Archive | 2009, December | (3) posts

What is the Patent Prosecution Highway?

The Patent Prosecution Highway (PPH) is a concept originally proposed by the Japanese Patent Office (JPO). PPH has the purpose of increasing the speed and improving the quality of the prosecution of patent applications. This is achieved in that the patent offices of two countries make an agreement to use each other’s search and examination result when prosecuting analogous applications.

A PPH is thus a bilateral agreement between the patent offices of two countries on using each other’s search and examination results in treating analogous patent applications. The three leading national patent offices as regards making PPH agreements are the Japanese Patent Office, the Korean Intellectual Property Office and the United States Patent and Trademark Office, mutually having made PPH agreements on a permanent basis.

Seen from a local point of view, the possibilities of the PPH are mostly relevant for applicants having an interest in Denmark, as the Danish Patent and Trademark Office (DKPTO) has made PPH agreements on a pilot project basis with each of the above mentioned three leading national patent offices.

Amongst other countries having made PPH agreements are e.g. Finland, Germany, United Kingdom and Russia.

Applicants who wish to obtain a patent for a given invention in two countries that have established a mutual PPH may thus take advantage of this PPH. A PPH may generally be used when the patent office of the country in which the applicant first filed his patent application has found that the claims of the patent application patentable.

Thereby the applicant may achieve a faster prosecution, and ultimately hopefully a patent, at the patent office of the second country. Simultaneously, the amount of correspondence with the second country’s patent office should expectedly decrease, which should in turn expectedly mean that the applicant could save resources by using a PPH.

It is generally possible to use PPH on national patent applications, and for most of the existing PPH’s, including those of the DKPTO, on international (PCT) patent applications having been continued nationally.

Troels Peter Rørdam, Associate 

China – a few comments on the Draft for Third Amendment to Trademark Law

A while ago the Chinese authorities released the “Opinion Solicitation Draft for Third Amendment to Trademark Law” (“the Draft”). The Draft proposes, among other things, the following changes which, should they be accepted, will make the Chinese Trademark law more efficient when it comes to handling trademark applications as well as opposition and infringement cases. The intention with the Draft propositions also seems to be to adopt an “international” view on trademarks that is more in line with trademark systems in many other countries.

The above mentioned standpoint is confirmed by that the Draft proposes to allow not only visual marks but also trademarks consisting of e.g. smell, movements or sound. This of course opens up huge possibilities and new ways of protecting trademarks.

Unlike the present Trademark Law, which only allows designation of goods in one class per application, the Draft allows goods in multiple classes to be designated in one application. This will certainly simplify the application process and hence most probably also reduce the overall time to have the desired trademark protection in place.

The Draft only allows the owner or an interested party of a prior trademark to file an opposition against a trademark application. This is different from the present Trademark Law which allows anyone to file an opposition against a trademark application.

Moreover the Draft also states that intentionally registering a trademark identical or similar to a third party’s trademark for goods in the same or a similar class is not consistent with the principle of good faith and thus not allowed. Registration of a trademark which copies a trademark of a third party bearing significant distinctiveness and influence which could easily mislead the public is not allowed, even if the goods is different. This will affirm the position of well known trademarks in Chinese Trademark law.

Statutory damages for repeated infringement are, according to the Draft, increased to a maximum of RMB 1 million (appr. USD 146 000). Furthermore the administrative authorities for industry and commerce will have the power to confiscate infringing goods. Moreover the Draft will also apply for infringement over the internet.

Furthermore the Draft eliminates one instance in the present review procedure for opposition of trademarks by allowing the opposing party to file an opposition directly with the Trademark Review and Adjudication Board. Hence the review of trademark oppositions is reduced from four instances, including administrative and judicial procedures, into three instances. Again this is something that will speed up the process which is beneficial certainly for the applicant but many times also for the opponent.

An overall conclusion is that if the above mentioned parts of the Draft is passed as law by the Chinese legislator it will strengthen the positions of the trademark owners in China significantly and also make the trademark system more efficient.

Peter Hermansson, Attorney at Law

Trade Mark User Requirements Tightened Following US Supreme Court Ruling

Following a key US Supreme Court ruling earlier this year we announced that the practice in regard to the fulfilment of the user requirements for trade marks has been tightened in the USA. Consequently, an entire trade mark registration can be cancelled if the owner can only prove use of trade mark for a part of the list of goods. This will now be considered to constitute fraud.

The US Patent and Trademark Office (USPTO), which handles the actual registration, interpreted the ruling very strictly and thus it was considered fraud if the trade mark owner ought to have known that the trade mark had not been put to use for the entire list of goods.

Subsequent to the Supreme Court ruling, however, the US Federal Circuit Court has ruled that the party seeking the cancellation of another party’s trade mark registration, i.e. a third party, has the burden of proof and must prove that the registrant is guilty of fraud. This means that in future it should not be so easy to successfully seek the cancellation of a trade mark registration owned by another party . The ruling ought to result in the USPTO changing its practice on fraud, but we do not know if such a change of practice will take place.

Unfortunately, the ruling of the Federal Circuit Court gives no indication as to how many goods must be deleted from the trade mark registration when fraud has been established. The USPTO has interpreted the practice to mean that the entire class of goods must be deleted if the trade mark is not used at all or is only used for some of the goods for which it was registered, but this does not necessarily mean that the entire registration must be cancelled. Whether this practice will be confirmed in a court of law remains unknown at the present time.

As long as doubts exist about the practice for proof of use of trade marks in the USA, we recommend that trade mark owners make sure that the list of goods accurately reflects the goods for which the trade mark is actually used. This is particularly important where a company’s most important trade marks are concerned.

Anette Rasmussen, Attorney at Law