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.

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.

Just a short note to present the option of accelerating green patents in the UK.

The UK IPO allows applicants that have inventions that contributes to the environment to request a preferred treatment.

Examination of patents filed initially in the UK is quick anyway (about 4 months) so the extra haste (an approved green application will normally receive an examination report within a couple of weeks) does not really make a huge difference.

However, for either foreign comapnies or UK companies that filed their application initially in other countries, this option is very valuable, as it results in one of the fastest examination procedures in the world.

Moreover, a green application is not, necessarily, an application that relates directly to an environmental end. The environmental benefit can be secondary, as long as it exists. For example, a patent application that makes the lifetime of battaries longer and saves electricity, can be regarded as a “green invention”.

To find out more about how to take advantage of this program, please contact Dr. Kelly Virdee-Crofts (kelly@fwgip.com) at our London office or Dr. Ophir Tal (ophir@fwgip.com) at our Israeli office.

The USPTO and the Israeli patent office have recently announced a Patent Prosecution Highway pilot program to begin on July 1st.

The USPTO will accelerate allowed Israeli applications and vice versa.

With the Israeli patent office’s policy of automatically granting patents allowed in the US once they have reached examination, it will in fact render nearly any US patent allowed and granted in Israel shortly after a grant in the US.

With the Israeli patent office’s new program of accelerating patent applications initially filed in Israel, this program may create one of the fastest routes of reaching examination at the US.

Good luck! 

Source: http://www.uspto.gov/news/pr/2011/11-39.jsp

On July 23, 2008, the USPTO published a notice intended to clarify its position on overseas outsourcing of patent drafting. It told us that outsourcing was illegal, contrary to export regulations. Zeev Fisher and Keith Jones, of Fisher Weiler Jones, take a look at this stance.

This is the story of how the US government “pulled the plug” on outsourcing patent drafting. We were told that national security was the issue, but many believe this was an excuse simply for keeping jobs in the US. Ironically, the impact may well be yet another hit to the competitiveness of the US market. 

1. It all starts with cost 

More and more US companies are choosing to outsource an increasing number of services out of the US, simply because they are cheaper. 

In the past, the type of services outsourced typically did not require a very high skill level. Today, as the services offered from out of the US become more and more sophisticated, the motivation to outsource grows. 

On July 23, 2008, the USPTO published a “clarification”, according to which outsourcing patent drafting, before receiving a foreign filing licence, was deemed contrary to export regulations that forbid the export of knowledge. 

The overriding principle of foreign filing licences generally, and the new “clarification” specifically, is protecting national security. 

2. Foreign filing licences  

Some countries chose to limit, to some extent, the ability of applicants to file patents out of their home country, to prevent leakage of information which could potentially relate to national security. 

Some countries chose to make the applicant responsible for refraining from filing patent applications which relate to security, while others chose to disallow, completely, an applicant from filing any application out-of-country until an official permit or licence has been granted.  

We wonder why the US imposes a foreign filing licence requirement on patents when it gives freedom of speech such high priority and considering it is a country in which most of the largest corporations have enormous R&D activity out-of-country, which is not subject to licensing requirements. 

The requirement for a foreign filing license for each and every patent application poses a serious procedural limitation on applicants. This is especially true, for example, when infringement occurs in a different country shortly after a patent application is filed. It is even truer in view of other developments in recent years. Lately, patent offices are encouraged to share examination information. Thus, an applicant who resides in the UK, for example, who enjoys the very quick services of the UK IPO, can request to accelerate his US application after his UK application has been quickly allowed. An applicant in the US is barred from using this option, since he must file his first application in the US. 

As we all well know, ethical restraints are foremost in the minds of US patent attorneys. Against this background, is there truly a concern that if the applicants themselves had to determine if their applications were to do with national security, they would fail to do so? 

3. Prohibiting outsourcing

Contrary to the “clarification” that the USPTO issued, it is not obvious, at all, that there will be a ban on outsourcing work out of the US when the “final product” is a US patent application.

In practice, a US inventor who works in a company that has R&D centres in Germany, Armenia and Israel does not ask, and it would be unreasonable to expect him to ask, for a clearance from the USPTO to speak about his invention with his non-US colleagues. Implementing the limitation to the word would make it practically impossible for multinational corporations to function.

And there is a significant difference between filing a patent application outside of the US and sending a disclosure to a patent attorney outside of the US, under strict non-disclosure rules, for the purpose of him preparing a patent application for filing back in the US. Patent attorneys all around the world are committed to maintaining confidentiality and, aside from the ethical requirement, the patent business is such that a patent attorney who fails to maintain confidentiality will have no work! Hence, patent attorneys, maybe more than anyone else, have a top interest to maintain secrecy.

It is quite ironic that, in today’s internet age, the USPTO forbids the transfer of work out of the US. That means that someone is not allowed to send patent work to a US certified patent attorney who resides out of the US, in any field, whereas an Iranian or North Korean diplomat who visits the US may draft patents on any type of technology (including nuclear technology), as long as he is physically in the US.

If the USPTO’s concern truly was national security, we would expect it to put procedures in place that would allow foreign patent attorneys to receive security clearance, in the same way that other suppliers who work on US secret matters do. The Office has not do so.

But as we said before, many believe the arguments of national security are nothing more than an excuse and that the real reason for keeping patent drafting within the US is to safeguard jobs in the US. 

4. Low quality?

Recently, we have also heard quite a few US patent attorneys express the opinion that in essence the ban on outsourcing is to protect clients from what the USPTO perceives are the shortfalls in countries like India: poor work quality, low ethical standards and little respect for confidentiality (for example, see Gene Quinn’s post on his blog IPWatchdog[1]). 

Is this reasonable? 

There is no doubt that in a country as large, as rapidly developing and as immature in IP terms as India, service capabilities are hugely variable from provider to provider – although the same could be said of many “developed” countries – and that quality control is indeed a challenge. However, taking India as an example, many Fortune 500 companies have been well-served by Indian patent attorneys for many years, so proof of good quality must be readily available. 

But also we must remember that even in relation to countries where the USPTO’s perception of quality may be better (take the UK or Australia, for example), the same applies; the USPTO’s embargo is worldwide. 

In addition, the quality argument could be said only to apply to companies with unlimited IP budgets, and such companies are only a small part of the total number of patent application filers. Companies with limited budget may prefer filing more patent applications than “investing” in fewer, better-drafted patent applications. For example, take a very innovative start-up company with a 15K USD patent budget, trying to prepare itself for investment. Such a company could, for instance, have a single patent drafted and filed in the US or possibly ten patents drafted in India. Will a “superb” US-drafted patent truly guarantee better protection than ten patents, as low-quality as they may be, protecting different aspects of the company’s technology? It is no secret that sometimes IP protection is a game of numbers, and the “quality” argument misses this point. 

Generally speaking, does not the whole “low quality” argument seems strange? Shouldn’t free market economy fix low quality anomalies? Shouldn’t the clients have a choice? 

Another point to consider is that many US entrepreneurs, who are not able to meet the high cost of US patent attorneys, may be advised by their US counsel to prepare and file a patent application, usually a provisional one, themselves. Would a patent application drafted by a non-professional truly be better than one drafted by a trained patent attorney in a different country? 

4. Who is the true victim? 

“Why should we care about patent professionals in different countries?”, some of you may be asking at this point. “It may not be politically correct, but we want the authorities to use the law to protect our economy”. 

The sad truth is that this policy is not good for anyone. It is good for patent attorneys in the US in the short term, but bad for them in the long run, and it is certainly not good for clients, or for innovation in the US. 

It is indeed true that, for example, Indian patent attorneys suffer from the US policy, but India is growing fast, and the Indian attorneys are making up the loss with local work. 

One problem of the US economy now-a-days, and one of the leading reasons for the growth of the diversion of business from the US to other countries, is the phenomenal cost of doing business in the US. Capital efficiency in other countries is so much better that many companies, local and foreign, choose to divert business overseas. 

Any US service providers’ that lack flexibility or are reluctant to face reality risk hurting US business. At a recent lecture in Israel, a very experienced entrepreneur presented research proving that establishing a medical device company in the US costs between 30-60M USD, while establishing the same company in Israel will cost 6-33M USD. Where would you invest your money? 

US patent attorneys cannot compete with, for example, Indian prices, but they can certainly reduce the difference and the motivation of companies to look outside the US. There is an assumption that many clients will be willing to pay a premium for a US patent attorney. But we are not sure they will pay any premium. 

From the US patent attorneys perspective – yes, in the short run they will be able to maintain their high salaries thanks to this legislation, but this will only be the case as long as they will have clients willing to pay their fees. The Government can stop the outsourcing of patent services, but it cannot, or will not, stop the outsourcing of R&D. With the outsourcing of R&D, jobs will be lost anyway, and instead of a lower-priced work, the attorneys will have no work at all. 

The problem may be exacerbated by a preference amongst US students to be lawyers, not engineers. The end result could be more lawyers providing expensive services to fewer companies with little R&D. How long can that possibly last?

Is there a “legal bubble” in the US? If so, we all know what happens to bubbles! 

One view is that the US is so attractive that patent application and prosecution work will keep flowing in regardless of anything that the attorneys do. The same thing was said in the past of the European market, but there is a belief that the high fees of European patent attorneys and the European patent office caused a drop in European filings from Japanese and Korean companies, which now prefer to invest in the growing and more competitive China instead. The argument of quality, by the way, was and still is used in Europe frequently, but at the same time, there is a feeling that prices have dropped, and many new, small, firms, with low overheads are emerging. 

5. The legality argument 

Having said all of the above, outsourcing is still illegal, and we can safely assume that this feature will not convince the USPTO to make a U-turn. Is it all s purely academic matter, then?

In our view, the USPTO’s interpretation of the export rules is far too broad, and exceeds the original meaning of the legislation. Transferring information for a particular task, such as drafting a patent application under strict confidentiality rules, is not really an “export” of information, and, if it is, it should be stated specifically and not by way of interpretation. It is up to the legislature to decide if outsourcing patent work should or should not be illegal, and not the USPTO, which clearly has an interest, and does not have the authority to legislate substantive law.

Furthermore, if a ban was clearly legislated, it would surely not be as broad as the one presented by the USPTO. Surely setting measures in place that would prevent outsourcing of work on national security-related inventions, but would allow outsourcing, under some type of supervision, of work that has nothing to do with national security, would be the proportional way to go?

6. What should have been done?

There should always be work for good patent attorneys who are willing to accommodate to their clients. As a colleague of ours, Greg Kirsh, a US Patent Attorney of Ballard Spahr commented on this piece, drafting and prosecuting patent applications is as much art as it is science, an intimate process marrying law, technology and business, and the personal connection to the patent attorney handling the case is of high importance.

At the same time, outsourcing is a perfectly valid option and the USPTO should not fight it. On the contrary, it should be encouraging and supporting it. For example, the USPTO could offer training courses to foreign patent attorneys who wish to handle US work.

An approach of embracing cooperation with foreign patent attorneys would endear the US market to foreign patent attorneys, and encourage them to be ambassadors for the US patent system in their various foreign jurisdictions. The US market is no longer an automatic “go to” market for everybody. It must be attractive to foreign companies, and one of the ways of making it attractive is by making it easily accessible.

A policy of greater accessibility would probably result in some loss of patent drafting work in the short run, but would result in more US patent applications, and, in the long run, may result in more prosecution and litigation work for US attorneys.

The US patent profession is facing an important junction. The world is changing and the USPTO and patent practitioners can jump on the bandwagon or face the consequences of not doing so.

Published on Intellectual Property Magazine

We often write about the benefits of the new bilateral conventions called Patent Prosecution Highway (PPHs). A while ago, we suggested filing a patent application in Europe or in the UK first, and when the application is allowed, filing in the US and requesting accelerated examination (“petition to make special”) based on the PPH.

One of the downsides of the PPH is that it forces the applicant to submit a practically identical (“corresponding”) set of claims in the US, once the UK or the European patent is allowed. If the applicant narrowed its claims during prosecution in the UK or Europe, he may wish to refrain from filing a PPH merely to keep the scope of the US application more broad.

One should consider that this is not exactly the case, and this pitfall can be avoided in the US by using the continuation practice. One can file a US application, and indeed file it with a set of claims corresponding to the allowed set of claims in Europe or the UK. At the same time, it is possible to file a new, broader, set of claims in a continuation application. If the first application reaches examination it is likely that the continuation application be examined as well, and by the same examiner.

Such a strategy will allow an applicant for a patent in the US to enjoy the benefits of the PPH, and at the same time, refrain from limiting the scope of the application.

Serbia’s parliament had approved, on 1 October 2010, the country’s accession to the European Patent Convention.

In addition to the existing 27 EU member states, the following coutries are also members of the EPO: Albania, Croatia, the former Yugoslav Republic of Macedonia, Iceland, Liechtenstein, Monaco, Norway, San Marino, Switzerland and Turkey.

Apart from the Organisation’s members, Bosnia and Herzegovina and Montenegro also recognise European patent applications and patents on their territory on the basis of bilateral extension agreements with the European Patent Organisation.

European patents are now in effect in 40 countries and reach a market of about 570 million people – making it the largest patent system in the world.

The Israeli Patent Office considers entering into a Patent Prosecution Highway (PPH) agreement with the USPTO.

PPH is a convention that allows accelerated examination of an application which claims priority from an application that was previously allowed in another patent office.

In order for an application to be eligible to a PPH, all claims should be similar to the claims of the allowed application.

The Israeli Patent Commissioner requested the public to comment on the implementation of the program, noting, in his notice, that such a program may create a lot of pressure on the patent office if applied.

As much as I try, I cannot understand why the commissioner of patents and trademarks thinks that the PPH may create any kind of burden on the patent office. PPH accelerates the examination ahead of line. However, in view of clause 17(c) of the patent act and the relevant commissioner circulars, an application that was allowed in another patent office will not be examined anyway, but rather, will be automatically granted, as a matter of law. Where is, then, the pressure?