Patent Law Practice Center

Trilateral Patent Offices Step Closer on Patent Harmonization

Written by Gene Quinn, of IPWatchdog and Practice Center Contributor.

In view of the growing need for innovator companies to obtain patent protection in multiple Patent Office around the world simultaneously, leaders of the most heavily used patent regimes continue to seek ways to streamline the process and engage in work sharing. In an effort to continue to move forward in the absence of true global cooperation, the Trilateral Offices at their 29th Trilateral Conference considered proposals to reduce the burden for patent applicants by increasing cooperation on procedures and improving the exchange of procedural information.

Meeting for their Annual Trilateral Conference near Paris, France, the heads of the European Patent Office (EPO), the Japan Patent Office (JPO) and the United States Patent and Trademark Office (USPTO) – collectively known as the Trilateral Offices – pushed forward earlier this week with efforts to further harmonize global patent systems. The Trilateral Offices agreed on steps to enhance efficiency in patent-related procedures.

Click here for Gene Quinn’s full article on IPWatchdog.

Tech Giants Weigh In On USPTO Post Grant Rule Making Effort

Written by Scott McKeown, Partner at Oblon Spivak, Practice Center Contributor and author of Patents Post Grant blog.

Group 2 Comments on AIA Implementation Due to USPTO Tomorrow

As pointed out last week, the USPTO has been busy fashioning new rules to implement the various provisions of the Leahy-Smith America Invents Act (AIA). Comments on Group 2 Rules, which include Inter Partes Review & Post Grant, must be submitted by November 15th.

Last week, Cisco, Google, Verizon and Intuit submitted joint comments (here) directed solely to the implementation of post grant proceedings, namely, Inter Partes Review (IPR) and Post Grant Review (PGR). Not surprisingly, these tech giants (i.e., targets of serial patent infringement suits) are especially supportive of post grant mechanisms as an alternative to traditional litigation. The Group’s comments encourage the Office to adopt liberal standards for initiation of IPR and PGR, limit the potential estoppel affect of a concluded proceeding, and provide procedural flexibility for petitioners. (more…)

Will Any Patent Application Be Better Off Under The America Invents Act?

The following analysis of the changes to 35 USC § 102 under the America Invents Act comes from Courtenay Brinckerhoff ,writer of PharmaPatents Blog and Partner at Foley & Lardner.  Brinckerhoff questions whether any patent application will be better off under the new law?

The changes to 35 USC § 102 embodied in the America Invents Act (AIA) take effect on March 16, 2013, under complicated effective date provisions. The general consensus seems to be that applicants should try to file new applications before the law changes, because (for example) applications filed under the new law will be subject to a broader definition of prior art and will lose the ability to swear behind certain prior art by proving an earlier date of invention. Moreover, patents granted from such applications will be subject to challenge under the new post-grant review provisions.In counseling clients on how to prepare for the impact of patent reform, I’ve been trying to identify situations where an application might be better off under the new law. So far, only one scenario comes to mind–an application threatened by an inventor-based disclosure that was made before a foreign priority date. (more…)

Google Challenge To Tierravision Geographic Database Patent Among The Reexamination Requests Filed Week of 10/31/11

Here is the latest installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor…

Earlier this year Tierravision sued Microsoft, RIM and Google, accusing them of selling Internet-based map services that infringe U.S. Reissue Patent No. 41,983.   Google has now replied by requesting reexamination of the ‘983 patent (see inter partes Request No. (3)). Google’s Request is a bit spicier than most.  At the very outset, it asserts that “Tierravision buried the 18 claims subject to reexamination in a wildly varied set of 70 total claims,” with the result that “[t]hey bear little or no resemblance to the claims of the original patent, yet the original Examiner subjected them to virtually no scrutiny, allowing them in the first action without any explanation.”  It seems likely that RIM and Microsoft will file their own Requests.

Research in Motion has requested reexamination of U.S. Patent No. 6,055,439 owned by MobileMedia Ideas (see ex parte Request No. (14)). The ‘439 patent was originally assigned to Nokia and is one of a portfolio of mobile phone patents assigned by either Nokia or Sony to MobileMedia.   (more…)

The UK Patent Box Proposal: How Does It Measure Up?

This article comes courtesy of our friends at DLA Piper.

Her Majesty’s Treasury recently released a “Patent Box” proposal that would provide substantial tax incentives for UK companies that derive profits from patents.

While the proposal would make the UK a more desirable location for IP-producing companies, the tax regimes in several neighboring European nations continue to provide better alternatives from a tax minimization perspective. How does the UK proposal measure up to the tax regimes in the Netherlands, Luxembourg, Belgium and Ireland?

The bottom line: comparing effective tax rates

Starting in April 2013, the UK Patent Box proposal would tax profits derived from qualifying patents at an effective rate of 10 percent. This rate is substantially lower than the general corporate tax rate in the UK (scheduled to be 24 percent in April 2013). However, it is still substantially higher than the effective tax rates available in several neighboring European nations. (more…)