Erik van der Vyver (Von Seidels) – South Africa

My name is Erik van der Vyver. I’m going to give you a brief introduction essentially on South African patent law. Contrary to popular belief, over and above having fair and equal elections, and hosting major sporting events, we
also protect Intellectual Property.

So South Africa is in with the PCT. We have got a 31 month filing deadline, although a 3 month extension is available as of right, and you can apply for the extension at the same time of applying for the patent. So, it’s not necessary to actually do anything up-front.

There are no excess fees payable, so number of claims, number of pages doesn’t matter. The major reason for it is that the Patent Office will not read the Specification, so they really don’t care how much you put in there.

Because, similar to Singapore, South Africa is a non-examining jurisdiction. I notice that Singapore refers to it as a self- examining jurisdiction, which I think is actually quite a nice description, because that is essentially what it does. It places the onus on the applicant to make sure that the application that is before the patent office is in as
patentable format as possible. There are various procedures that allow for this to take place. One of them is that amendments are relatively easy to do, and they can be made at any stage during the life of the patent. Before the
acceptance of the patent, you can even make broadening amendments to the claims. After acceptance and after publication, you can still make any amendments, as long as they fall within the scopes of the claims as originally
filed. The amendments obviously do pose additional costs. They are normally non-exorbitant; they are very minimal, particularly because the amendments would normally have been made in foreign/other jurisdictions, so it’s normally just a case of bringing the South African claims in line with the examined claims in the other jurisdictions.

Acceleration can be very affective in South  Africa. There’s a very quick procedure. It’s basically possible because they don’t get examined, so if you want your application granted very quickly, it’s quite easy to do so, as long as you
fulfil the formal requirements – so long as your declarations and all the rest have been filed, you can have your application accepted within a question of months (one, two, or three, is usually the benchmark). After that it will be
published. Within a further two months, you can have a granted patent, as quickly as four to five months after you file the application. If you’re very confident of your patent application, or your patent specification and the
patentability thereof, it therefore makes it a nice vehicle if you want to test your patent, or if you actually want to test the strength of the patent in South Africa via the litigation. If there is infringement, you can enforce it very quickly, and the patentability of the patent will normally then be looked at during the investigation of the infringement proceedings as well. So, it can be a very quick procedure, and quite effective, and quite cost effective, as the cost for litigation in South Africa is substantially less than a few other jurisdictions.

It is normally suggested that you slow the acceptance process down. This is quite a simple procedure. You just apply for the delaying of the acceptance of the application. The major reason for it being to allow you sufficient time to have your examined patents in your other jurisdictions to proceed to grant, so you can see what amendments need to be made to the claims to also affect them in South Africa. You have an automatic 18 month extension as of right, then a further 3 month extension, and then any other extension can be granted on good cause shown to the patent office, or to the registrar. Good cause includes awaiting the outcome of a prosecution of a corresponding application examining jurisdiction with a view to making amendments. It is very important to note that a failure to bring the South African patent into line, into a patentable format, can be very detrimental to you a later stage. There was a recent decision – well, recent, about a year or two ago – where the court held that the applicant – there was a culpable delay in bringing the South African application in line with the foreign examined applications, and as a result the courts refused the patentee the right to enforce the patent at all. So, it is a crucial thing to keep in mind.

Luckily, it’s not only your job; it’s my job as a South African attorney to remind you that you have to actually bring the South African patent application in line, and we will do that by monitoring your foreign applications as well.

South African patent law is based a very large extent on UK law, so we tend to follow the UK quite closely. Our courts have not made any rulings on the patentability of software, although we expect to go very much a similar route as the UK.

Business methods – although you will get a patent for it, they will not be enforceable – they are not considered to be patentable. It’s interesting, I actually saw a patent the other day in the patent journal, for a hamburger, and I don’t know who filed it, but obviously it went through because it wasn’t examined. We found the invention and suggested that they also file it in the States – they might make some money of that.

There are no formal disclosure requirements. As I said, the most important thing is that the applicant is expected to remedy the defects and claims based on its foreign prosecution – and I’ve already mentioned that.

Relevant markets for South Africa – Obviously mining is a very big industry. The communications and IT. especially wireless communications. There is a massive explosion in wireless communication in Southern Africa, as well as the rest of Africa, and it’s definitely a very lucrative market to enter at the moment. It’s probably evidenced by the fact that one of our local cell-phone manufacturers (or cell-phone service providers) has currently become the sponsor of Manchester United, so they must be doing well. There is also a low-cost banking explosion, especially from the cell-phone side and cell-phone banking, so that’s a very active industry. Then obviously healthcare, bio-medical devices, medical devices, banking, agriculture; and, very importantly South Africa is seen at the moment as the gateway into sub-Saharan Africa, and also the rest of Africa.

So, our firm deals with patent and trademark applications throughout the whole of Africa. It can be notoriously difficult to deal with a few of the African countries, and we’ve set up a network which allows us to do that within reason, and I think the most important thing is before you file in Africa, or anywhere throughout Africa, just take advice from someone who knows the landscape a bit better. There are certain countries that you should definitely file, and some which are notoriously difficult to actually get your protection, and to enforce your protection.

Boo Yee Swan (Lee & Lee) – Singapore

Hi everyone, I’m Boo Yee Swan from the law firm Lee & Lee in Singapore. Lee & Lee is a full-service law firm, and we do have an IP department which is a medium-sized practice.

I’ll just talk about National Phase entries today, inSingapore.

The deadline is 30 months, and we have one extension which can be granted automatically for a period of up to 3 months. So you can choose to elect whether it’s one month, two months, or three months, but there is only
one extension which is automatic. So, you need to know exactly how many months you want to enter. A second extension or subsequent extensions are possible, but these will have to be lodged together with statutory declarations to setting out the grounds on why the extensions are required. For the first extension, extension fees are Singapore $200 per month requested. That works out to be about US $167 per month. The exchange rate now is about US $1 toSingapore $1.2.

Excess fees – When we are paying grant fees for up to 25 claims, it is Singapore $200, and for claims above 25, you will have to pay extra fees of $20 per claim.

Let me just talk a bit about the Singapore patent system and a few unique features of our system to give you some background, before we proceed. The Singapore system is slightly different from other jurisdictions. It is relatively new because our Patents Act only came into force in 1995.  The government thus aims to avail applicants of more options to obtain grant in addition to the normal route of requesting search and examination. So you’ll
see later on as we go through the presentation that there are various routes to grant which applicants can actually choose.

It is also quite easy to obtain grant in Singapore. As long as the applicant actually elects a route to grant by the prescribed deadline, pays the grant fees, files the proper documentation, the Registrar will just grant the patent,
regardless of whether your examination report is favourable, or whether it actually contains matters waiting to be resolved, or it is negative. Once you actually elect a route to grant and pay the grant fees, the Registry will just
issue the grant. This is because the Singapore patent system is a self-examining one, therefore it places the onus of obtaining the best possible patent protection on the applicant. Hence, if you do not actually amend your
patent application or ensure that it’s properly worded, then the patent could then be subject to revocation post grant. For your information, in Singapore, we do not have any pre-grant opposition proceedings available.

The other unique feature about the Singapore patent system is that we have a 2-track system of obtaining grant. There is a fast track and a slow track. People may think that by choosing the slow track you are actually slowing down the patent application process, but that is really not the case. Choosing the slow track simply gives you a bit more time to consider your options before you elect a route to grant. So, for example, if you feel at that point in time, maybe immediately after entering National Phase, that you already have the proper documentation to elect a certain route to grant and you proceed to pay the grant fees, then even though you have actually selected the slow track, your patent application will still be processed by the Registry quite soon after, and you will then obtain a
certificate of grant. Hence, the slow track basically just gives you more time to consider options.

Let’s talk about the fast track first and the routes to grant which are under the fast track. By default, a Singapore
application will proceed via the fast track. So if you don’t take any particular action, then it will just proceed by the fast track. Under the fast track, the applicant must elect a route to grant by 42 months from the priority date. What are these routes to grant? There are two under the fast track. One is that you can elect to file a Notice of Intention to rely on the International Preliminary Report on Patentability (IPRP). This is quite a popular route which is chosen by many applicants. It’s usually chosen if the applicant wishes to secure grant based on claims which have been examined and referred to in the IPRP. No official fees are payable for this route.

The second route is to rely on the acceptance or grant of a corresponding application, what we refer to as filing “prescribed information relating to a corresponding application”. For this route, there are also no official fees
payable. The applicant usually chooses this route if he wishes to secure grant based on claims which have been examined and referred to in the corresponding application.

What then would you consider to be a “corresponding application”? Under our Act, a “corresponding application” is one which is filed with one of the following patent offices: U.K., U.S.A., Australia, New Zealand, Japan, Korea,
as well as Canada (but only those filed in English), and the EPO (but also only those filed in English).

What do we mean by “prescribed information”? The applicant must file a certified copy of the patent grant of the corresponding application that you’re relying on, or if it’s not been granted yet, then other documents which set out the final results of search and examination as to substance of that corresponding application, plus a copy of the patent claims referred to in the final results. (If these are not in English, then we need to lodge verified English
translations). We will also need to file the IPC symbols which have been allocated to the application, or, if they have not yet been allocated, then the IPC symbols which, in the applicant’s opinion, should be allocated.

Let’s go on to the slow track. To transfer to the slow track, the applicant must file a request for block extensions of time by the deadline of 39 months from the priority date. This deadline is quite important because it’s non-extendible. No official fees are payable. However, you have to distinguish this from the Convention national applications – no official fees are payable only for PCT national phase entries, not for national applications filed under the Paris Convention. If it’s a regular Convention national application in Singapore, then the official fees for transferring to the slow track can be quite hefty (which is $1800 right now). Once you’ve transferred the application to the slow track, the deadline for electing a route to grant would be extended to 60 months from the priority date. For applicants who have chosen to rely on a corresponding application, transferring to the slow track may be quite useful, because sometimes you may not get grant of your corresponding application by 42 months. So, if you do not transfer to the slow track and you face a deadline of 42 months, and if you do not obtain grant of your corresponding application by then and you do not want to rely on the IPRP, then you will have to start paying extension fees from the 42^nd month. So, transferring to the slow track gives applicants the option of buying more time while you await the results of your corresponding applications. Some applicants may have filed corresponding applications in the USA., or UK, EPO, for example, and we have had the experience that many times, some of
these applications do not proceed to grant by 42 months, and we are not able to rely on them by the 42–month deadline.

So, we always encourage our clients to elect the slow track, because you really have nothing to lose – no official fees payable, and it gives you more time; and if it happens that your corresponding application is allowed well before
the prescribed deadline, you can still go ahead and elect a route to grant, file the proper documentation, pay the grant fees, and the Registry will just process your application ASAP.

For the routes to grant under the slow track, apart from relying on the IPRP, or a corresponding application, you have one more choice which is to request search and examination; or to request examination plus a copy of your International Search Report; or you can request examination plus a copy of the Search Report of your corresponding application, if your corresponding application has not yet proceeded to grant. This must however be filed by the 39^th month, so together with the transfer to the slow track, we will have to file the request for search and examination, or the request for examination.

In Singapore, software and business methods are not excluded matter from being patentable, so as long as your invention is able to fulfil the requirements of patentability – of novelty, non-obviousness, and industrial applicability – then a patent can be granted.

We have no disclosure requirements.

I can’t think of any particular industry that we are really relevant for, so I guess all products.

Israel Jimenez (Alvarez Delucio) – Mexico

Well, I’m going to talk about Mexican practice.

Kind of patents you can protect in Mexico is 2 ways – regular ways of the Paris Convention, and the other way we have PCT, National Phase – Phase 1, National Phase – Phase 2.

Deadlines –
The deadlines on the Paris Convention, we have 12 months, and for PCT we have 3 months. No more months, no more extensions. It’s important for you. Mexico also has a lot of ways to protect when your clients or your inventors disclose without any protection.  Mexico allows 12 months after disclosure.

Excess fees –
This is good news for you. No official fees are paid for excess pages in description or excess of claims.

Acceleration -
As I made you aware, according to our practice we can submit a copy of a corresponding granted patent, and also we can submit documents related of technical examination report. Such documents can be submitted during the
prosecution, likewise to accelerate the prosecution of these patent applications, Mexico takes advantage of having a neighbour in the U.S. For this reason, Mexico is part of the Pilot Program of the PPH process from March 1^st this year, and as you know, we have a very, very short time, but this maybe is a new way to accelerate all the patent applications in the future.

Publications –
After satisfying the formal requirements the patent application is published in the official gazette. It’s important to note that no examination report is necessary.

What is good news for you is that the examination fees are included in the final fees.

Pharmaceutical Products – In my opinion, this is a hot topic for Mexico, because these kind patents have some difficulties to be granted, but it’s important to inform you  that Mexico allows inventions of pharmaceutical products direct to the second use but they need to adopt the Swiss Style claims.

The one new hot topic in Mexico, concerns the Patent Applications direct to the Regime Dosage. In this respect
we had some meetings with Mexican authorities to discuss this topic but until now such Patent Applications are in discussion.

Software and Business Methods – Well, this is another hot topic, as in other countries. As you know, the software can be protected as copyright, but in Mexico the Patent Application which involves software can be patented. But just In case of such Applications, if there is a technical contribution to the prior art, this
is the only way you can get a patent. An example for this kind of patent can be a computer controller process which moves a robot arm, etc., but until now we had some meetings with the Mexican authorities in order to determine what happened with these applications, and we are working to establish the guidelines for this matter.

In connection with the Business Methods, there are a lot of patents trying to protect them, but until not in Mexico,
they are not patentable.

Disclosure requirements – Well, it’s important to point it out that Mexican Examiners are requiring us to submit relevant documents in order to demonstrate the novelty and inventive step of the invention. Such documents can be submitted in the English language. An example of this is that the Mexican examiners require us to file the translation of Russian or Chinese documents, because it’s impossible to understand them.

Third party observation – this is the last amendment in our IP Mexican Law: “A third party can submit some
information to demonstrate a lack of novelty and inventive step of the patent applications. Between the 6 months after this application has been published in the Official Gazette.

Brian Goldberg (E|K|M Patent & Trademarks) – Australia

My name is Brian Goldberg. I’m from EKM Patent & Trademarks inAustralia.

I’ll read my slides, just because I know then that definitely sticks to the time limit and Kimberley will invite me
back next time.

I thought I’d start with something that might be slightly different, and then go through the other scope of the patent aspects that we’re looking at, and, that’s an innovation patent. In Australia we have something known as an ‘innovation patent’ and it’s intended to provide IP rights for those incremental- and lower-level inventions that would not sufficiently be inventive to qualify for a standard patent. So, it’s got a lower threshold than a normal inventive, so all you need is an innovative step.

Some benefits are:

• that from an enforcement perspective, once you have it certified, it’s a process as well that automatically gets granted, and then you need an examination for certification.

• Once it’s certified, it’s legally enforceable – and that’s probably its strongest benefit.
• You can still convert it back to a standard patent, but there’s a quick time-limit of a month before this one will be granted.
• It’s fast, because you instantly get a granted innovation patent.
• And, because of the lower-threshold, it’s actually harder to invalidate, so you can be in a strong position to
  enforce it.

Some further benefits:

• If examined and certified, the innovation patent offers the same level of protection. And, in Australia, there’s not that many infringement matters in the patent area, due to the cost in other areas and the time taken. But, this is certainly an avenue that patent holders are looking at to enforce their rights.
• It’s cost-effective both from a filing point of view, as well as knowing that you’re going to get it certified and
  granted. It means you can put the budget in place, or your clients can put the budget in place to do the enforcement quite confidently.

However there are limits. The limits are:

• It’s Australia only.
• It’s 8 years. You only get the rights for 8 years, not 20.
• There’s only 5 claims allowable in an innovation patent. So you’d have to think through the 5 most relevant
  claims.
• And as I said, initially it was probably taken not so quickly, but now it’s certainly being used in the IP portfolio management of companies inAustralia.

So, moving to the normal one. The deadline in Australia is 31 months from the earliest priority claim. And just to make a note, there’s no Power of Attorney or Authorisation Agent required for National Phase or Convention applications.

Extensions –
So as long as you don’t unintentionally miss doing something or paying the fee, you can apply for an extension under Section 223 of the Patents Act. So probably the only thing you could do to muck this up is send us an email saying ‘Our client does not intend to proceed’ and then a month letter get an email ‘Oh, by the way, he’s changed his mind; he wants to proceed’. So, if you don’t do that it’s usually okay. The 2 main reasons are an error or omission by
yourself, an employee, an agent or attorney, or circumstances beyond your control – delays in post, courier, sickness, accident – and that’s not a definitive list, so we could add into there. However, it doesn’t cover for lack
of funds to pay excessive fees. So, if the client didn’t continue because of fees at the time, that’s not a strong enough reason. And the applications for an extension of more than 3 months are advertised by the patent office.

In terms of patent fee increases – on the 29^th June the government approved increases in patent fees, which came into affect on 1^st August. The total patent revenue for the financial year had increased by 6.8%, so that’s a small indication for us. Though, probably what’s important from a day to day basis if you are dealing with Australia
is that our dollar has actually increased. Now, for the first time in my life, (so closer to 40 years) it’s above parity with the U.S. dollar (and I haven’t checked today, but it was $1.07 when we left, which is very unusual – 10 years
ago it was 50 cents to U.S. dollar, then it lingered about the 60, 70, and now it would be above parity).  So the firms,
including us, we all haven’t worked out where we’re going to hedge our bets, but that has increased the costs, and something to note for a daily basis.

Acceleration – Presently it’s taking about 3 years to get an examination report. In fact, what IP Australia, the governing body in Australia have done, probably quite at the forefront of patent examination, is that they’ve set up a
patent factory outside the patent office in a capital city, just across the road from us actually in Melbourne, and they’ve just got patent examiners sitting there in a factory environment churning out patent examinations. So, they’re very well set up for patent examinations and to attract those people they need to relocate to the main cities. And, the main reason that you’d want to accelerate, or that’s accepted are either, possible infringement reasons that you’d like to enforce you rights, as well as commercial reasons, such as, entering into license agreements, because in
Australia we understand that there’s bigger markets internationally. So, that’s a good reason to have your patent accelerated, and then it takes about 10-15 weeks, which is quite reasonable, and, as I said, they’re set up quite well to do that.

We also have green technology, so if you want your patent application to be examined more quickly, and it falls into a green technology, there is an avenue. I don’t think any emails required. I think you just write ‘green technology’ and you get that opportunity.

And, as well we’ve entered with the US into the patent prosecution highway programme. I’ll just read out the
main aspects that need to confide to, to go along that path. The Australian claims must be sufficiently correspond with one or more of the claims of the allowable claims in the US application. And, it must be linked to a common US priority claim, or have a common initial filing date. The Australian application must not have already been examined by the Australian Patent Office. So, nothing too different there, and we’re part of that.

I’ll say very quickly, in terms of software and business methods. The answer is yes.

Yes to software – a mode or manner of achieving an end result of what we term ‘artificially created’. A lot of flowcharts in the patent applications; and, very popular at the moment in Australia.

I’ve got to admit, being a smaller market, it’s popular in the sense that they would like a big US firm to say ‘We need that exact application’, rather than do it themselves in Australia. So they do look to protect the patent as the only form of asset in Australia, and then seek a license deal. So it is very popular to see a lot of drafted I.T. or
software patent applications, as well as business methods – the answer is yes.

There is a slight differentiation with the business method. We’d like a technical solution or a technical advantage, but once again, artificially created gets you in the scope of justification.

Disclosure requirements – well, there’s been a removal of the obligation to lodge search results. So, it’s now relatively straight forward and the onus has been taken away.

And my final slide, what’s the relevance of the Australian market? – Well, we are diverse, and we do have various aspects:

• Certainly medical devices rate high -
  we have a high level of medical expertise.
• Hardware electricals.
• Software and business methods, but
  for that reason, more than being and end market.
• Mining is certainly a boom at the
  moment that’s running our whole economy, but is dominated by some larger
  players, and quite controlled in Australia.
• Household goods
• Sports – definitely in the sports area.
• Transport
• Chemical biotechnology  and,
• Pharmaceutical

So we do cover a wide range and in fact our clients also cover that aspect, so it is a broad area.

So thank you very much.

Zeev Fisher (Fisher Weiler Group) – Europe

From now on we’re going to do the same subjects on patent law with respective views
from different jurisdictions. So I’ll do Europe, and if I have enough time and
Kim allows me, I’ll do Israel as well.

Deadline –
31 months. What happens if you miss the deadline? You fix it. You get a notice
of loss of rights, then you have another 2 months – you have to pay 50% more
official fees, but you can still file the patent in Europe.

Excess
fees – As you all probably know, most of the European
patent applications are filed today with 15 claims. The reason is that if you
file more than 15 claims you have to pay top pounds. Then, if you cross 15
you’re really in trouble, and there’s another surcharge for it – pages over 35.
That’s interesting.

Acceleration –
If you want your patent granted in Europe
quickly, what do you do? Well, one option is to file your first application in Europe. If you do, you will usually get a Search Report
in 3 months, but even if you don’t (that’s important), you can always
accelerate your European application – there is no fee. You just need to let
the European Patent Office know that you want the patent to be granted quickly.
You send them a form; you file it; you get your Search Report within 3 months.
So many people don’t know that, so they wait. We’ve recently got a case from a
client whose case was waiting at the European Patent Office for 10 years, so
acceleration very simple.

Europe
is also part of the prosecution highway, with the U.S., and a few other countries. My
personal approach is that on patent prosecution highways in Europe, is that
since there is the pace available, there’s no fee, you don’t have to amend your
application to fit into any other application, is that the PPH is not really
needed to accelerate applications in Europe. If anyone thinks otherwise, then
I’m happy to discuss it.

What
happens if you need to slow down – if your client runs out of money, or
needs some time for research, or whatever, and doesn’t want his application
examined? If you miss deadlines in Europe,
then it’s not the end of the story. With most of the deadlines you’ll get an
option to do further processing which is just paying another fee for getting
the application back on track, so take it into account that not only you can
wait until the last minute to file responses, there’s also another period of
time which you can buy. So, when clients come to you with limited budgets and
say ‘I’m looking for an investment, what can I slow down?’ European responses
are one of the things you can slow down. A recent change, is when you file a
national phase application, you used to need to wait until you got an
invitation to respond; until the application was examined. As you know, until
recently, you had just one month since you got an invitation, but now they’re
changing it so you have more time.

Software –
Roughly, patents and software are allowed – if there’s a technical effect, it used
to be a matter of non-patentable subject matter; if there’s no technical
effect, now cases are examined more in the lines of inventive step. So, if you
don’t have a true technical effect, you may be told that there’s no inventive
step. This is basically the approach; far less liberal than the U.S. in view of the most recent U.S.
case law.

Business
methods as a rule are usually not allowed in Europe. It’s quite rare. There are particular business
methods which are allowed, but usually they’re not.

There’s
a new disclosure requirement in Europe
– it’s not as bad as it looks. International applications entering national
phase will be due – the calculation of the time frame is not for national phase
entering since January, its international applications entering January, and
then when the national phase is filed, then there may be a disclosure
requirement. The EPO may invite applicants to submit results of Search Reports,
but, it’s far less a rigid requirement that in the U.S. Translation of
references is not required.

Israel

National
phase deadline is 30 months. No extensions are available. So,
if you lost it, you’re in trouble. You can try and file an application late –
if you’re a day late, or a few days late, or even a month late, and you have a
good excuse, you may get the filing date. You have to file it with a petition –
it’s not easy. You have to prove due care, but it’s possible; it’s been done.

Excess
fees – there are hardly any. Applications in Israel
are filed in the English language. Unless you cross 50 claims, there is no
surcharge; there is nothing for extra pages. Basically it’s one fee for the
application.

Acceleration
will be allowed in the following scenarios: either if there’s suspected
infringement. Many people don’t know that, but suspected infringement is
interpreted very generally in Israel.
If all you have to do is get someone to be willing to sign an affidavit that
he’s heard somebody say that somebody wants to infringe your patent that will
be enough. You don’t’ have to submit any proof. All you have to say is that
you’ve heard something and that will do. So in practice you can usually get
your applications accelerated in Israel if there’s anything. The
thing is there’s a fee – it’s not very high. Thing is, even if they are
accelerated, it’s not really accelerated, and it will still take a year or so
to get your patent granted – it’s far better than 4 or 5 years if you have to
wait for a regular procedure. Recently, we’ve had green applications. Another
thing to know about the Israeli Patent Office is that there’s a particular
person you have to send an email to every time you file a green application and
a request to accelerate it on the green track. If you just file it and request
to accelerate it, it won’t happen. You have to send an email to the assigned
person and let him know that you’ve actually filed an accelerated application,
then you’ll get it. There’s no fee. You’ll have an examination report within 3
or 4 months which is relatively quickly for the Israeli Patent Office.

This
is very recent. Applications originally filed in Israel
– the Israeli Patent Office seems to think that applications which will
originally be filed in Israel
should be accelerated, just as what happens in the U.K. In the U.K. if you have your first application filed in
the U.K.,
you’ll have your Search Report within usually 3 or 4 months. So the Israeli
Patent Office decided to do the same thing. Interestingly, the commissioner of
patents who recently left his job and was replaced by a different commissioner
of patents, decided to do that 1 day before he left his job. So we’ve still to
see if it’s really going to happen and if it’s realistic, because it seems that
the previous commissioner didn’t really think he can do it, but he seems to
have faith in the new one, so we’ll see how it goes.

Slowing
down – there is an official practice of slowing down
patent applications in Israel.
You can ask to slow them down and they will slow them down for you. You have to
pay about $14 – $15 per month to slow down an application, and then you’ll have
it slowed down for pretty much as much as you want. This is a very important
practice, because Israel
will allow every application which was allowed in a corresponding country out
of a list of 7 or 8 countries which include most of the important countries –
there’s the U.S., Europe, Russia, Australia, and a few other
countries. So if you have one of those countries allow your patent, then you
can have Israel
allow it automatically. [1] So if you
just happened to reach examination in Israel, before you reach
examination in those countries, you usually want to ask to slow it down, so you
can wait until it is granted somewhere else and you can have it automatically.

Software
used to be barely patentable in Israel
– we were more rigid than Europe, but again a
few days before the commissioner of patents who recently left his job, he
changed the approach. So, there’s a commissioner circular saying that there’s a
new law; it’s not very clear, but it seems to be something between the English
approach of contribution and the European approach of technical effect. So
basically, it seems that Israel
pretty much aligned itself withEurope.

Business
methods are not allowed inIsrael.

Disclosure
requirement – there is a disclosure requirement under Israeli
law, it starts when the application reaches examination together with (once an
examination reaches examination there is what is called) a Section 18 notice.
The patent office lets you know that your application reached examination. He
asks you to disclose everything you know, and recently the Israeli Patent
Office started requiring that translations of references will be filed which is
very burdensome, but now is required. The disclosure requirement goes on since
the moment the application reached examination and up to the moment the patent
is granted. So, you have to continue disclosing information if you know, just
like theU.S.

Israel
isn’t a relevant market for every type of product. It is not a
very large market. It’s 7 million people. You would not want to file railway
related patents in Israel,
but here’s what you will want to file inIsrael:

• Everything that has to do with
  the military – yes we are a country in war, and we use military
  equipment, so it’s definitely an important market for military-related
  products, and we file many applications of this type.
• In terms of electronics,
  it’s a small market, but it’s a very active market I think I’ve read
  somewhere that it has the highest entrance rates of Smart-phones – for
  example like 70% – 80% of the population have a Smart-phones. So, if you
  have electronics, you can certainly consider Israel. There’s also the issue
  of a lot of R & D going on in Israel in the electronics
  field, so it’s very like that your prospective infringer is going to be an
  Israeli company. We’ve actually had many cases where we’ve had patents
  filed for clients, and it turned out to be that their competition is also
  Israeli companies. So you may want to file patents in Israel for this purpose.
  Litigation in Israel
  is very cheap compared to other countries. So, stopping infringements
  maybe much easier than stopping it elsewhere.
• Medical devices – Israel
  is a huge R & D market for medical devices. So you may want to file
  medical devices there, and pharmaceuticals just like you file them
  everywhere else, you’ll certainly want to file them in Israel.

I think that’s it for
me. I’ve said nothing about my firm. So very briefly it’s an Israeli/U.K./European firm that does mostly patents, but also trademark work,  and contentious work – litigation, and that’s pretty much it.

(Slide 1) Thank you to the IP Forum for having all of the speakers here who I got a chance to meet. I think we’re all in for a treat, because they are really excellent
speakers. My name is Chris Carani. I’m with the law firm McAndrews Held and Malloy Ltd. We’re an I.P. boutique firm in Chicago. We have about 105 attorneys practicing
in various areas of Patent Law, Trademark and Copyright Law.

What I would like to speak about today is “U.S. Design Patent Protection”. This particular topic has become increasingly more important. I know we perhaps have
quite a few trademark attorneys. There is quite a bit of association between Trade Dress Law and Deign Patent Law.

One thing you’ll note – I know we very much have an international audience here – in the U.S. we consider them ‘Design Patents’; many other countries they are ‘Design Registrations’,
‘Industrial Designs’. But here in the U.S. it’s actually a ‘Design Patent’ so it falls underneath the gambit of 35 U.S. C., which is the federal statute that sets forth our patent law.

(Slide 2) Today’s
discussion on design law is particularly timely, inasmuch as Mr. Francis Gurry
- who is a director general at WIPO – declared 2011 ‘the Year of Design’. I was
recently in Geneva
for the S.C.T. and we were working on a harmonized industrial design law. One
of the things that are on the front burner is the ‘Hague Agreement’ which maybe
many of you do already use. From a U.S.
perspective, the Hague Agreement has been ratified, by the United States,
but it has yet to be implemented. From some of my conversations with some of
the people inside the Beltway in Washington,
I understand that the next priority after patent reform is finalized – which
hopefully will be very shortly – will be implementation of the Hague Agreement.
And, that is directly from David Kappos, the director at the USPTO. He is very
keen on designs, having served as the liaison for the American Intellectual
Property Law Association Industrial Design Committee for the last 8 years. He’s
very well in tuned with Design Patent Protection and its importance. So, these
are some of the reasons that I think the discussion is timely and important.

(Slides 3-4) So,
what are we talking about when we are talking about designs? It’s all around
us. We see these types of imageries where you can see on the bottom row some of
the more authentic designs; on the top row you see more of the knock-off
designs. Interestingly, in all of these situations, the logo, or the trademark,
has not been appropriated. It is the appearance of the design that has been
appropriated. In the furniture world, we are very accustomed to seeing these
types of knock-offs.

(Slide 5) To
set everybody’s focus here – in the U.S. there are 3 ways to protect an
appearance: trade-dress, copyright, and, on the top you see design patent. Each
has their own requirements. We’re going to focus today on design patents.

One way to
think about a trade-dress – is to think of things that are iconic or things
that have developed a secondary meaning i.e. developed the customer association
either by inherent distinctiveness or by secondary meaning. Copyright is
typically reserved more artistic endeavours. In the U.S. we have a “useful article”
exception which prevents the protection of these designs through copyright.

Thus, design
patent is really the only game in town for a large majority of these items. It
is important to know about design patents, because when we’re talking about
protecting an item – if you’re foreclosed from trade dress protection (say for
instance you have issues with functionality, or if you have issues with
distinctiveness) you can’t go there. Also, with copyright, if you have what is
deemed to be a “useful article,” you can’t go there. With these two options
foreclosed, a designer is left with design patents. These are just some other
examples, in order to hammer home the differences between these 3 particular
areas, I have set forth some examples.

(Slide 6) You
can see trade dress on the lower left with a Tizio lamp and a Bellini chair (My
heritage is Italian-American, so any opportunities to talk about Italian design
I will, so I ask that you kindly indulge me). The Tizio lamp and the Bellini
chair have reached iconic status, and thus these designs can satisfy the
secondary meaning requirement needed for trade dress protection. But it’s
important to note that with respect to these two items, you could also protect
them with design patents. One of the strategies that we often employ is to
first get your design patent protection because you don’t have to have a design
product in commerce to get design patent protection, whereas trade dress you do
- you have to develop that customer association with the distinctiveness. So,
in the U.S. one of the strategies often employed, is secure your design patent
protection out of the gate, you clear the field, because there will be less
noise in the market place, and it will be easier for you to attach that
consumer identification with your product (i.e. “secondary meaning”). So, if I
get the design patent, and after 5 years of use, I can have a presumption of
trade dress, and you could even apply for your trade dress registration.   Thus, it is seen that there is an advantage
to acquiring design patent protection in order to help trade dress protection
attach to a product design.

(Slide 7)
As far as a roadmap, I’ll talk about some of the fundamentals of U.S. design
patent protection and then I want to give you the 4 most valuable ways to
achieve meaningful design patent protection. I underscore meaningful because I
think very often, people when they think about design patents think ‘design
patents are not worth the paper they are written on.’ Indeed, when I was
speaking at the Neocon trade show last year somebody asked, ‘Mr. Carani, what
do you think of the “4 change rule?”’ I said, ‘What are you talking about?’ He
said, ‘With the design patent, you only have to change 4 things and you can
avoid design patent infringement.’ You know, these are the types of rules of
thumb that are circulating out there, but those are of course a falsehood
because we are looking at the overall appearance, irrespective as to whether or
not you change some of the minutia. The concept here is whether or not it is
the overall impression of the design – that’s what we are talking about
protecting.

(Slide Moving
on, why this is so timely, in the EU, China,
the US
– the amounts of design registrations and applications are sky rocketing. The
reasons why are quite simple. I think that customers are placing more emphasis
on design, and the more that you invest in design the more companies want to
protect their designs. There is also insidious reasons, namely the many more
knock-offs these days. And then the last reason is more a legal point, as a
Supreme Court commentary. In the U.S., the 2 supreme court cases ‘Traffix’
decision’ and ‘Wal-Mart’ decision’ back in the early 2000’s severely curtailed
the availability of trade dress protection further making design patents the
only game in town.

(Slide 9) Here
are some recent examples of design patent infringement awards, just to show
that design patents do actually get litigated and you can obtain judgments and
money damages from them. But, in each one of these instances, you’ll note that
I list not just a dollar amount but also an injunction. Often times you catch
design patent infringement at the outset of the infringement, typically once
the product hits the market.  In these
instances, while the money damages might be little, the injunction is what is
most valuable to the client. Not only can you secure a permanent injunction, but
also a preliminary injunction.

(Slide 10) Refocusing
ourselves on design patents – underneath the larger umbrella of “patents” you
have “utility patents” and “design patents” – the basic difference is that a
design patent protects the way something looks, while a utility patent protects
the way something works.

(Slide 11) Here’s
an example of a case I worked on with utility patents for the Motorola Razor
phone that covered how it worked – the utilitarian aspects. There are several
of those, but there’s also several design patents on the outer shell of the
Motorola Razor phone – covering how it looks. So, that is the fundamental
differences.  Design patents and utility
patents are not mutually exclusive. You often have both types of patents
directed at a single product, albeit covering different qualities of the
product; indeed you can have trade dress protection, design patents, utility
patents, even in some situations copyright on the same product. To have an
effective IP strategy, you need to consider all options, which requires
considering IP in a comprehensive manner.

(Slide 12):
Hard Facts on Design Patents:

• One claim per design – so this is a little
  different from particularly, people coming out of European Community
  designs where you can file multiple designs in the application. In the U.S., you
  are only allowed one design, but as I’ll talk about later – you can file
  multiple embodiments per claim.
• Term commences 14 years from issuance – note
  that the term of a design patent is pegged off of issuance, not from
  filing.
• No maintenance fees –There are no
  maintenance fees (or annuities) for designs in the U.S., only
  a one-time issue fee.
• The average time of issuance is 9-12 months – (Slide 12-15) for many people with registration systems, this
  time frame seems like an eternity. They are trying to pull down that time
  period, for instance, here’s an example where using the rocket docket you
  can apply for these expedited procedures. Here’s less than 6 months, the
  recent one, less than 4 months from filing to issuance. So, the are ways
  in which to file these things where you can get them examined in a much
  quicker time, and notice I said ‘examined’. Once again, this is one of the
  main differences between the U.S. system and most other
  countries in the world have registration systems. We have an examination
  system, where we’ll be looking for novelty; the examiners at the USPTO
  will testing the design patent application for novelty, non-obviousness,
  and ornamentality.

So
what do design patents protect?

(Slides
16-18) They protect the shape, surface ornamentation,
colour, and a combination of those 3 things. Protecting all three aspects,
perhaps in separate applications, is strategic way to capture the synergies of
design patents.

Turning
to Slide 19, the statutory requirements for a design patent are novelty,
non-obviousness, and ornamentality. Novelty simply means new. Non-obvious asks
whether an ordinary person skilled in the art would think that the difference
between the prior art and the claimed design was non-obvious. The last
requirement is that the design must be ornamental.

Ornamentality
is the one requirement that I think trips up most people.   It is where a lot of people wrongly dismiss
or discard design patent protection.  At
least from the U.S.
perspective, in the law schools they teach and introduce the issue of
“functionality” (the inverse of ornamentality) through trade dress law , and
even through copyright law with the “useful article” exception.  Because these other laws have such a strict
functionality requirement, many people erroneously conclude “No, you can’t
get a design patent, because it’s functional.” They wrongly conclude that
design patents are left for only ornamental vases, flowery wood-work or
something like that. But, the reality is that almost everything has a function,
but still is considered ornamental. “Ornamental” is an unfortunate choice of
word in the statute. In fact, most industrial designers find the word
‘ornamental’ to be almost insulting, because they think of ornamental as just
adding some frills (a splash of colour here or there) to that the design. In
reality, some of the best design is that which integrates function and
form.  Think of Apple’s iPad, iPhone and
iPod.

(Slide
20) Looking at the slides, these are all issued design
patents. The test for ornamentality is simply, ‘Are there any design choices?’
Is there anything in the design where a design choice as to appearance was
made? An example of a case where it was found that there wasn’t a design choice
in the design, and it’s the only Federal Circuit case that I know of where
there wasn’t at least some design choice found, is the Best-Lock case that
regarded a key-blade.  (Slide 23) The
reasoning in this case was that the key-blade had to fit a keyhole, thus the
designer didn’t perform any designing; the form was strictly dictated to by its
function.

Turning
to Slide 22, I wanted to show you a real case addressing the issue of
functionality/ornamentality.  The design
in question regarded a drill bit, which unquestionably performs a function.
This slide is an example of how you can convince a judge, in the U.S. at least,
that despite the apparent function of the item, there are many possible
designs. Turning to slide, you can see that there are aspects of the design
which are arbitrary. By showing multiple alternate designs, you can increase
your chances of avoiding the invalidity issue of functionality/ornamentality .

Turning
to Slide 24, I will now address the issue of claiming colour and colour
combinations in design patents. Here are some examples of where colour
combinations have been successfully claimed.
e.g. Apple’s use of the colour combinations. But please keep in mind, if
you don’t specify a particular colour, you’re entitled to effectively a
“wildcard,” in other words any colour would fall within the scope there. Black
and white line drawings would cover an accused product, regardless of colour,
so long as the overall appearance of the accused design was substantially the
same as the patented design.

(Slide
25) Colour contrast – Even if you don’t specify a
particular colour, one can claim a colour contrast – for example a light colour
adjacent to a dark colour.

(Slides
26-27) This slide is intended to show you how a U.S. Design
Patent is laid out.  So if ever
you’ve seen a design patent – in short – you have a title, you have a claim, a
specification, and then the drawings. Effectively, the drawings are the
property line. There are no written descriptions; it’s just the pictures
typically from 7 octagonal views. In this particular design patent there were
just 6. But, you typically will see figures of plan views, elevation views, and
perspective views.

(Slide
28) So, now onto the 4 ways to secure meaningful design
patent protection. These particular claiming techniques are allowed in the U.S. I
know in many other countries, they are not allowed, so, you would have to
adjust your drafting techniques if you’re looking to protect a design globally.
For example, if you were first to file in the U.S. as your priority document, you
might want to file the second set of drawings that would be compliant with
another particular jurisdiction, so that you could access the earlier priority
date.

(Slide
28) So here’s 4 ways to increase the scope and the value
of design patents: First, I will discuss “broken lines,” which are the same as
“dotted lines,” and “phantom lines.” A little bit about why you would use
dotted lines.

(Slides
29-30) Here’s an example. A lot of these examples come from
the furniture world, which I’ve done a fair amount of work in. I think importing
some of the drafting conventions used in this particular industry to other
industries is something that’s been underused. So, for instance here, what is
being claimed is the top portion of the chair, the portion that’s in solids
lines, whereas the bottom portion of the chair, which is in dotted lines, is
not claimed, effectively creating a “wildcard.” So, for purposes of meeting
this claim, as long as you have the top portion of that chair, the claim will
be satisfied.  The design of the base
does not matter – any base will do. (e.g. 4 static legs, legs on rollers, 3
legs, or just 1 post, or maybe the seat could be the seat on an airplane or on
a bicycle, who knows?) It does not matter what’s on the bottom; it’s just
providing some type of environment, some type of context.

(Slide
30) Why would you do this? Let’s say a party just wanted
to copy the top; if the design patented was drafted in a way that depicted
everything in solid lines, the party could copy the top design exactly so long
as they incorporated a different base. If, however, the design patent dotted
out (i.e. disclaimed) the bottom portion, this easy design around would not be
available to a third party. The key here is to ferret out those particular
aspects of your design that you want to protect, and protect them to the
exclusion of other non-essential design elements. This strategy requires
protecting each aspect in a separate application.

(Slide
31) Here’s another example of a table where the feet and
hardware have been disclaimed (by use of “dotted lines”). By disclaiming
these features, it makes it more difficult to design around the “heart and
soul” of the claimed design.

(Slide
32) Here’s an example of a design patent directed at
footwear, where dotted lined have been used to focus on the critical aspect of
the design. The scope of this claim would cover any shoe, so long as it
incorporated the toe portion.

(Slide
33) As another practice point, please note that there is
no need to claim logos in your design patents. I see this a lot when I get
cases from foreign filers wanting to file in the U.S. Simply put, your
trademark rights will protect any infringement; there is no need to include it
in your design protection. Very often in non-counterfeit situations parties
might copy the design but change the logo.
With a different logo or no logo, it will only add to the party’s
non-infringement arguments.   There is no
need to assist the infringer with there (Slide 34 ) Another way to effectively
use dotted lines is to find a common thread that goes through several different
product offering. For instance, if you only claimed a side of a shoe, that same
design patent can be used to cover low-cut shoes, mid-cut shoe and high-cut
shoes.   In other words, 1 design patent
can be applicable to several product offerings.

(Slides
35-38) The next drafting technique that I want to bring to
your attention is using “Indeterminate Break-Lines.” This technique is
completely underused. It’s where you want to have flexibility in the coverage
for the aspect ratio of a particular design. Aspect ratio is the ratio between
length and width.  Turning to Slide _,
you can see indeterminate break-lines being used – here the sofa can be a love
seat or it can be sofa, it can expand.

(Slide
39) Here with respect to handles, or with respect to
towel racks, you don’t want to be limited to the particular aspect ratio,
therefore you can use these types of break lines.

(Slides
40-41) This is a figure from I design patent I filed, in
fact I was one of the named inventors on it. The indeterminate break lines are
used here to show radial expansions, not linear expansion as in the other
examples.  In another words, the back
plate in the design patent can decrease and increase in the size of its
diameter, and still be within the same type of claim.

(Slides
42-43) The third technique I would like to discuss is using
multiple embodiments. U.S.
design patent practice only allows one claim, but the USPTO will allow you to
file multiple embodiments, so long as the various embodiments form part of the
same distinct look.

(Slides
44-45) Here you can see that one embodiment with one leg,
and another with two legs – but, according to the Examiner on the case, the two
embodiments have appearance that are “patentably indistinct.”

(Slide
46) Here is another example of multiple embodiments.  It is a chair with some embodiments having
arms, some without arms, some with backs, some without backs – but all included
in a single claim. Again the key here is adding value to your design patents by
gaining scope. So you get away from this notion that design patents are so
narrow, and that they don’t have any teeth. Well, they can have teeth if you
take a learned, strategic approach using these concepts and these drafting
conventions.

(Slides
47-48) Also then one of the common approaches is with
respect to multiple applications -filed distinct applications under the
discreet novel valuable parts of your application. Don’t just file it on the
whole shoe; file one application on the sole (if you care about it), another
one on the upper sole.

(Slides
49-50) Through continuation practice, a lot of the time I
will file the first one in solid lines, and file continuation applications
systematically eliminating aspects. Maybe I just want to claim the top; maybe I
just want to claim the bottom; maybe I just want to claim two legs; maybe I
just want to claim a leg and a top. This is how you really create a sticky
situation for people who are trying to copy your clients’ products.

(Slide
51) Here is an example of Apple using many of these
techniques to create a synergistic effect.
With Apple you can see claimed the click wheel sometimes; the click
wheel and the screen; then maybe not the click wheel and the screen; then maybe
just the no screen. So you can see, you start using these permutations. You use
them altogether – you can start really creating some valuable protection here.

(Slide
52) The synergistic effect (this is a real world example)
with dotted lines, indeterminate break lines, multiple embodiments, another
application, multiple applications.  The
combination creates a powerful effect.

(Slide
53) The key here is be creative, be an abstractionist;
try to abstract out what is the key part of the design; what is your competitor
really going to try and copy out of your design?

Design Patent Enforcement

(Slide
54) What is the test for design patent infringement?

(Slides
55-58) Here’s the granddaddy of them all. This is the U.S.
case from 1871 which is still the law today and is cited on every design patent
case – Gorham v. White. I actually have both the Gorham spoon and the White
spoon in my office in Chicago.
So, this is the test: In the eye of an ordinary observer, two designs are
substantially the same – the first one’s infringed by the other. That’s it,
it’s simple. It’s substantial similarity, not identicality, not a blueprint,
but substantially similar. So what happened in Gorham? Let’s take a raise of
hands. Who thinks there was infringement? The patents on the left; the accused
designs on the right. Who thinks there is infringement? – I got one. Who thinks
it’s non-infringement? The final holding of the case was that there was
infringement. Maybe when you’re judging your own clients – is there
infringement in the U.S.?
Maybe take out these slides and say are we closer or further away from these 2
spoon handles.

(Slides
59-61) Bringing it up to the current date 2010, here’s the
famous Crocs footwear case – the design patent is on the left, and the accused
design is on the right. Was there infringement? The court held, yes,
infringement, despite the fact that they are noticeable differences in the hole
size, and in the shape and the placement.

(Slide
62.) And, finally, the remedies available in the United States
if there is a finding of design patent infringement:

• Loss profits
  (similar to utility patents)
• Reasonable
  royalty (similar to utility patents)
• Infringer’s
  profits (unique to design patents)
• Preliminary
  Injunctions, and,
• Permanent
  Injunctions

Questions:

• Question: There was a question inquiring as
  to whether there is a duty of disclosure required of applicants for design
  patents.
• Answer: Yes, if you are filing a design
  patent in the U.S., if you or the applicant know of any prior designs, in
  other words “prior art,” just like with a utility patent, you need to
  disclose that to the USPTO, or else the design patent can be held to be
  unenforceable due to the inequitable conduct. Thank you for the helpful
  comment.

Final Thoughts:

Design
law should be on everyone’s radar screen. If done right, design protection can
be effective, it can be quick, and actually can have some teeth.

This is the first Patent International, and it’s Patent International 2011. This will become an annual event where we will bring you recent developments and updates from countries around the world. I want to thank in particular before we begin – Chris from McAndrews, Held and Malloy Ltd. who are platinum sponsors, and it is a pleasure for us to have them as our sponsors. Chris is one of the foremost authorities in the world on design patents and you will be able to hear him shortly. And, Mr. Zeev Fisher – Mr. Fisher is from Fisher Weiler Jones, a patent prosecution boutique in Israel
and in the U.K., and Mr. Fisher’s firm, Fisher Weiler Jones is our corporate sponsor for today.

And, besides from that we have our speakers, who are also our sponsors, and I will let Mr. Fisher do the introductions to all of them, because they are a distinguished group and it is our pleasure to have you here today to introduce your firms to us, and the recent developments in your countries.

Without further ado, I’m going to introduce you to Mr. Zeev Fisher, whose going to take the mike and he’s going to continue as the M.C. today, and again we are thrilled to have you with us, and please enjoy yourselves.

Zeev Fisher

Hello, hi all.

Thank you for choosing us over the rest. I hope you all enjoyed the brunch. We will be having speakers or great attorneys whom I know all personally, and if you’re looking for good attorneys, good foreign counsel, and different jurisdictions all of them are really great. Order of speaking will be the U.S. (Chris); then Europe (me) (hopefully I will have enough time for Israel as well); then Aaron Horowitz – the most Chinese guy in the room, who will speak about China; then we have Wing – Wing will be the most Canadian guy in the room as you can see; then we have Anjan Sen of Anjan Sen Associates who will speak about India; then we’ll have Iswan from Singapore; Eric from South Africa; and Brian of EKM from Australia; and Mexico … – any connection to my country is completely by chance. So this will be the order of the presentations. We will be discussing the same subjects from different perspectives, so you’ll have an opportunity to know at a very early stage whether you like it or not.

Before that, Chris being a platinum sponsor, has another subject that will not be discussed by other speakers which is “Design Litigation In the US”, so we’ll have “Design Litigation In the US” and then we’ll have the same subjects which roughly relate to “Filing Patents in Different Jurisdictions”, and we’ll have them one after the other; the same issues with slight differences.

So without further delay, Chris, please….