Tag:  “USPTO”  | (8) posts

DK-US Patent Prosecution Highway agreement version 2.0

Patent Prosecution Highway agreement version 2.0 between the DKPTO and the USPTO

Effective from today, 3 June 2103, the PPH agreement between The Danish Patent and Trademark Office (DKPTO) and The US Patent and Trademark Office (USPTO) has been upgraded to what the DKPTO aptly calls a “PPH-agrement version 2.0”.

With the PPH agreement version 2.0 – to this blogger’s knowledge the first of its kind – a significant simplification is introduced. Now, it no longer matters which office is the Office of First Filing and Office of Second Filing, respectively.

In more detail it is now possible to proceed as follows:

  1. File a first patent application with the USPTO.
  2. File a second patent application claiming the priority of the first application with the DKPTO, and
  3. File a request for examination under the PPH in the US patent application with the USPTO using the result of the examination made by the DKPTO.

Hence, in contrast to the original and now superseded agreement, it is now also possible to use the examination result of the Office of Second Filing to request examination under the PPH at the Office of First Filing. In the original agreement it was only possible to use the examination result of the Office of First Filing to request examination under the PPH at the Office of Second Filing.

Furthermore, it is worth mentioning that with the arrival of June the Indonesian patent office has entered the PPH network by signing a PPH agreement with the Japanese Patent Office.

As always, we shall endeavour to keep our readers updated on further developments.

Link to the DKPTO-USPTO PPH-agreement version 2.0:

At DKPTO: http://www.dkpto.dk/media/20511122/pph2.0_us_filers_03062013.pdf

At USPTO: http://www.uspto.gov/web/offices/com/sol/og/2013/week22/TOC.htm#ref15


Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

New DK Patent Prosecution Highway-agreement

 New Patent Prosecution Highway agreement between the DKPTO and China’s SIPO

Since the beginning of 2013 a new PPH agreement enables Danish patent applicants to obtain a patent in China in a faster and more cost-effective way.

On 1 January 2013 a PPH agreement on a pilot project basis came into effect between the Danish Patent and Trademark Office and the Chinese State Intellectual Property Office, enabling patent applicants who have obtained a decision to grant from the DKPTO to request accelerated proceedings at the SIPO.

The number of PPH agreements in which the DKPTO takes part now totals 7, the other PPH agreements being with the patent offices of Canada, USA, Russia, Japan, South Korea and Israel.

Furthermore, it is worth mentioning that the final months of 2012 also saw the Czech and Colombian patent offices entering the PPH network, both signing agreements with the USPTO.

As always, we shall endeavour to keep our readers updated on further developments. 

Link to the DKPTO-SIPO PPH-agreement

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent


Cooperative Patent Classification – Time to prepare for the launch

Almost a year ago I wrote on the Awapatent IP Blog about the efforts of the EPO and USPTO to harmonize their patent classification systems to form the Cooperative Patent Classification (in short CPC). The work is progressing, and it has now become time for an update.

The CPC is now taking shape, and it has become possible for users to familiarize themselves with the new classification scheme as the results this far have been made available by the EPO and the USPTO in what they have named a “CPC launch package”. The launch package includes the complete CPC scheme, the presently finalised CPC definitions and an ECLA-to-CPC-to-IPC concordance table. The launch package is available here.

The EPO and the USPTO explain that the CPC scheme for classifying patent documents according to the technological field of the invention is based on the latest version of the International Patent Classification (IPC) system. The CPC scheme will have sections A through H similar to the IPC as well as an additional brand new section Y including new technological developments and cross-sectional technologies.

There will be CPC definitions available for every CPC subclass and each definition will contain a description of the technical subject-matter covered in the subclass. The CPC definitions will be continuously maintained. Also, a CPC-to-IPC concordance table has been published to help users find the relevant part of the IPC on which the CPC is based.

The CPC is scheduled to be launched on 1 January 2013, and the Awapatent IP Blog will continue to monitor the development with interest to keep our readers updated.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

Patent Prosecution Highway – Sweden and NPI entering the PPH-network

As I mentioned in my blog entry of 19 september, the number of PPH-agreements has increased, introducing new possibilities for accelerated prosecution.

Sweden’s Patent- och Registreringsverket and Nordic Patent Institute entering the PPH-network

Three new patent offices have entered the PPH-network. The three new offices are PRV (Sweden, PCT-PPH with JPO and USPTO), The Nordic Patent Institute (PCT PPH with USPTO) and ILPO (Israel, national PPH with USPTO). Also, a number of new PPH agreements between existing PPH participators have been launched, particularly relating to the use of PCT work products for requesting accelerated prosecution under the PPH (so called PCT-PPH agreements).

The complete overview of existing and working PPH agreements at the time of writing can be seen on the graphic below, courtesy of the PPH web-page compiled by the Japanese Patent Office, JPO:

PPH map

Link to the PPH-web page: http://www.jpo.go.jp/ppph-portal/index.htm

Troels Peter Rørdam, European Patent Attorney, Awapatent

The USPTO decides to abolish the US patent classification system

The USPTO decides to abolish the US patent classification system


A very important development of the IP5 initiative has now emerged. The US Patent and trademark Office has agreed to phase out its US patent classification system and adapt to the ECLA system used by the European Patent Office examiners. In this process it is envisaged that the ECLA system will be developed further in cooperation with the USPTO to include the best practices from the US system.

One of the ten foundation projects of the IP5 cooperation between the patent offices of EPO, USA, Japan (JPO), China (SIPO) and South Korea (KIPO), is the formation of a common hybrid classification system. With this major step forward such a global patent classification system is within reach, as the Japanese Patent Office seems to be the only office adhering to their national classification system.

The advantages and disadvantages of having several patent classification systems in parallel may be argued. On the positive side parallel systems, if skillfully used, may give different access points to the patent documentation thereby enhancing what information specialists call recall. On the negative side, concordance between the systems often being poor, they may generate a lot of noise thereby reducing the precision of your search. A hybrid classification is a welcomed compromise.

Also, patent classification systems need frequent revisions in order to adapt to rapid developments in some areas of technology and duplication of cumbersome work in this area will hopefully be avoided, thanks to the cooperation between the patent offices.

It is thus good news for patent applicants and all who use patent classification in their daily work that the IP5 offices are moving towards a truly global system. It should result in more efficient patent searching, more consistency in search results from the different patent authorities and thus cost savings for the users.

The International Patent Classification (IPC) in its current 8th reformed version, is the responsibility of the World Intellectual Property Organization (WIPO) and will remain the official classification system for all patent offices of the member states of this organization, including the IP5. Let us hope that harmonization between the new USPTO/EPO hybrid classification and the IPC will also be endeavored.

Link to EPO news flash

Marjolaine Thulin, Patent Information Specialist, Awapatent

China to drive on to the Patent Prosecution Highway

According to a USPTO press release, the intellectual property offices of China (SIPO) and USA (USPTO) have signed a Memorandum of Understanding on 19 May 2010, which includes establishing a bilateral Patent Prosecution Highway (PPH) agreement between the two offices.

The PPH agreement will be SIPO’s first, thus driving China onto the Patent Prosecution Highway and opening up for the SIPO and the USPTO taking advantage of each other’s examination results to achieve a faster prosecution of patent applications.

Further new PPH-agreements
Furthermore, four new PPH-agreements have been established in 2010 so far, namely between Finland (NBPR) and South Korea (KIPO), NBPR and Hungary (HPO), Germany (DPMA) and KIPO (to take effect on 1 July 2010) and, most notably, between the EPO and Japan (JPO).

Thus, the complete overview of existing and working PPH agreements at the time of writing can be seen on the graphic below, courtesy of the PPH web-page compiled by the Japanese Patent Office, JPO:

PPH-web page 

USPTO press release

Troels Peter Rørdam, Associate Patent Attorney

The Bilski decision is here! State Street Bank is out.

Yesterday (October 30, 2008), United States Court of Appeals for the Federal Circuit (CAFC) closed the door on the State Street Bank decision from 1998, a decision stating that it would be enough in regards to patentability under 35 U.S.C. § 101 if an invention produces “useful, concrete, and tangible result”.

In the decision from yesterday, the CAFC instead made use of the so called machine-or-transformation test, where either a specific machine with specific ties to the claimed process or the specific transformation of a physical entity to another must be present for the invention to be patentable. Thus, an invention, such as the Bernie Bilski invention, which is not tied to any specific machine or apparatus for any of its process steps nor is limited to any particular transformation, is not patentable.

The machine-or-transformation test has been applied before, for example in relation to Gottschalk v. Benson (1972). However, in the Gottschalk v. Benson case, the claimed process was still held to be ineligible subject matter, even though it operated on a machine such as a digital computer, since the claim’s tie to the machine were not specific enough. Accordingly, an algorithm implemented on a general purpose computer, such as a PC, was in this case not enough for reaching patentability.

On the other hand, a case where the court ruled the machine to be specific enough when applying the machine-or-transformation test, was in relation to Diamond v. Diehr (1981), where the Arrhenius equation was used for deciding when a process for curing rubber in a mould was completed. In this case, the machine had means for both the curing of the rubber as well as the computation of the Arrhenius equation (i.e. means for installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the Arrhenius equation and a digital computer, and automatically opening the press at the proper time).

Accordingly, for not failing the machine-or-transformation test it seems that one has to be very specific when drafting an application in this area, such that the ties between a claimed process implemented on a machine are made obvious.

On the positive side the CAFC noted that there will be no implementation of the so-called “business method exception” (as well as in relation to software), which they rather state would be unlawful. Accordingly, business method and software claims are still in as long as they fulfil the machine-or-transformation test.

If you would like to read the whole decision it can be found here: http://www.cafc.uscourts.gov/opinions/07-1130.pdf.
Magnus Nilsson, European Patent Attorney

USPTO will not give up

Last fall, the US Patent and Trademark Office, USPTO, announced that they would make drastic changes in the rules concerning patent applications. Briefly, the USPTO rules mean that the applicant’s rights to file different forms of continuation applications are severely limited.

The rules were meant to become effective on 1 November 2007. Tons of companies and organizations protested against the new rules, and one inventor, Dr Triantafyllos Tafas, even went so far as to sue USPTO in a federal district court. Eventually, he was backed by the pharmaceutical giant GlaxoSmithKline.

On 31 October 2007, on the eve of the new rules taking effect, the federal judge issued a preliminary injunction against USPTO, inhibiting the new rules. This verdict was followed by a permanent injunction in the final decision issued 1 April 2008. In brief, the judge has determined that the USPTO has tried to exceed their authority, since the rules affect the basic rights of patent applicants. All patent applicants (and their representatives!) heaved a sigh of relief.

One could of course have hoped that this was the end of the story. However, on 7 May 2008, USPTO filed a Notice of Appeal against the verdict with the appellate court, CAFC, in Washington, DC. The schedule for the appeal case has just become official, and it looks as though a final verdict may be expected around the end of 2008. We’ll keep you posted…

Niklas Mattsson, European Patent Attorney

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