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.

To access the service, click here:

http://www.ipo.gov.uk/types/patent/p-os/p-find/p-ipsum.htm

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.

A relatively new convention provides an excellent method of accelerating US patents.

The most important jurisdiction for patent filers is the United States of America. It is the largest market for many products, and a US patent, being a federal patent which covers all US states, is very cheap compared to the huge market it covers.

However, until a US patent reaches examination, you can wait a few years.

We believe that the most cost-effective and successful way to change this is by using a relatively unknown convention called the Patent Prosecution Highway (PPH). According to the PPH, one can request to advance in line a patent filed in the US, if such a patent is based on a UK granted patent’s priority date, and vice versa.

Since reaching examination in the UK can be very fast (usually within 4 months since the moment of filing the search request), this can be a very effective way to accelerate the US patent.

This option is not practical for US applicants, as a US applicant must file in the US first to obtain a foreign filing license, but for non-US applicants (such as UK applicants), filing in the UK and then in the US can be an excellent opportunity to enjoy a “skip the line” mechanism.

Same applies for the UK and Japan, as a PPH convention also exists between these two countries.

We are tracking statistics of our website and found out that we had more visitors ot our website from the cities noted at the heading to this post than any other city in the UK.

To make it clearer to inventors and startup executives in those cities how important they are to us, we decided to create city specific pages on the website. At the moment, they are all identical, but with time we hope that these pages will also include city-specific information.

So, here they are:
London
Manchester
Leeds
Birmingham
Bristol 

Fisher Weiler Jones recently hosted a highly successful workshop on legal strategies for defence and HLS companies.

One of the problems that such companies face is quite unique to this industry – at the HLS indusry, the country has a right to take your patent from you. It usually starts with a “security order” of the country, which prohibits the inventor from doing anything with his patent, and ends with the patent being taken from the inventor.

Some countries will compensate the applicant well for such an act. Some will not. 

There are various ways to try and avoid security orders. Some of those ways are semi ”policital”. In every country, there is a specific organization, usually part of the ministry of defense or the military, which is responsible for security orders. Good connections at those organizations will help.

However, this, naturally, is beyond the reach of patent attorneys. So, what can we do to help? 

What we do is try to draft our clients patents in a way that will make them look at civil as possible. We think of civil applications and stress them out. We avoid using military-related terminology, etc.

The patent offices normally look for keywords. Attorneys should be masters of terminology. Everything that can be said one way can be said totally differently. Many countries have a policy according to which if no security order was given within a specific period of time, it can no longer be given. So – we try to draft our application in such a way that the country will simply not want them.

Israeli Company “Yozmot 33 Ltd.” Sued HTC. for infringement of a mobile-related European (UK) patent.

HTC argued the patent is invalid due to lack of novelty, obviousness, insufficiency, added matter and unpatentable subject matter.

Well, exciting times in the world of software and business method patents and the area of inventions excluded from patentability. Yesterday, we had the long-awaited Bilski decision in the States. This follows not long after the also much-anticipated decision from The European Patent Office (EPO) Enlarged Board of Appeal.

The President of the EPO had referred to it several questions about the patentability of computer implemented inventions. The Board didn’t find any conflict in the case law and declared itself happy with the way things have developed. In a nutshell, the EPO takes a ”technical effect” approach; it looks at computer implemented inventions in terms of whether they constitute a novel and inventive technical solution to a technical problem. If so, all is well.

In the UK, the question of how to determine excluded subject matter has also enjoyed the limelight over the past few years. The approach here is different, the four point test is the way to go (1. properly construe the claim; 2. identify the actual contribution; 3. ask whether it falls solely within the excluded subject matter; and, 4. check whether the actual or alleged contribution is actually technical in nature), and although it appeared for a while that UK Intellectual Property Office and EPO attitudes were diverging – the UKIPO seemed to go very anti-software for a while - we have since been told that the two approaches are in fact wholly consistent and, although each Office may take a different route, they should both end at the same destination.

For more information about software patents in US, UK and Europe, contact Assaf Weiler at assaf@fwgip.com.

The UK IPO announces that starting on 28 May, 2010, patent applicants can request accelerated examination in the UK national phase if their PCT has received a positive International Preliminary Report on Patentability (IPRP). This service is available whether the IPRP has been issued under Chapter I or Chapter II of the Patent Cooperation Treaty.

To be eligable for acceleration, applicant must meet the following requirements: 

1. All claims must have been examined in the PCT stage and found to meet the requirements for novelty, non-obviousness and industrial applicability.
 
2. All claims in the PCT stage must have been examined.

3. National phase application in the UK was filed on or after May 28, 2010.

Procedure to request accelerated examination

A request for accelerated examination should be made in writing, indicating that the applicant’s application has received a positive IPRP. The Office will require no further reasons for accelerated examination to take place.

It is helpful if any correspondence in relation to accelerated applications is clearly marked as such, for example by boldly indicating “URGENT – ACCELERATED PROCESSING REQUESTED”. This will help us to identify correspondence relating to accelerated applications as early as possible after the Office has received the correspondence and thus ensure that the examiner receives this correspondence as quickly as possible.

It is also advisable to supply a copy of the IPRP, and may be requested by the patent office.

Each request for accelerated examination will be considered by a patent examiner, who will confirm whether the request for accelerated examination has been allowed or refused. In the event of a refusal, reasons will be provided.

Voluntary amendment under rule 31(4) will be possible after issue of the first examination report.

UK Patents are, as we noted before, fast.

Normally, a UK patent application will be examined with a full search and examination report within 4 months of the day of the request.

However, in some cases, even this is not enough.

The examiners have the power to accelerate the examination even more. If a special reason (such as actual infringment) for accelerating the examination exists, a letter to the examiner can have your application reach examination within a few weeks. Just to let you know.