The European Patent Office (EPO) has announced more important rule changes, as part of its drive to speed up prosecution without apparently requiring any more from its examiners.  The new rules will come into force on 1 April 2010.

Of particular note is that two of the new rule changes are actually beneficial to applicants!

Compulsory response to European search reports

At present, an applicant does not have to reply to any search report that the EPO issue.  However, this will change when the new rules come into force.

From that date the applicant will have to respond to objections raised in the opinion accompanying a European search report. This applies to extended search reports, raised on European patent applications filed at the EPO, and supplementary search reports, raised in the European regional phase of a PCT application where the EPO was not the International Search Authority (ISA).

The deadline for responding to an extended European search report will be 6 months from the publication date of the search report, if a request for examination has not already been filed. However, if a request for examination has been filed, the deadline will be 2 months from a communication from the EPO.

If an applicant fails to respond before the deadline, then the application will be deemed withdrawn, but can be revived using “further processing”.

The EPO will require a full response to the objections.

Compulsory response to written opinions and international preliminary examination reports

If the EPO is the ISA for a PCT application, it does not carry out a search in the European regional phase. For those applications, the applicant must file a response to any objections in the written opinion raised in the International phase of the PCT application.

The applicant will have to file the response shortly after entry into the European regional phase. The EPO will set a 1 month deadline to file the response and, in the same communication, invite the applicant to pay claims fees and/or file voluntary amendments.

Again, the EPO will require a full response to the objections.

Amending a European patent application

Under the new rules an applicant must identify, and provide basis in the original text, for all amendments to the application.

If the applicant does not, then the EPO will set a 1 month deadline to do so. If the applicant still fails to provide the information, the application will be deemed withdrawn, but can be revived using “further processing”.

Multiple independent claims

If an application contains several independent claims, the EPO, before carrying out the search, will ask an applicant which claims are to be searched.  They will give the applicant 2 months to provide this information. If the applicant does not, then the EPO will search only the first claim in each category (product, method, use).

This change will allow applicants to direct the EPO to a search report on the subject matter of most interest to them. It is a definite improvement on the current practice, where the applicant is not asked for such direction.

Incomplete search

If the EPO considers that it is impossible to carry out a meaningful search on an application, it will invite the applicant to indicate, within 2 months, which subject matter it should searched.

If the applicant does not reply in time, or does not identify matter that the EPO can search, then the EPO will issue a partial search report or a declaration that they cannot carry out any meaningful search.

This change will help applicants in fields which often face objections that their application relates to excluded subject matter or is defined unclearly.

Divisional applications

The recently announced changes in divisional practice are discussed separately here.

Please do not hesitate to contact us here if you have any questions about the new rule changes.

This information has been prepared by Forresters. It sets out the present positions, as presently understood, on the basis of the latest information available, from various sources but it must not be relied upon and does not constitute legal advice. No liability will be accepted for any errors or omissions. Detailed advice should always be requested with regard to specific circumstances of any particular case, or issue, in any jurisdiction.

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As the importance of technology-based products and processes continues to increase, so too does the significance of patents.  Unsurprisingly, therefore, patent-related disputes are becoming more common and their consequences more significant than ever. Likewise, globalization means that patent disputes must increasingly be managed on an international rather than local level.

However, the lack of a harmonized patent dispute resolution system across the major jurisdictions means that this is not a simple exercise. Actions taken in one jurisdiction can have unforeseen consequences in another; the time taken in the various jurisdictions to reach a conclusion can vary considerably; and the measures and remedies available differ from country to country.

International Patent Litigation: Developing an Effective Strategy

International Patent Litigation: Developing an Effective Strategy

International Patent Litigation: Developing an Effective Strategy,” Edited by David Wilson (Globe Law & Business Publishing Ltd. 2009),  is a collection of articles covering patent litigation strategy from over 15 countries has been put together. Before enforcing any patent rights, you need to develop an effective strategy for using litigation as a means to an end. Editor David Wilson provides an overview of the issues in strategy development stating the case thusly:

“[D]ifferent countries approach patent litigation differently, both from a procedural point of view and substantively. As a result, not only are the procedures by which patent disputes are resolved different, but different remedies can be available and the length of time to obtain resolution can vary widely.”

Wilson sets out that the patentee must determine the landscape. That is, what patents, if any, have been infringed? What are the relative strengths and weaknesses of the rights? Once the landscape is set out, the patentee must consider when and where to litigate. Many of the factors to consider include the availability of pre-action discovery and disclosure, the availability of interim relief such as preliminary injunctions, the timetable for proceedings, the discovery process, each jurisdiction’s substantive and procedural patent laws and the cost of patent litigation in the jurisdiction(s) in question, of course.

The remainder of the book covers the aspects involved on a country-by-country basis — mainly Europe, Japan and the U.S. — with each jurisdiction covered by an expert in that country’s litigation practice. This book is a practical guide for those involved in the management of international patent litigation, from in-house professionals (patent managers, patent attorneys and general counsel) to those in private practice.

While not for the casual reader, “International Patent Litigation: Developing an Effective Strategy” will be invaluable for developing a strategy for protecting against infringements, preparing proper litigation strategy, estimating costs of litigation, and preparing to engage local counsel.  This is a guide for understanding not just the lawyers in certain jurisdictions but the very court system and how patent cases are heard.  By looking at the types of cases heard in the courts and the timetables involved, a patentee can make an informed decision on moving ahead with an action.

International Patent Litigation: Developing an Effective Strategy is available from Amazon and from Globe Law & Business Publishing Ltd. (

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India’s pharmaceutical industry caters to about 30% of the world’s generic requirements. Despite its tremendous volume, it has been facing difficult times recently, with the WHO stance on counterfeit drugs, as well as seizure of Indian generic shipments in the EU.

There is some good news now on the turf with the introduction of Bipartisan Biogenerics Consensus Bill: Promoting Innovation and Access to Life-Saving Medicine Act in US which shall open up the US markets to biogenerics. It is proposed by Rep. Henry A. Waxman who is also credited with an existing legislation on pharma generics to his name. (Hatch-Waxman Act) The Bill intends to authorize FDA to approve generic biotech drugs and provide a regulatory set up for the same. This would help Indian companies to launch their biological generics in US by 2010.

The patent protection for blockbuster first-generation biotherapeutics developed in the West has begun to expire, throwing them open for generic exploitation. While continued high demand, high prices, and applicability in previously untreatable conditions are behind the success of branded biologics, the absence of generic competition has meant that the growth has gone unchallenged.

The US Approach

While recognizing patient need for affordable drugs and the constant need to foster pharmaceutical innovation, the US authorities are keen to develop framework on timely resolution of patent disputes and market exclusivity provisions consistent with the Hatch-Waxman model. The highlight of the Bill remains the reduction in the exclusivity period to 5 years, with a possibility of extension to 3 more years in certain cases, which is 7-10 years at present. Global Pharmaceutical Association (GPhA), that represents the manufacturers and distributors of generic and active pharmaceuticals, says on its website:

“As our nation acts to strengthen our health care system, our priority must be to reduce costs while increasing access to quality care.”

For firms looking to develop biosimilars, some 75 proteins and peptide therapeutics were recently identified in US as potential profitable targets for new products. And significantly, a substantial proportion of these were approved as NDAs, meaning thereby that they can be targeted by biosimilar firms.

Indian and Chinese Markets

The Indian and the Chinese drug regulatory systems have since long favoured domestic generic companies through less rigorous regulations for pharma approvals and clinical testing standards. Currently, insulin, interferon alpha, erythropoietin (EPO), monoclonal antibody (MAb) products and recombinant vaccines are the biosimilars manufactured by a number of domestic biotech companies including Biocon and Wockhardt, who are keen to sell them in US. Biocon’s Insulin is slated to be the first biogeneric to hit US markets in 2011. The Indian government has also streamlined some of its drug application and review procedures in order to cash in on the opportunities.

The biotech industry has been investing heavily in the development of facilities as a result of strong tax incentives. The Indian biogeneric manufacturers are also upbeat about the new regulations that could provide guidelines on the manufacture and approvals, which have been missing so far. The sales that biologic agents command and the costs that they impose for payers combine to generate intense interest in the development of biogenerics.

The Challenges and Opportunities in India

The challenge now is to develop biogenerics at par with chemical counterparts. The infrastructure, academic network, technical confrontations and costs of making biogenerics are higher than for traditional chemically synthesized generics. The Department of Biotechnology is reported to spend around $200 million annually to develop biotech resources in the country, including the expansion and improvement of academic programs, the development of more and better infrastructure, the nurturing of biotech companies, and the improvement of technology transfer to businesses from universities and other noncommercial laboratories.

This is expected to bear fruits with the renewed focus on biogenerics- hailed as the future of medicine. At the same time, the biotech companies in India may look towards licensing development and marketing to western partners, as has been done by Biotech for its G-CSF biogeneric, ahead of its approvals.

With EU already having forayed into this arena and established a regulatory set up, the markets seem to be lucrative. The global market for biotech drugs grew by 18% last year and now exceeds $50 billion, which is 10% of the global pharmaceutical market at nearly three times the growth rate. The US bill is expected to simplify regulatory hurdles as well as set up a pricing strategy that would ultimately be helpful for generic companies of both countries.

Today’s Guest post is by the Group on Research, Publications and Programmes at Lex Orbis Intellectual Property Practice, Solicitors & Advocates in New Delhi, India.

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Responding to an article about robotic inventors (Science, April 3, 2009), which reports about a robot that actually developed and tested hypotheses regarding certain yeast and discovered new gene sequences, we ask whether robotic “inventions” will ultimately become free to the public without the possibility for patent protection.

American patent law (35 U.S.C. Section 102) says that “[a] person shall be entitled to a patent unless . . .” (emphasis added), and proceeds to set forth a number of exceptions to patentability. But that preamble to section 102 limits the ability to patent to a person, probably not to a machine. This conclusion is reinforced by section 101 that limits the invention to the discoverer: “[w]hoever invents . . . may obtain a patent . . . .” Section 101 uses “whoever” not “whatever.”  Thus, a person using a robot that might make an invention may face some serious statutory impediments to patent protection.

The situation is compounded by Section 102(f) that states that one cannot obtain a patent if “he did not himself invent the subject matter sought to be patented.” Thus Section 102(f) prevents one from obtaining valid patent protection if he gets the idea in question — even in private — from another source.

There is some existing U.S. patent practice to offer some hope. Existing DNA/amino acid sequencing machines provide inventors with information that inventors later patent, of course. There is a difference because such machines are automated and not capable of cognition, and much of the inputs into such machines are provided and selected by humans. And the resulting data and results are analyzed and verified later by humans.

Another case in point we deal with frequently involves high-throughput compound screening to identify promising compounds for pharmaceutical, agricultural and other purposes, but again, the inputs into screening machines are human, and the outputs are analyzed by humans. Still another example we see involves Monte Carlo analysis using Spice for electronic circuit design, again involving human inputs. There are numerous similar examples. However, unlike our examples, the robots discussed in your article seem to have an independent ability to generate and verify hypotheses, perhaps leading in patent parlance to independent “invention” by the robot, not the human.

There is the possibility that the programmer of the robot could be the inventor if the robot were given the hypotheses to test and parameters to evaluate, in which case the human would probably be the inventor on the theory that the robot was simply the “hands of the inventor.”

We use Europe to illustrate how things might be different in other countries. Article 58 of the European Patent Convention sets forth the “[e]ntitlement to file a European patent application thusly: “[a] European patent application may be filed by any natural or legal person, or any body equivalent to a legal person by virtue of the law governing it.” That language — never applied to the robot situation in your article to our knowledge — seems to provide some wiggle room for the possibility of the robot being an inventor in Europe. But one still has to name the inventor on European patent applications, which leads to an interesting question. Would the robot’s central processor be listed as the inventor? If so, it might need to be identified by serial number and where it resides. Interesting possibilities.

If a robot were to be or become an “inventor” under the laws of the U.S. or Europe it would seem that the owner or lessee of the robot would probably be the owner of the “invention” rather as employers are generally the owners of employees’ inventions. However, owners or lessees of such robots should do something akin to what employers do with employees: still get solid written contracts from the developers of the robots to make sure robot inventions are owned by the owner or lessee.

One final thought: we might someday ask whether a robot that gains true “cognition” or self awareness should be considered a “person.”  That day seems a long way off and perhaps a bit too much for any court to decide now. But that day may be coming sooner than we expect.

Today’s post is by Guest Baristas Robert Stevenson, Esq., Joseph Murphy, PhD, Esq., and Thomas Clare, Technical Advisor, all of Philadelphia intellectual property law firm Caesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd.

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After seeing the Senate Judiciary Committee vote to approve Senate bill S.515, the Patent Reform Act of 2009 (Leahy, Hatch, Schumer, Whitehouse), you have to wonder why compromise couldn’t have arrived earlier — and with fewer campaign donations.

But, preliminary reactions seem hopeful:

Innovation Alliance

The Innovation Alliance, a coalition of companies seeking to enhance America’s innovation environment by improving the quality of patents and protecting the integrity of the U.S. patent system, gave mixed reviews to the Patent Reform Act of 2009 (S.515), as approved today by a divided Senate Judiciary Committee:

“We are encouraged that the Committee has expressed a desire to continue working to achieve a true consensus,” said Brian Pomper, Innovation Alliance executive director. “This is welcome news, as we believe the post-grant review provisions approved today threaten to diminish the value and enforceability of U.S. patent rights at a time when America’s economic recovery and future job creation are dependent upon promoting U.S. innovation.”

Pomper noted that the post-grant review provisions of S.515 would create multiple avenues for challenging a patent’s validity without any meaningful protections to prevent abusive or serial attacks.  As a result, U.S. patent holders will spend precious time and resources defending their innovations against challengers, including foreign competitors, with much reduced odds of succeeding.  Small innovators will find it particularly difficult to defend their rights against larger and better-financed challengers, who could mount post-grant challenges for purely competitive reasons against perfectly valid patents.

Coalition for 21st Century Patent Reform

The Coalition for 21st Century Patent Reform sent their letter to the Senate Judiciary Committee in support of compromise patent reform legislation introduced in today’s mark up.

Our Coalition appreciates and recognizes the focus and hard work by Senators and their staff over the past several weeks that led to the reporting of the bill by the Committee. The compromise package, together with the other critical provisions of the bill, should improve the U.S. patent system.

With today’s vote, the 111th Congress has set a course that will foster American innovation and employment by ensuring the patent system is fair, balanced and promotes research and innovation.”

Biotechnology Industry Organization

The Biotechnology Industry Organization (BIO) President and CEO Jim Greenwood issued a statement regarding a consensus agreement on patent reform legislation which was approved by the U.S Senate Judiciary Committee:

“BIO commends the Senate Judiciary Committee for its success in developing a more consensus-oriented approach to patent reform legislation – one that makes encouraging progress toward reforms that will help strengthen and improve our nation’s patent system.  Thanks to the leadership of Chairman Patrick Leahy (D-VT) and Senators Dianne Feinstein (D-CA) and Arlen Specter (R-PA), we are optimistic that we will now see meaningful patent reform that preserves the incentives necessary to sustain America’s global leadership in innovation and spurs the creation of high-wage, high-value jobs in our nation’s innovation economy.

“We greatly appreciate the tireless efforts of Senators Leahy, Feinstein and Specter to craft careful compromises on several key issues, including damages and post-grant review.  While no compromise is ever perfect, we believe the Committee’s product breaks the logjam on the major issues that have held up patent reform for the past several Congresses and will clear the path for a bill to be completed without undue delay.

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The Senate Judiciary Committee voted to approve a patent reform bill, despite opposition from Sen. Orrin Hatch. This will send the bill to the Senate for a vote after including amendments. The Senate Judiciary Committee held an Executive Business Meeting to consider S.515, the Patent Reform Act of 2009 (Leahy, Hatch, Schumer, Whitehouse).  The legislation   is set to pick up where patent-reform efforts left off last year.

hatchHatch, a sponsor of the bill, said he could not support the amendment to the bill. Hatch and Sen. Patrick Leahy, chair of the committee and a chief sponsor of the bill, preferred the original language, which would have changed damages from total market value of the product to “a reasonable royalty.”

Hatch: I am afraid that the bill, as currently written, has the very real potential to undermine the stimulatory affects of not only our patent system but those abroad. As many of you know, I have been the strongest and longest advocate for reforming our patent system. We desperately need to streamline the process to spur growth in American innovation and keep our competitive edge. But, I cannot support a bill that I know does not improve the status quo.

Now, the way only Congress can punt on tough issues, the bill requires judges hearing patent infringement cases to play a “gatekeeper” role — sought by Senators Feinstein and Specter — to just figure out in some Kreskin-like way the appropriate damages by deciding if a patent that was infringed is crucial to the final product or bit player in the final scheme.

Other changes would tighten interlocutory appeals by requiring district courts to certify that specific standards have been met, and would create a pilot program to hire law clerks devoted to working on patent cases and provide funding for training in patent law. The agreement calls for the pilot program to run in at least six district courts from at least three different federal circuits.

Unfortunately, it may leave lots of people unsatisfied:

Feingold: Great strides toward a bill I can support have been made. Although it is difficult to tell how well drafted the new damages provision is since experts have not had much time to review and analyze it, the intent seems positive. I am pleased that the much more sweeping and untested damages provision from last year’s bill was abandoned. The modest changes in this bill are much less likely to severely undercompensate patent holders who prove their patents have been infringed, thus devaluing their intellectual property. Similarly, I am pleased that the venue provisions were modified to simply codify a recent Federal Circuit opinion that makes forum shopping more difficult while not preventing patent holders from having an infringement action heard in their own jurisdictions.

It is in the area of post-grant review that I remain deeply concerned about the impact of this bill. Simply put, even as amended, S. 515 still threatens to reduce the value and enforceability of U.S. patents. The reduction in value will most likely be felt by individual inventors, start-ups and small businesses, and research universities. These are the entities that don’t have the resources to mount a continual defense of their patents against repeated requests for inter partes reexamination that the bill allows. I hope that further work on these provisions can be done because as it stands the bill makes it too easy for would-be infringers to attack a patent, or make it too expensive to defend.

I was unable to pay attention for every minute of the Committee webcast but, if you really want a blow-by-blow account, see additional coverage at IP Watchdog.

Amendment to Damages Section:


(1) COMPENSATORY DAMAGES AUTHORIZED. Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.

(2) USE OF EXPERTS PERMITTED. The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances.


(1) IN GENERAL. The court shall identify the methodologies and factors that are relevant to the determination of damages, and the court or jury, shall consider only those methodologies and factors relevant to making such determination.

(2) DISCLOSURE OF CLAIMS. By no later than the entry of the final pretrial order, unless otherwise ordered by the court, the parties shall state, in writing and with particularity, the methodologies and factors the parties propose for instruction to the jury in determining damages under this section, specifying the relevant underlying legal and factual bases for their assertions.

(3) SUFFICIENCY OF EVIDENCE. Prior to the introduction of any evidence concerning the determination of damages, upon motion of either party or sua sponte, the court shall consider whether one or more of a party’s damages contentions lacks a legally sufficient evidentiary basis. After providing a nonmovant the opportunity to be heard, and after any further proffer of evidence, briefing, or argument that the court may deem appropriate, the court shall identify on the record those methodologies and factors as to which there is a legally sufficient evidentiary basis, and the court or jury shall consider only those methodologies and factors in making the determination of damages under this section. The court shall only permit the introduction of evidence relating to the determination of damages that is relevant to the methodologies and factors that the court determines may be considered in making the damages determination.

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commercedeptThe Senate has confirmed Former Washington Gov. Gary Locke as Commerce Secretary by unanimous consent. The United States Department of Commerce is the Cabinet department of the United States government concerned with promoting economic growth and operates the Patent and Trademark Office (PTO).

President Obama will now be looking to choose an Under Secretary of Commerce and PTO Director.  Secretary Locke’s responses to questions from Senator Sam Brownback (R-Kansas) on patent reform at his confirmation hearing may shed some light on what we can expect. The Commerce secretary nominee emphasized that patent laws should not benefit some industries over others and that their impact on jobs should be considered when evaluating new laws:

SEN. BROWNBACK: There has been legislation proposed in Congress over the past few years to change the patent laws, and it has become very contentious. The proponents are a group of high tech and financial services companies, and on the other side there is a larger group of companies from a variety of industries manufacturing, green tech, nanotech, biotech, pharmaceuticals, venture capitals. … Do you agree that we should not be changing our patent laws in a way that chooses one group of companies over another? If you are confirmed, do you feel you can consider this issue impartially and help guide the debate to a place where not choosing high tech over manufacturing, for example?

LOCKE: If confirmed, I would work with Congress on patent reform legislation that would enhance innovation by fairly balancing the interests of innovators across all industries and technologies. I agree that patent law reform should not favor one industry or any particular area of technology over another.

SEN. BROWNBACK: Many high-tech companies that oppose S. 515, the Patent Reform Act of 2009, rely on their ability to protect their patented innovations by receiving damage awards from proven patent infringers. The proposed legislation changes the way damages are calculated, making infringement far less costly. In your role overseeing the USPTO, would this concern you? Are you concerned that this well-meaning patent legislation will actually hamper U.S. innovation?

LOCKE: Innovation is critical to creating jobs and bringing us out of the current economic downturn. Any statutory proposal must be weighed in terms of its effect on job creation and promotion of innovation. If confirmed, I will review all patent reform proposals that perspective.

SEN. BROWNBACK: The high-tech sector is divided between those who primarily invent and those who primarily package and market inventions. It is understandable that, just as any business wants to cut its costs, some high-tech companies who pay for others’ patents would want to reduce the costs for the patents they purchase or license from other high-tech companies. The damages provisions of the Leahy patent bill, S. 515, would have the effect of devaluing patents. Are you concerned that degrading patent holders’ rights might be a tempting short-term response that could have serious long-term consequences for our economy?

LOCKE: If confirmed, I would not support any statutory reform that devalues patent holder’s rights.

SEN. BROWNBACK: In your questionnaire you indicate that you hold stock in Microsoft, a member of the Coalition for Patent Fairness, a group that has been lobbying in favor of the Leahy patent bill. Given your personal interest in this company, how can you guarantee that you will approach the patent reform debate objectively?

LOCKE: If confirmed I am confident that I can and will continue to exercise my best objective judgment in all policy matters and I commit to consult with Ethics officials to ensure that my involvement in this area is entirely consistent with Ethics rules.

SEN. BROWNBACK: If you are confirmed you will inherit a serious problem at the Patent and Trademark Office that was created by known as “fee diversion.” It occurs when the Administration or Congress redirects the patent and trademark application fees paid by inventors, research universities and innovation companies to other spending. Currently the backlog of patent applications is nearly 800,000 applications and it takes at least 31 months to issue the patent. …  Since PTO is not funded with taxpayer dollars but with user fees, do you support the permanent ending of fee diversion?

LOCKE: The mission is critical to American innovation and invention. If confirmed, I will maintain the threshold principal that all user fees paid for services should remain with the USPTO as it has for the last years. If confirmed, I will work to continue that the user fees stay with the Office to be spent on managing and improving USPTO operations.

SEN. BROWNBACK: I recently joined Senators Feingold, Kyl, Wyden, Grassley, and Bond in sending a letter to Judiciary Committee Chairman Leahy asking that the Committee not rush patent reform legislation and work with those voicing concerns about the bill. … I am very concerned that this bill is intentionally being rushed when there is no Commerce Secretary nor is there an Under Secretary of Commerce for Intellectual Property (PTO Director). Do you agree that this sweeping legislation that will greatly impact the economy should not be considered until the Administration has its Commerce Secretary and PTO Director confirmed?

LOCKE: The administration will be better able to participate in this critical legislative process when political leadership is nominated, confirmed and in place at USPTO. If confirmed, I will be actively involved in representing the Administration’s views with stakeholders and Members of Congress on this landmark legislation.

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The Japan Patent Office has just announced a new policy to help stimulate the economy.  It relates to the fees for filing a request for examination.  Apparently, the Japan Patent Office is not the only patent office to experience a large drop in the number of patent applications being filed.  The JPO’s annual report shows that the office received 396,291 applications in 2007 or about, 12,000 less than 2006.   This could have something to do with the fact that like the EPO and the USPTO, the JPO currently grants under 50% of the applications that it examines.

Specifically, starting April 1st and running for a period of two years, an applicant for a patent with the JPO can file a request for examination but delay payment of the fees for up to one year!  The payment will be due one year from filing the request, but if payment is not made at that time the JPO will issue an Order to Amend asking for the payment.  Failure to pay within a stipulated deadline will result in abandonment of the application. This delay can be taken anytime within the 3 year period for filing the request for examination.

This would seem to allow a client to delay a substantial outlay of funds at an early stage while still retaining a place in the queue for examination. This may be beneficial to many patent filers in these economically stressful times.  Note that this is not effective for expedited examination.

For those looking for a fast track to a patent, however, might want to make use of the JPO’s trial “super accelerated examination.”  According to the JPO, Keio University received a patent for a process for detecting toxic metals following a screening process that took just 17 days.

To make use of the system, the JPO requires the following:

  1. Applicants have already requested an examination, but for which the examination process has not yet started (i.e., Reasons for Refusal and other office actions have been taken)
  2. Working invention-related application, applications filed by an applicant or a licensee who has already commercialized the invention or plans to commercialize the invention within two years from the filing date
  3. Internationally filed Applications, that is, applications that were filed with both the JPO and at least one foreign IP Office
  4. Applicants file online

The JPO is planning to continue the test for at least six months and lead to the revision and official operation of the system after considering the opinions of the applicants who used the test system.

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