NAIP Patent Blog

• Obama: Open Source IT Solutions for US. - It's likely to see US patent reform under the aministration of Obama. In order to curb government spending, Obama is investigating the possiblility of open source IT solutions. One of the first priorities of President Obama is to determine whether it is feasible to stop relying on proprietary software bought from companies like Microsoft, Oracle and IBM. (From IP Watch)

• Microsoft to cut up to 5,000 jobs. - Times are changing for the once Mighty Microsoft... with a drop of 7.9% in its Share Price (Wall Street) net profit for the three months to 31 December down 11% on last year - the future at MS is looking gloom. Richard Williams, an analyst at Cross Research, said: "Microsoft has never had a layoff like this in my knowledge, and it's sending a signal that the times are definitely changing." (from BBC )

• China says to spend $58.5 bln on 3G over 3 years. - On Thursday, the Chinese government announced that China's three mobile carrier networks will start to build out their third generation (3G) networks. An estimated US $ 58.5 billion will be invested in this project. The long awaited licences were awarded by government in an effort to catch up with worldwide mobile technology as well as video and media applications. (from Reuters UK)

Due to the Lunar New Year, the Taiwan Intellectual Property Office (TIPO), the Intellectual Property Department of Hong Kong (HK IPD), and the State Intellectual Property Office of China (SIPO) will be closed.

Like many patent offices, if due dates or deadlines fall on a day in which the Office is closed, they will automatically be "pushed back" to the first day the Office is again open.

For reference, the Office open and closed dates are marked on the charts below. Note the differences in Office closings for TIPO, HK IPD and SIPO. Also pay special attention to the "make-up" days for SIPO.

• Watch out! The changes in Chinese Patent Law are coming. - The changes to Chinese patent law go into effect in October. What effects will these changes have on the behavior of Chinese companies? What concerns do they have? Also how will it influence trends in the industry? This article provides a brief overview of theses issues that surely will become major points of focus in the coming years. (from IP Watch)

• Apply for Chinese Copyrights in Japan. - A joint venture by the Copyright Protection Center of China and several Japanese companies, called the Golden Bridge Co., will allow Japanese companies to register copyrights for China in Japan. In addition to cost savings from not having to hire Chinese lawyers as agents, companies can significantly reduce wait time by up to two weeks. (from Daily Yomiuri Shinbum)

• Zen And the Art Of Intellectual Property in China. - An interesting look (and meditation, of sorts) on how commercialization/industrialization is being used to spread the ideas of the Shaolin Monastery: Zen Buddhism, Traditional Chinese Medicines, and everyone's favorite: Martial Arts. (from IP Dragon)

• Imagine a world free from DRM, copyrights and patents. - A thought that perhaps many of us had, now unleashed onto the Internet. Here the comments are the main attraction, with some insightful, some ridiculous, and some irrelevant, but all entertaining. (from TG Daily)

by Charl Goussard, NAIP Legal Research

It's no secret that no matter where you apply in the world, patents are time and cash consuming! However, due to a unique, two-stage patent system and multiple national languages, those wishing to patent in Europe require even more time and somewhat deeper pockets.

At the European Patent Office (EPO), patents are prosecuted in one of three official languages: English, French or German. In the past, however, to be validated in a European Patent Convention (EPC) member state, the text of the patent (the specification) had to be translated into that country's national language. Considering that the EPC currently consists of 35 member states, each with its own official language, translating patents could become a huge burden! Some speculate that translation cost can easily run up to 40% of the total patent cost.¹

Apart from being time and cost consuming, the need for translated patents seems to be superfluous. Practice has shown that whenever a patent is infringed, the parties as well as the court involved exclusively refer to the text of the patent as granted by the EPO – the translated version is left in the dark!² Furthermore, since patents are usually granted three to five years after filing, the translations seldom achieve the purpose of informing others of new technology - by the time the translated version are published, the technology is already well known.


Time for a change: The London Agreement

Recognizing the need for a cheaper, more streamlined system, some EPO member states adopted the London Agreement. The rationale for the London Agreement is to cut costs in the post-grant phase of European patents, such as translation costs, publication fees as a result of fewer translations, and patent attorney fees.

Signing of the London Agreement is optional, and since its entry into force on May 1 2008, 14 EPC member states have ratified the agreement.


Implementation

The London Agreement differentiates between two types of EPC member states: those who have English, French or German as an official language (Group I) and those who don't (Group II).


All of the above countries still require that the claims of the European Patents be translated into their national language for validation.

Countries falling within the first group will no longer require a translation of the patent specification for validation of the patent in that country. Remember that it is still a pre-grant requirement that European patents’ claims be translated into English and French when the language of the application is German – and vice versa!

Countries falling within the second group will select one of the three official EPO languages as the required language in which European patents will have to be translated for validation. However, these countries retain the right to require a translation of the patent claims into one of their official languages.


Cost Reductions Scenarios

The trimming down of translation cost after implementation of the London Agreement depends on the countries designated by the patentee. The most significant cost reduction occurs where designated countries have signed up to the London Agreement.

From our explanation above we can conclude that the London Agreement generally has a cost saving effect. The countries designated by the patentees will however determine the exact extend of cost saving as a result of the London Agreement.

The following charts, aided by examples, are helpful references for the various scenarios one could encounter under the London Agreement.


General Purpose Chart





For the purpose of our examples, we assume that the language chosen by the applicant for prosecution at the EPO is English.



Example 1: Designated to the UK, France and Germany






Example 2: Designated to the UK, France, Germany, Norway and Finland






Example 3: Designated to France, Germany, Netherlands and Spain


*Translation of claims only into Dutch (The Netherlands have agreed to the London Agreement and specified English as their language of preference).




Example 4: Designated to France, Germany, Belgium and Austria


Upon grant of patent by EPO – translation of patent specifications into French and German for Belgium and Austria respectively – both have failed to join the London Agreement.


^1,2 http://www.epo.org/topics/issues/london-agreement.html

• The end of an era: John Dudas Resigns. - As expected and predicted by many, the much maligned USPTO director will resign, official January 20^th. IAM blog recaps some crucial issues during his tenure, in which both much changed, and much that was supposed to change didn't. (from IAM Blog)

• Who are the IP world's top dogs of 2008? - IEEE has compiled a comprehensive "scorecard" of businesses with the strongest and most influential IP portfolios. Based on their Pipeline Power metric, the list provides some surprising names and is perhaps a preview of the patent leaders of the future. (from IEEE Spectrum)

• Software & Business Method Patents for Japan? - A major year-long study set to begin at the end of this month will look at making revisions to Japan Patent Law on topics such as disput resolution, employee inventions, speeding up examinations, improving ease of reading text, and most important: revising the definition of "invention" in protected subject matter. The news article (English) is available here. (from 271)

• More cautious, reserved hope for Patent Protection in China. - A strong ruling in Shenzhen against software pirates may be a breakthrough for IP holders in China looking to the government for help. However, the question remains: will the rest of China follow Shenzhen? (from China Business Law Blog)

The Taiwan Intellectual Property Office (TIPO) has initiated an Accelerated Examination (AE) program that will take into consideration the examination results conducted by foreign Patent Offices. Through the program, invention patent applications may receive examinations results in as quick as six months depending on field of technology. Applications will be accepted for a trial period beginning January 1st 2009 and lasting for a duration of one year.

Taiwan currently does not participate in any Patent Prosecution Highway (PPH) programs with other Patent Offices, but the AE program will follow the same general principles and procedures. Unlike PPH programs, however, applications at TIPO already under substantive review will still qualify. Acceptable examination results must be from corresponding applications in foreign Patent Offices that have been granted—no restriction has been set as to which foreign Patent Offices are acceptable.

More information, including requirements, can be found on the TIPO website here (Chinese only).