Patent Law Practice Center

US and Brazil enter into Patent Prosecution Highway agreement

The United States Patent and Trademark Office (USPTO) and Brazil’s National Institute for Industrial Property (INPI) have agreed to establish a Patent Prosecution Highway (PPH) pilot program. The United States Patent Office likes PPH applications because they take significantly less time to prosecute, on average, than non-PPH applications. This is as a result of being able to re-use information, such as previous search and examination results, between and among the USPTO and partner patent offices.

PPH agreements are cooperative initiatives that streamline the patent examination process by promoting expeditious, less costly, and more effective patent protection. The USPTO and INPI plan to launch the two-year pilot program on January 11, 2016.

“This agreement strengthens the economic relationship between the United States and Brazil and further highlights the commitment both countries have made to provide a high quality and efficient intellectual property system that will make it easier for innovators of all sizes to do business in a global economy,” said Michelle Lee, Under Secretary of Commerce for Intellectual Property and Director of the USPTO.

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David Kappos Shares USPTO’s Game Plan for 2012

As Director of the USPTO and Under Secretary of Commerce for Intellectual Property, David Kappos is a busy, busy individual. Just look at the year the USPTO had in 2011: they issued more utility patents last year than they ever have in any year prior, they reduced the backlog of unexamined patent applications to below 665,000, and expanded the Peer-to-Patent (P2P) pilot program to strengthen the patent examination process. And don’t forget about the enactment of the America Invents Act!

Considering the success of 2011, it is of no surprise that Kappos is excited about the prospects of what’s to come for the USPTO in 2012. On Director’s Forum: David Kappos’ Public Blog, Kappos lays out what his game plan is for the agency in the new year. Below are the patent driven highlights: (more…)

Top 5 Patent Law Blog Posts of the Week

Today we are debuting a weekly installment highlighting the best of the patent blogosphere from the past week. Highlights include USPTO updates and announcements, as well as the expiration of the patent for the world’s best selling prescription drug – ever.

1. IP Watchdog: USPTO Announces More PPH Agreements, China and Iceland – Several announcements came out of the USPTO this week regarding launches for Patent Prosecution Highway (PPH) pilot programs with China’s State Intellectual Property Office, the Icelandic Patent Office, as well as the start of the Paris Route PPH program. This post details how the PPH programs facilitate work-sharing benefits worldwide.

2. Patents Post-Grant: USPTO to Implement New Ex Parte Appeal Rules for 2012 – At the beginning of the week, the USPTO released the final rule package regarding the Rules of Practice Before the Board of Patent Appeals & Interferences in Ex Parte Appeals. This post explains the application of the new rules and how they will impact ex parte proceedings and ex parte reexamination. *PLI will be hosting a One Hour Briefing on the USPTO’s new rules on Jan. 9, 2012. Stay tuned for more information. Also check out information regarding PLI’s  Post-Grant USPTO Proceedings 2012 – The New Patent Litigation Seminar on Feb. 3, 2012.

3. Reexamination Alert: Judge Randa Refuses to Lift Reexamination Stay Despite Patentee’s Success (So Far) with Examiner – This post from Westerman, Hattori, Daniels & Adrian, LLP shares an interesting twist to the use of the 35 U.S.C. Section 316(a) standard for “complete” reexamination. In Generac Power Systems v. Kohler, the twist came when an accused infringer invoked Section 316(a) to maintain a reexamination stay rather than the more common practice of the patentee using the section.

4. TIME: Lipitor Already Cheaper After Patent Expiration – Pfizer’s patent for their best selling prescription drug, Lipitor, expired this week. According to this article, Pfizer’s sales from Lipitor averaged at about $11 billion dollars per year, which ends up being roughly one-sixth of Pfizer’s total sales. Because of the patent’s expiration, Pfizer is now doing what it can in order to preserve whatever claim it has to Lipitor, including selling the drug at a steep discount (to counter-act the sale of the generic drug at an estimated 80% discount), as well as paying pharmacies to spread the news to its customers about the discount. How Pfizer reacts to losing the patent for the best selling prescription drug of all time will have an impact on how the rest of the pharmaceutical market handles patent expiration.

5. Patently-O: Holiday Gift List for Patent Attorneys and the Like – Although this blog post is from last week, I thought it would be good to share right before the weekend, considering the holiday season is upon us and all types of holiday parties (whether they be office or social) are popping up each week. Patent attorneys deserve cool presents too, and this list is full of great and very different gift ideas. Enjoy!

Current Developments in the Trilateral Patent Offices

James M. Heintz, a partner in the Intellectual Property and Technology practice group at DLA Piper, sent in this article discussing patent harmonization among the European Patent Office, the Japanese Patent Office and the United States Patent and Trademark Office.

In an informative discussion in Washington, DC , the heads of the three trilateral patent offices provided insight into the direction they are heading and summarized recent developments in the three offices.

The Honorable Benoit Battistelli, president of the European Patent Office, the Honorable Yoshiyuki Iwai, commissioner of the Japanese Patent Office, and the Honorable David J. Kappos, director of the United States Patent and Trademark Office, met in late 2010 in a session sponsored by the Intellectual Property Owners Association.

President Battistelli began his remarks by expressing his surprise that more applicants were not using the EPO’s fasttrack procedure (also referred to as the Patent Prosecution Highway). President Battistelli pointed out that fast-track requests comprised only 7 percent of EPO applications in the last year (16 percent of which were applications originating from the US), despite the fact that requesting fast-track treatment does not require any fees and the request is simple. He also noted the need to raise the bar for greater legal certainty that patents issued by the EPO would be enforceable. Finally, President Battistelli reiterated his support for European patents and centralized litigation. (more…)

Life in the Fast Lane – Use of the Patent Prosecution Highway

Michael Davitz, Partner at Axinn, Veltrop & Harkrider and  Practice Center Contributor, recently sent in this article he wrote with colleague’s Drew Schulte and Jia Li discussing the Patent Prosecution Highway and the value that can be achieved for those practitioners willing to explore the new program.

In July of 2006, the United States Patent and Trademark Office (USPTO) established a trial program with the Japanese Patent Office, where an applicant with an allowed claim in one office could fast track the examination of a corresponding application filed in the other patent office.  This program paved the way for what would become known as the Patent Prosecution Highway (PPH).[1] Today, the PPH includes patent offices in many of the world’s largest economies and is growing.[2] Despite the USPTO’s estimate of a 94% overall allowance rate for PPH applications as compared to 44% for non-PPH cases when the United States is the Office of Second Filing,[3] practitioners have continued to be wary of using the new program, especially when it comes to leveraging entire patent portfolios.[4]

In part, the hesitation to embrace the PPH reflects a legitimate fear of comparatively untested methods when it comes to patent prosecution. Although patent practitioners deal every day with cutting-edge technology, which innovates constantly, they are often reluctant to try new approaches as patent prosecution is fraught with dangerous liability.[5] However, for those practitioners willing to explore this new avenue, the PPH offers potentially great rewards in terms of easier and faster prosecutions which can provide value-added leverage for a client’s patent portfolios. (more…)