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Jim Boff
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Paul In my view Section 363 will not so limit to the PCT filing date. Section 363 says a PCT is equivalent to a national patent application as of the date of filing. Section 100(i)(1)(B) says (among other things) that the effective filing date of a claimed invention includes the filing date of the earliest application for which the patent or application (which by 363 includes a PCT application) is entitled to a right of priority under Section 365(b); and that section includes a prior foreign application. So in my view the foreign application clearly establishes an effective filing date once the subsequent priority-claiming PCT application is filed. What is the argument to the contrary?
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Paul, and anon, See also 35 USC 363 which now reads:- An international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office having lost the language:- except as otherwise provided in section 102(e) of this title which was the bit I thought that required a translation for non-English PCTs:- except that an international application filed under the treaty defined in section 351 (a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; and which further applied only if there was a US patent or application. Anon - the Swahili publication point is good, but has the drawback for the discloser that you get prior art effect only on public disclosure. If you want your cake and eat it, the PCT route is useful. The PCT filing gets prior art effect as from the effective filing date which could be 18 months or more before public disclosure, giving time to work in secrecy on the invention. Additionally, the PCT application will be more likely to be found (if not understood, given the language issue) by an examiner, and so more likely to prevent later patents being granted. AIA is such fun!!
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On point 5 - English is a language in which word order is important. “Sacrifices made before the founding of the Temple of Goats” does not mean the same as “Sacrifices of goats made before the founding of the Temple”. Analogously “Disclosures made 1 year or less before the effective filing date of the claimed invention” is not synonymous with “Disclosures of the claimed invention made 1 year or less before the effective filing date”. I don’t know if this clarifies matters, but it amuses me. On point 6 – There is no need for a US application for a foreign application to become prior art. Under AIA any PCT application, whatever the language of publication, becomes prior art in the USA regardless of whether it enters the national phase in the USA and regardless of whether (if not in English) a translation is filed. I hope the USPTO is investing in language training. The PCT publication languages are (in order of use based on WIPO 2011 statistics), English, Japanese, German, Chinese, Korean, French, Spanish, Russian, Portuguese, Arabic with English amounting to ~53% that year. Good luck with machine translation. For non-American applicants this gives another good reason for filing PCT applications; you can get prior art effect in the USA without ever filing a US application.
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Dennis, well done for producing such an interesting chart. Are you willing to share the data set for others to fiddle with? The chart is not totally surprising, since, as Paul F. Morgan says, you cannot sue before grant. The hump around years 8-12 may represent the time taken before competitors realise you have something, or may represent a flurry of litigation towards the end of patent life (some infringers jumping the gun). What may be more interesting is to plot litigation rates against remaining term. I suspect that the picture may change somewhat as some of the year 0 litigated patents may have little term left, representing continuations of continuations of continuations carefully homing in on a competitor product. If you are really keen, plotting litigation rate as the z axis and first priority date and issue dates as x and y axes may reveal patterns not immediately evident from the issue date alone.
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anon said "Maintenance fees obtained from ex-US patent owners are significant, thus making the funding of the Patent Office susceptible to swings in regional economic conditions in the world." - Interesting. This seems to assume that the rest of the world is more volatile than the US. In fact renewal fees are valuable in limiting swings in income, because the world economy tends to be less volatile than any one part of it. And I suspect that the flexibility and responsiveness of the US economy to economic conditions, in fact makes it more volatile than other regions of the world. In Europe at least, economic blips tend to affect number of filings to a greater extent than renewal fees. If funded solely by filing fees, income would be as volatile as the economy at large, particularly as a patent application is largely a leap of faith. In contrast the value of a patent is much clearer by the time you get to paying later renewal fees, and so people are less willing to file a patent whose value is uncertain, than maintain a patent whose value is known. To confirm that the US too behaves in this manner, just compare the minor ripple in the graphs above with the significant drop in filing numbers shown at http://www.patentlyo.com/patent/2011/11/decreasing-patent-filings.html. See also http://www.uspto.gov/web/offices/com/annual/2009/mda_06_02_04.html which shows that in 2009 renewal fees dropped by 2.7% but filing fees dropped by 4.6%. [By the way some accounts are presented to conceal rather than reveal - the USPTO is not the only patent office that seems to adopt this style]. Accordingly, it seems to me that renewal fees act as a useful damper to financial swings and act in fact as a virtual "reserve" for the patent offices. What of course is the most amusing aspect of US renewal fees is their distribution as 4-yearly chunks. Most other countries have annual fees which make year to year budgeting much easier. Does anyone know why the unique 3 ½ years; 7 ½ years; and 11 ½ years system was adopted? Was it simply to make life difficult for docketing?
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Article 3(1) which starts " Each Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection of intellectual property...."
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And on top of that, how does the limitation to US universities comply with TRIPS?
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Understood. Personally, my dirty little secret is that I like Seelenreich http://www.seelenreich.de.
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Max, The olde Englishe approach had its merits, as had the old German approach [find some good art - approach the patentee for a free licence in exchange for not opposing]. However the old English approach does not address the fact that litigation (anywhere) is expensive and a letter to the patent office is not. When someone is thinking of litigation the patent is known to be important and the patentee tends to be committed to action: when a patent is pending they may not be so committed. The old German approach does not address the potential for competition law issues, in that an agreement between two parties that collude in maintaining an invalid right would seem problematic. But my main reason for filing 3POs is that it is inexpensive and early, rather than middle-expensive and protracted [like opposition], or very expensive [like court action], and it is done at a time when the value of the patent application is low [it represents hope] rather than high [when it represents sales]. Given the huge number of patent applications filed these days, managing costs is important, and if I can reduce the number of granted patents at a relatively low cost this reduces the potential for downstream litigation. As for bifurcation post issue, I bow to the expertise of the other readers of this blog. Is there a mechanism under US law for the patentee to get a permanent injunction without the court considering the validity of the patent, despite the alleged infringer's challenge to validity?
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MM said in reply to MaxDrei... 70% of oppositions are filed by Germans Germans rock. Not really, Germans indulge in friendly fire. It's part of the litigation culture, which encourages Germans to oppose Germans. See http://ipnoncredere.blogspot.co.uk/2012/07/bifurcation-opposition-representation.html. As for the effectiveness of third party observation systems - absence of evidence is not evidence of absence. There are no published statistics for 3PO use in Europe but they are nonetheless effective. I use 3POs in Europe a lot, and with good art they are very effective. Of course, first you need the good art..... With weak art, you run the risk of making the patent stronger. My normal practice is: if I have good art - file 3PO; if I have weak art - oppose; if I have no art - give up.
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I too could not find the survey. As for why I joined the profession - marrying the boss's daughter might have had something to do with it.
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Aug 24, 2010