrew |
Reflector
|
| Air Bubble Film | Ball Point Pen | Clothes Hanger |
| Paper Clip | Lego |
Condom
|
|
Wall Plug
|
Ear Plugs | Tin Can |
|
Snap Fastener
|
Facial Tissue | Bottle Cap |
|
Coffee Filter
|
Sticky Notes
|
Lip Stick |
| Beverage Carton | Zipper |
Thumb Tack
|
| Cable Tie | Multipack Carrier |
Baby Pacifier
|
| Adhesive Tape | Umbrella | Velcro |
| Flip Flops | Safety Match | Tupperware |
| Adhesive Bandage | Tea Bag | Folding Yardstick |
|
Ring Binder
|
Light Bulb | Clothes Pin |
| Shipping Container | Rubber Band | |
| Egg Carton | Carabiner | |
| Thermos Flask | Chop Sticks |
Girl Beaten for “Copyright Infringement”
November 4, 2011 By
While we do not condone illegally downloading songs from file sharing sites, one father in Texas took it a bit far when he discovered his 16-year old daughter downloading from Napster.
In a secretly taped video that has since gone viral on YouTube, the father, a Texas Family Court judge, is seen using a belt to beat his daughter “into submission”. It shows Ms. Adams, now 23, crying and trying to defend herself. It opens with the judge saying, “Go get the belt. The big one. I’m going to spank her now”.
The judge, who will not be prosecuted due to the statute of limitations running, has since declared, “In my mind, I haven’t done anything wrong other than discipline my child after she was caught stealing.”
“After my patent application is filed, then what?”
October 18, 2011 By
After an inventor files a patent application, several key events occur. Additionally, there will be additional costs / fees along the way. The following summarizes the post-filing process.
EFS Receipt
Assuming that your application was filed using the Patent Office’s Electronic Filing System, an electronic receipt including a serial number and filing date will be immediately provided . Ask your patent attorney for this information, and make sure you maintain it in confidence.
“Patent Pending”
As soon as you file a patent application (including a provisional application), you may (and should) mark any product that would be covered by the patent were it to issue with the term “Pat. Pending” .
Official Filing Receipt
Shortly after filing, the application will undergo a preliminary review. The Patent Office will look over the application for formal matters. It is important to carefully review the Official Filing Receipt to ensure that the inventorship information is correct. Bring any errors to the attention of your patent attorney for corrective action.
Notice to File Missing Parts
Any errors found by the Patent Office during the formalities review will be noted on a Notice to File Missing Parts. These must be corrected within two months (which can be extended for a fee). The most common problem is with drawings that are not in an acceptable format.
Patent Application Publication
This will occur 18 months after the earliest filing date. So, if the application claims the benefit of a provisional application, publication will be 18 months from the provisional filing date. Otherwise, it will occur 18 months from the non-provisional filing date. (The only exception to publication is if your application was filed with an approved Non-Publication Request with the appropriate fee.)
In most cases, the following events will occur after about two years or more from the filing date. However, once the examination process starts, the Patent Office will expect timely responses from the applicant.
Restriction / Election of Species Requirement
In many cases, the examiner will issue an initial Office action in which it is asserted that the application claims more than one invention which is patentably distinct from another (restriction) or the application would cover more than one variation (species). The applicant is then asked to elect a group of claims to initially have examined. The withdrawn claims can later be filed in one or more Divisional applications at any point to the final disposition of the parent application. Even if applicant disagrees with the examiner, the applicant must elect a group of claims to prosecute. The restriction / election of species requirement can be challenged by filing a response or petition arguing that it is improper.
Non-Final Office Action(s)
In most cases, the first Office action on the merits will reject all pending claims. It is important to understand that you must respond to the Examiner’s rejection in full within the statutory time period (six months) or the application will go abandoned. After three months, extension of time fees will be required. To prepare a response, your patent attorney will charge a fee, which depending on complexity, is usually between $1000 and $1500. This amount could be less if the Office action is relatively easy to respond to and the subject matter is non-complex, but it could be higher if the Office action is very detailed (long) and the subject matter is difficult. Usually, it will be easier for the patent attorney to draft a response if he or she drafted the application.
Responses to the Office Action can be done by amending the claims, arguing without amending, or a combination of amending the claims and arguments. In certain cases, “evidence” can be submitted in the form of an Affidavit from an expert in the field (such as experimental data showing an unexpected result).
Examiner Interview
It is often a good idea to have your patent attorney conduct an examiner interview. Most of the time, this occurs via a telephone conference with the examiner (and sometimes the examiner’s supervisor). Proposed claim amendments can be submitted for examiner review. The substance of the interview is then entered into the record. In some cases, an agreement can be reached to allow the case, though most examiners will no longer do this. Note that your patent attorney will usually charge a fee for conducting the examiner interview. However, this can well be worth the expense, if it helps expedite examination.
Final Rejection
If the Examiner is not persuaded by the response, the next Office action could be a Final Rejection. (In some cases, however, the examiner will not make the action final – giving applicant the opportunity to respond again without limitation.)
Response to a Final Rejection is tricky. Examiners do not have to enter an after-final claim amendment, and most will not do so. The applicant may wish to respond to the final rejection only with arguments by filing a Request for Reconsideration.
Additionally, the Examiner may have indicated allowance of certain claims. (Sometimes, the Examiner will indicated that some claims are allowable in a non-Final Rejection). At that point, you would have to decide whether amend the claims such that the allowable subject matter is incorporated into the independent claims so that the case would be in condition for allowance.
It is not at all unusual for the Examiner to issue 3 or 4 (or more) Office actions prior to final disposition of the case. Thus, it is critical for the applicant to properly budget. Often the most valuable patents will require the most effort. On the other hand, be sure to carefully review the prior art found by the Examiner to ensure that your invention is truly patentable. If it is clear that the prior art cited by the Examiner is very close or actually on point and you cannot amend around it, you will have to abandon the application.
Request for Continued Examination (RCE)
Luckily, there is a way to continue the examination process after receiving a Final Rejection. This is by filing a Request for Continued Examination (RCE). However, there is a fee to do so ($465). When an RCE is filed, the applicant can include amendments and arguments. There is no limit on the number of times an applicant can file an RCE, so, in theory, the prosecution process can continue indefinitely.
Appeal to Board of Patent Appeals and Interferences (BPAI)
At any point after receiving a final rejection or being twice rejected, the applicant can appeal the case to the BPAI. However, there is considerable expense to doing this. The filing-associated fees include a Notice of Appeal $310) and a Appeal Brief filing fee ($310). Since preparing an appeal brief is a lengthy process, most patent attorneys charge several thousand dollars for this. Appealing the case is often a good idea when it appears that the examiner will not change his or her mind and when the patent involves subject matter that is valuable.
Notice of Allowance
If the examiner determines that your application should be issued (or the BPAI made this determination), the Patent Office will issue a Notice of Allowance. You must pay the issue fee ($870) and publican fee ($300) within two months. This cannot be extended.
Issuance
After payment of the issue fee and publican fee is paid, you will receive a date on which the patent will issue. Patents issue each Tuesday of the week. There is no fee for the patent to be issued. You will receive an original copy of the patent (with a ribbon).
Maintenance Fees
All utility patents are subject to maintenance fees, which must be paid to maintain the patent in force. These fees are due 3 1/2, 7 1/2 and 11 1/2 years from the issue date, as folows:
3 ½ years: $565
7 ½ years: $1,425
11 ½ years: $2,365
Other Costs and Considerations
In addition to the above, there can be other prosecution-related fees and costs. The most common additional expense involves “late fees”, fees to prepare and file petitions, and costs for correcting drawings. The current Patent Fee Schedule can be accessed here.
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