Patent Application Examination: Global Perspective

The Examination is the process of ensuring that an application complies with the requirements of the relevant patent laws and basic criteria of patentability. This includes novelty, non-obviousness and industrial applicability requirement. The examination plays a very critical role to decide the fate of an invention. The examination system varies from country to country and completely depends upon local patent rules and regulation. We have tried to give an insight of difference in patent application examination process in major patent offices such as USPTO, EPO, JPO, KPO (South Korea) and IPO (India).

In USA, a patent application is examined by default (assuming that all of the required materials (i.e. specification and oath/declaration) have been filed. There is no need to file a request for examination, unlike certain other countries. An examiner is assigned to your application in the appropriate art unit. However, the applicant or attorney can file a status request with the United States Patent and Trademark Office when he or she thinks that the USPTO has forgotten about his application, or has misplaced his application.

If, you file a "Provisional" Utility US patent application it is not examined. You must file a "non-provisional" utility US patent application to have the claims examined or petition for conversion of provisional into a non-provisional. The filing fees include a filing fee, a search fee, and an examination fee. If only the filing fee is paid, the USPTO will not examine your application until the search and examination fees are paid.

At EPO, There is a need to file “request for examination” to examine whether the European patent application and the invention meet the requirements of the European Patent Convention and whether a patent can be granted. The request for examination may be filed from the date on which the application is filed up to the end of six months after the date on which the European Patent Bulletin mentions the publication of the European search report. If the request for examination is not filed within this period, the application is deemed to be withdrawn. When accelerated examination is required, the applicant files a request for examination before the search report is transmitted to him, he may also dispense with the need to comply with the invitation pursuant to Rule 70(2), and file a categorical request for examination whatever the result of the search may be, by which the procedure can also be accelerated (see Notice from the EPO dated 14 July 2007, Special edition No. 3, OJ EPO 2007, F.1). In this case, confirmation that he desires to proceed further with his application is deemed to be given when the search report is transmitted to him, so that in accordance with Rule 62(1) the search report is not accompanied by a search opinion.

AT JPO (Japan), request for examination is needed. For national phase application request must be filed within three years from the filing date (PCT). The accelerated examination is available in Japan and first office action usually issues within 6 months or less of filing the request for accelerated Examination. JPO also started trial of “Super Accelerated Examination,” to meet the needs of applicants who require quicker results

At KPO (South Korea), request for examination is needed. Request for examination is required within 5 years from the filing date. There is preferential examination in South Korea where, the commissioner of the Korean Intellectual Property Office may direct an examiner to examine an application in preference to another.

In India, Request for examination is needed, within a period of 48 months from the date of priority of the application or from the date of filing of the application whichever is earlier. Where no request for examination of the application for patent has been filed, the application will be treated as withdrawn.

If you outsource IPR (patent) work, what are your major reasons?

a) Lack of in-house resources
b) Cost containment
c) Time crunch for deliveries
d) Helps control IP investments
e) None of the above
Please specify any others
Vote and see at: http://polls.linkedin.com/poll-results/67295/tfldm

Omnibus Claims

Omnibus is the Latin word meaning "for all, for everyone," and as per the dictionary, one of the meaning is “a printed anthology of the works of one author or of writings on related subjects”. Patent claims are expressions, usually follow the description of the invention in a patent or patent application, and define, in technical terms, the extent of the protection conferred by a patent or by a patent application, when applicable. They are of the utmost importance both in examination proceedings and in litigation, for instance during infringement actions. There are two basic types of claims: independent claims and dependent claims. Claims further can be defined as Jepson claim, Markush claim, Means-plus-function claim, Product-by-process claim, Swiss-type claim and Omnibus claim based on the structure.
Omnibus claims are common in UK and Indian patent practice. They are worth including while filing a patent application. They do have to be drafted carefully to avoid including prior art embodiments. Omnibus claims are not allowed in U.S. patent applications and should be rejected by the patent examiner because such claims are indefinite. See MPEP § 2173.05(r).

An omnibus claim is usually added as the last claim in order to include the drawings and description within the scope of the claims. So, while the claims put boundaries of what is being claimed as invention, the omnibus claim expands those boundaries to include the parts of the invention mentioned in the specification and drawings but not expressly mentioned in the claims. The omnibus claim is usually used in order to ensure that nothing that has been mentioned in the description and drawings has been left out of the claims. In India, it is possible to exclude an omnibus claim. The Indian Patent Office does not require the inclusion of omnibus claims, and in fact, specifies in its Manual of Patent Procedure that omnibus claims are allowed only if the specification includes a statement of invention. However, omnibus claims are very useful in ensuring that any aspect of the description that has been omitted by accident will be incorporated by reference. For this reason, it is recommended to include omnibus claims for the sake of protecting whatever is disclosed in the drawings and specification apart from the claims. Probably it’s just a tool used by patent drafters now to 'feel' safe that they have covered everything.

Lab Auctions ..................................................

We have heard of art auction site to merchandise auction site but did we anytime heard about industrial equipment auction site, the answer might be "No". Yesterday while I was browsing through some site I saw some we blink for lab auction, we can access this site through http://www.equipnet.com/, here you have webinar auction of varied system for industrial use, and mode of payment is like general auction sites like eBay and rediff auctions.

But what about the guarantee of the product, that is the main issue which comes in my mind, how can we rely on such sites?

Pfizer: offering Prescription drug to Unemployed

During this current recession Pfizer came forward with a new initiative named MAINTAIN program which stands for "Medicines Assistance for Those who Are in Need" For those who have lost their job from January 1st 2009 and having financial need and have been taking Pfizer medication for at least three months before losing their job and have no prescription drug insurance.Enrollment and acceptance in the program will help the unemployed and their family’s s to access and receive Pfizer prescriptions free for one year.

It’s great to know that world's largest conglomerate is working for a cause :)

Technology licensing vs. Product licensing

License are granted for business, products and technology. Business licensing is only concerned with manufacturing, sales and marketing of goods. IP professional are not much concern with this class of licensing. Product licensing relates to transactions that enable a buyer to duplicate and produce molecule or a device that has already been proven by the seller. In this kind of situations, the buyer will need essential surroundings to make profit from the license.
Technology licensing in itself a huge field, actually deals with licensing of non-tangible property rights generated by R&D activity a company and in most of the cases protected by one or another kind of IP. This kind of transactions mainly designate transactions for pre-commercials designs, data, R&D concepts, business plans, method of manufacturing and patents covering them. Technology licensing is becoming an increasingly important transaction category.
As we discussed, technology rights are usually expressed in three important form of IP such as patent, trade secret and copyrights. One of the requisite for technology licensing is technology valuation. It would be assumed that IP protection exists when considering the valuation of technology. Hence, we actually value IP. The extent and strength of IP protection are dimensions of a technology valuation.

Measure of R&D, patenting and licensing is available through Association of University technology managers (AUTM) http://www.autm.org/. But off course, there are some issues with technology licensing. In technology licensing, there is no past history. The issue of forecasting play a major role, all data needs to be developed from sketch. Over all uncertainty in technology licensing is higher then product or business licensing. This difference can be narrowed by skillful due diligence and analysis.

World IP Day Celeberation in India

It was the occasion of celebrating word IP day in India. The joint secretary of DIPP, Ministry of Commerce and Industries, Government of India, Mr. N.N Prasad was addressing the IP community. He told that India is making right move in development of robust IP system and very soon patent office is going to operationalize authority for ISR and IPEA. It is a movement of proud for IP community that India has been awarded such a status.

He told that the government is also putting efforts to protect our traditional knowledge. There has been misappropriation of Indian traditional knowledge in past for e.g. turmeric, basmati and now Yoga. He also discussed about hurdles coming in the way of transaction of generic drugs to other countries, since Indian is one of the biggest generic drug exporter.

Mr. Madhav Lal, the additional secretary and development commissioner for micro, small and medium size industries also shared his views on this occasion. He advised that Indian SME’s need more orientation for protection of their inventions.

The government has come up with various responses from time to time such as national competitive program with 280 crore rupees. This would help in building awareness for intellectual property and creating sensitization in SME plus conducting training. Ministry also has a plan to organize around 150 IP related programs over the period of 5 year and conducting pilot studies which would be a silent feature to support IP facilitation. He told the government has started another scheme under which concept of idea incubation and funding for its nurture has been introduced. Twenty five institutes have been approved under this scheme, assisting 6.25 lakh rupees per year for each idea and each institute would get fund for 10 ideas per year. Award giving program is also introduced. The objective of award is to promote inventors. Finally, Mr. Lal told that main barrier for SME is lack of resources, confidence, reliability and ministry is helping them to come over it.