A leading foreign filing platform provider, inovia, has been granted patent protection by the Japanese Patent Office for the technology behind its European patent validation service. The company now has a Japanese patent (Japanese patent number 2008-509268) to go along with patents in Australia, New Zealand, Singapore and South Africa.
“Japan has a reputation for being one of the toughest countries to award patents, so we’re proud that our European validation technology has been recognized as an important innovation for the Japanese market,” shared Justin Simpson, inovia Founder and Patent Attorney.
inovia also has a pending U.S. patent application on the european validation technology. U.S. Patent Application No. 20080201334 claims as priority the PCT filing that lead to issuance of the patent in the aforementioned countries. The ’334 application explains that the invention relates to a “computer system…designed to send a validation instruction message to a number of European attorneys, asking them to validate a granted European patent.”
To pursue patent protection in Europe, typically one files a European patent application with the European Patent Office (EPO). This EPO filing will by default designate each of the European contracting states. After filing, the European patent application is examined by the EPO. At the conclusion of a successful process, the EPO will grant a patent. Applicants then have three months from publication of the granted patent to validate the patent in the individual European countries. Each individual country must grant the rights, and patent rights will only be ultimately achieved in those countries where the patent is validated.
The validation process differs in each country at least slightly. The validation process generally involves paying a fee and filing a translation. Once validated, no further patent prosecution is required in the individual European countries.
The inovia system stores the European patent specification in the remotely accessible memory in encrypted form. Validation instructions are transmitted to a European patent agent or attorney to validate a granted European patent in specific countries. The system addresses one of the primary drivers of cost in the validation process, namely the number of people involved. One disadvantage of current methods is that as each attorney in the chain handles a file and they charge the client additional fees. This is true even if the attorney or agent simply looks at the application and obtains a quote for translation services. Therefore, the invention here is intended to streamline and make uniform the process.
The inovia system calculates all of the validation costs, including the attorney fees, the government fees and the translation fees. The ’334 application explains:
In order to accurately calculate this cost, the number of words in the specification needs to be known. For this reason, the interface 2 includes a word count receiver 12 such as a text box, adapted to receive a word count 16 corresponding to the number of words in the European patent specification. The computer system calculates the validation cost with reference to a lookup table 13.
The ’334 application goes on to say:
The translation costs are calculated by multiplying the word count 16 by the per-word translation rate stored in the lookup table 13. Alternatively, a word count can be initiated automatically by the system, either by counting the words if the specification is in a text format, or by performing OCR (optical character recognition) on the specification if it is provided in an image form. Obviously, since it is only the number of words being counted, the quality of the OCR process is not critical, so long as word gaps are distinguished accurately.
inovia’s foreign filing platform has been used to coordinate more than 20,000 foreign patent filings totaling more than $50 million to date. The global instruction platform has become so popular it ranked third in the world and first in the United States among PCT filing firms, according to annual rankings by Managing Intellectual Property magazine.
For more information on European validation you can download inovia’s European validation e-kit for more information on the filing specifics of each country.
Written by Gene Quinn of IPWatchdog.com
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