PCT and Foreign Patent Law

Question 1

What is a continuation application at the US Patent and Trademark Office?

Answer 1

The Manual of Patent Examining Procedure (MPEP)

“at any time before the patenting or abandonment of… his or her earlier nonprovisional application, an applicant may have recourse to filing a continuation in order to introduce into the application a new set of claims and to establish a right to further examination by the primary examiner”

Question 2

When can patents be extended under Japanese law?

Answer 2

The term of the patent may be extended by up to 5 years, where the patent invention cannot be worked because the relevant approval has not yet been obtained.

Question 3

What are two differences between German patents and utility models?

Answer 3

Any two of:

• Lifespan (10 years for UM, 20 years for a patent)
• Differences in protectable subject-matter (no method/process claims for UM)
• Different prior art standards (oral disclosures and public use outside Germany don’t count against UM)
• UM is an unexamined IP right

Question 4

What are the official languages of the EPO?

Answer 4

English, German and French

Question 5

Name the languages which are languages of publication under the PCT?

Answer 5

• English, French, German
• Spanish, Portuguese, Russian
• Arabic, Chinese, Japanese, Korean

Question 6

When does the international phase end under the Patent Cooperation Treaty

Answer 6

• International phase lasts a minimum of 30 months from the priority date
• Some jurisdictions allow more time (UK and EPO 31 months allowed)
• For some jurisdictions, the old limit of 20 months applies (Luxembourg)
• In some countries paying an additional fee allows late entry, (Canada allows late entry for 42 months if deadline missed unintentionally).

Question 7

What is required to obtain a date of filing under the Patent Cooperation Treaty?

Answer 7

PCT Article 11

• the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office,
• the international application is in the prescribed language,
• the international application contains at least the following elements:
• an indication that it is intended as an international application,
• the designation of at least one Contracting State,
• the name of the applicant, as prescribed,
• a part which on the face of it appears to be a description,
• a part which on the face of it appears to be a claim or claims.

Question 8

What do the following letters mean on a UK IPO search report‎: X, Y, A, P and E?

Answer 8

• X = Relevant by itself
• Y = Relevant only in combination
• A = Background material
• P = Published on or after the priority date but before the filing date of the application in suit
• E = Filing or priority date earlier than, but a publication date the same as or later than, the filing date of the application in suit

Question 9

When can a European patent be opposed at the European Patent Office?

Answer 9

Opposition must be filed within nine months of the publication of the mention that the patent has been granted.

Question 10

On what grounds can a European patent be opposed at the European Patent Office?

Answer 10

• patentability - that the subject-matter of the patent is not patentable within the terms of Articles 52-57 EPC (novelty, inventive step, industrial application, excluded subject-matter)
• insufficiency - the invention is not disclosed clearly and completely enough for a person skilled in the art to carry it out,
• added matter - that the patent’s subject-matter extends beyond the content of the application as filed.

Question 11

What is required to obtain a date of filing under the European Patent Convention?

Answer 11

Rule 40 (EPO Guidelines)

• an indication that a European patent is sought;
• information identifying the applicant or allowing the applicant to be contacted; and
• a description or reference to a previously filed application.

Question 12

Where the language of proceedings at the European Patent Office has been German, what is required to validate the patent in the United Kingdom;

Answer 12

In this case - nothing. German is an EPO language and a signatory of the London agreement.

States which have signed the London Agreement and have one of the EPO languages as an official language, do not require any translation of the text in order for the patent to be validated nationally (translations of the claims in all three EPO languages are still required prior to grant).

Question 13

Where the language of proceedings at the EPO has been German, what is required to validate the patent in Hungary.

Answer 13

• Hungary is a London Agreement country but does not share an official language with the EPO.
• For this reason, Hungary is permitted to elect one of the three official languages of the EPO into which the patent Description must be translated, and to require the Claims to be translated into an accepted language.
• Hungary requires the Description to be translated into English - assuming the patent is not already in English - and the Claims into Hungarian

Question 14

When an examiner at the USPTO rejects an application, what routes of appeal are available?

Answer 14

• Request for continued examination (RCE) along with a fee.

Appeal

• Appeal to the patents and trademark appeal board (PTAB)
• If PTAB rejects the appeal, then appeal to the US district court for the Eastern District of Virginia
• Instead of (b), or if (b) is rejected, appeal to the US Court of Appeals for the US Federal Circuit
• If (c) rejected, final appeal to the US Supreme Court

Question 15

What, if any, grace period is available under Japanese patent law?

Answer 15

After 9 June 2018

• 12 months
• A written submission to be filed with the application
• Evidence supporting the use of the grace period filed within 20 days

Before 9 June 2018

• 6 months

Before 1 April 2012 a different grace period applies

Question 16

When is the end of the period for entering the national phase in the United Kingdom;

Answer 16

• Under Chapter I, an international application enters the national phase in Luxembourg at 20 months from priority date;
• If a Chapter II demand is filed, enters at 30 months from the priority date.

Question 17

When is the end of the period for entering the national phase in the UK?

Answer 17

The deadline for entering the UK national phase is 31-months from the priority date.

Question 18

When is the end of the period for entering the national phase in Canada?

Answer 18

• Under current practice, a patent applicant may enter the Canadian national phase between 30 and 42 months of an international application’s earliest priority date as of right by paying a late fee of $200.
• The new Rules eliminate this right. Entry between 30-42 months remains possible only if an applicant satisfies the Patent Office that the failure to enter by the 30-month deadline was unintentional, and if the applicant pays a $200 reinstatement fee.
• The new regime applies only to PCT applications with an international filing date on or after October 30, 2019.

Question 19

Discuss the significance of international phase in the context of the PCT.

Answer 19

• International phase refers to the period from the filing of the international patent application under the PCT until entering national phase.
• It involves the filing and receipt of an international application, international search for relevant prior art and publication of the international application;
• It is significant because it allows applicants to seek protection for their invention in multiple jurisdictions with a single application.
• It eliminates the need to directly file several separate applications in the jurisdictions of interest and therefore allows the applicant to deal with simpler fee and formalities requirements and allows the postponement of major costs associated with getting patent protection in multiple jurisdictions as well as harmonises major requirements.

Question 20

Discuss the significance of national phase in the context of the PCT.

Answer 20

• National phase takes place at the end of the PCT procedure, usually at 30 months from the priority date.
• This is when the patent enters the specific countries/regions for which the applicant seeks patent protection.
• This is significant as the decision to grant patents remains under the control of the national Offices.
• In the UK, a positive International Preliminary Report on Patentability (IPRP) during the national phase can allow acceleration of examination on entry to the national phase

Question 21

What is the trinity applied for determining equivalents for the purposes of US claim construction?

Answer 21

Under the “triple identity” test developed in Graver Tank & Manufacturing Co., features are deemed equivalent if:

• they perform substantially the same function
• in substantially the same way
• to yield substantially the same result.

This is confirmed by Warner-Jenkinson (1997).

Question 22

When an examiner at USPTO rejects an application, what routes of appeal are available?

Answer 22

Usually, after a final rejection by the USPTO, the applicant has a chance to file a request for continued examination (RCE) along with a fee.

Alternatively, regarding appeals, the following routes are available:

• Appeal to the patents and trademark appeal board (PTAB)
• If PTAB rejects the appeal, then appeal to the US district court for the Eastern District of Virginia
• Instead of (b), or if (b) is rejected, appeal to the US Court of Appeals for the US Federal Circuit
• If (c) rejected, final appeal to the US Supreme Court