Posts by: Troels Peter Rørdam | (35) posts

South America: New PPH agreements launched

The ever expanding Patent Prosecution Highway (PPH) network keeps getting new additions, and as usual, the Awapatent IP Blog sums up the new expansions and arising possibilities.

The PPH is a system of bilateral agreements allowing the request of accelerated examination at a participating office. The system is based on the search results and a set of claims accepted for grant, in an analogous application, at the other participating office.

Most recently, new possibilities of speeding up and simplifying the examination of patent applications have emerged on the South American continent. Namely, the IP offices of the PROSUR countries have signed mutual PPH agreements. The participating PROSUR countries are Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru and Uruguay. The IP office in the last PROSUR country, Suriname, does not participate.

A request for prosecution under the PPH in a PROSUR country may be based on a national work product from the IP office in any other PROSUR country or a PCT work product from one of the IP offices in Brazil and Chile, both acting as PCT authorities.

For Brazil and Ecuador, however, the final entry into force awaits the approval of the respective relevant ministries.

Finally, it is worth mentioning that the Argentinian, Paraguayan and Uruguayan IP offices are the first IP offices in countries not being contracting states of the PCT system to enter in the PPH network.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

European Patent Office: New PPH agreements on the way

The ever expanding Patent Prosecution Highway (PPH) network keeps getting new additions, and as usual, the AWAPATENT IP Blog sums up the new expansions and arising possibilities.

The PPH is a system of bilateral agreements allowing for requesting accelerated examination at one participating office. The system is based on the search results and a set of claims accepted for grant, in an analogous application, at the other participating office.

Most recently, European patent applicants have been offered the possibility of speeding up and simplifying the examination. Namely, effective as of 1 October 2016, the EPO (European Patent Office) and the Superintendence of Industry and Commerce of Colombia have launched a new PPH agreement. The agreement applies to both national and PCT work products. The EPO’s notification of entry into force can be found here.

Furthermore, the EPO has just announced the signing of three new PPH agreements with the IP offices in Russia, Malaysia and the Philippines. These three PPH agreements will, according to the EPO, enter into force during 2017. The announcement may be found here. The AWAPATENT IP Blog will inform its readers of the actual dates of the entry into force.

Finally, it is worth mentioning that the Chilean and Moroccan IP offices also have joined the PPH network. The Chilean IP office has together with the Mexican, Colombian and Peruvian IP offices signed mutual PPH agreements. The Moroccan IP office has signed a PPH agreement with the Spanish patent office. This makes the grand total of IP offices, participating in the PPH network, 41.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

EPO and IP AUSTRALIA launches new PPH agreement

As the PPH network continues to expand, the Awapatent IP Blog lets its readers stay one step ahead by keeping monitoring the new expansions and arising possibilities.

Most recently, European patent applicants are offered a new possibility of speeding up and simplifying examination of their patent applications. This possibility comes in addition to the eight existing agreements that the EPO has with the patent offices of Canada, China, Korea, Israel, Japan, Mexico, Singapore and USA.

Effective 1 July 2016, the EPO and the Australian IP office, IP AUSTRALIA, has launched a new PPH agreement. The agreement applies to both national and to PCT work products. The press release of the EPO may be found here.

To recall, for a given PPH-agreement the PPH allows for requesting accelerated examination at the one office participating in this agreement based on the search results and a set of claims accepted for grant in an analogous application at the other participating office.

Finally, it is worth mentioning that also the Peruvian and Vietnamese IP offices have entered the PPH-network. Namely, the Peruvian IP office has signed an agreement with the Spanish patent office, OEPM, and the Vietnamese IP office has signed an agreement the Japanese patent office, JPO, respectively. Thereby the total number of IP offices participating in the PPH network is 39.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

The inventor’s right to waive being mentioned – or Bene qui latuit bene vixit

Roman poet Ovid stated the above latin quote in his work Tristia about 1000 years ago, and French philosopher René Descartes adopted it as his motto: He who has kept himself well hidden has lived well.

But what if you have conceived an invention and you or your employer planning to patent it – is it then at all possible to do so, that is not to be mentioned as the person behind the invention?

The answer is yes! There is an in practice rarely used possibility, which is available in surprisingly many jurisdictions. Namely the inventor’s right to waive being mentioned.

By now you are probably beginning to wonder why you would desire not to be mentioned in connection with your undoubtedly brilliant invention. For that, there may be several good reasons.

It may for instance be that you do not want to be connected with the invention due to it belonging to a technical field being controversial in one way or another. Take, for instance, Alfred Nobel who invented dynamite and patented it. As we know he eventually instituted the Nobel Prize as he later came to regret having made an invention taking so many lives and no longer wanted the money he made off of it. This blogger is pretty sure that Alfred Nobel would have wished that he had known of the possibility of waiving his right to be mentioned as the inventor.

A modern take on the controversial type of invention may be those related to computer software. If possible, patenting your computer software-related invention makes very good business sense. But as many within the software business have strong feelings and opinions about patenting, staying anonymous might just be preferable.

It may also be that there is contractual or other purely business related circumstances making it preferable for the inventor to remain anonymous. This may be particularly relevant for inventions connected with national security interests. Of course, in such a case the patent application itself will most likely be secret, but even so the secrecy will at some point be lifted and even at that time it may be preferable for the inventor to remain anonymous.

Or it may simply be that you feel the same as Australian singer/songwriter Sia, who is not only famous for her music, but also for not wanting to be famous and for trying to stay as anonymous as possible.

Now, how to waive the inventor’s right to be mentioned? And where is it at all possible?

To take the last question first, you will be well covered by applying for regional patents where available as the treaties/conventions governing European, Eurasian, ARIPO and Golf Cooperation Council patents all make it possible, while the national law of many of the member states does not. Further countries include Brazil, Mexico, Russia and Ukraine.

On the other hand, important countries such as the USA, China, Canada, India, Japan and South Korea seem not to have this possibility enshrined in their patent law.

And generally, waiving the inventor’s right to be mentioned is pretty straight forward. With a provisio for national peculiarities, generally all it takes is to file to the relevant patent authority a declaration signed by the inventor stating that he or she wishes to waive his or her right to be mentioned.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

Brazil drives onto the Patent Prosecution Highway

With the beginning of the year 2016, the Patent Prosecution Highway (PPH) family will welcome aboard an important new addition, namely the Brazilian Patent Office, INPI. With this addition the clear majority of the patent offices of the World’s biggest economies will have at least one PPH agreement. Thus the PPH becomes an even more useful tool for applicants wishing to speed up prosecution of their patent applications and lowering the associated costs.

According to the INPI website, they have announced together with The United States Patent and Trademark Office (USPTO) the agreement to launch a Patent Prosecution Highway (PPH) pilot program intended to take effect on 11 January 2016.

For starters this PPH program will, however, be somewhat limited on the Brazilian side. Most importantly, the program will at the INPI apply to patent applications in the oil, gas and petrochemical sector only, and to applications filed with the INPI within the last three years only.

The USPTO, on the other hand, will under the agreement process patent applications in any field and filed at any date.

Furthermore, the duration of the program will be two years or until each office has processed up to 150 patent applications.

Finally, it is well worth noting that if the application one wishes to prosecute under the PPH program between the INPI and the USPTO claims a priority, it must be a Brazilian or US priority.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

Andorran patent law enters into force

In the heart of the Pyrenees Mountains, on the border between France and Spain, lies a small independent country. This country, of course, is The Principality of Andorra. The co-princes exercising sovereignty over Andorra are the President of the French Republic and the (Spanish) Bishop of Urgel. Andorra is not part of the European Union.

Neither patents with effect in France, nor in Spain, have effect for Andorra. Even if an Andorran Patents Act has existed since 1999 and an updated form was published on 26 November 2014, the Andorran Government, who has been empowered to issue the Implementing Regulations to this Patent Act and the Regulation Establishing an Andorran Patent Office, has hitherto not approved or even drafted any of these regulations.

Therefore, Andorra is one of only two European countries known to this blogger (the other one being the Vatican City) in which it is actually not possible to file a patent application. That is until now, because in 2016 the Andorran Patents Act of November 2014 will enter into force.

Although the corresponding chapters of the Andorran Patents Act will not yet enter into force, it is even prepared for both an agreement with the European Patent Organization (EPO) for the purpose of validating European patents in Andorra as well as for ratification by Andorra of the Patent Cooperation Treaty (PCT).

The reason that the Andorran Patents Act now enters into force is that things gained speed during the end of 2015. On 15 July 2015 the Government approved the Implementing Regulations, which were published in the Official Gazette of the Principality of Andorra on 22 July 2015.

However, a six month suspension of the practical application of the Implementing Regulation was decided. This to give time to provide the newly established Andorran Patent Office with technical and human resources needed to prosecute patent applications and to create a body of patent agents pursuant to the Implementing Regulations.

As this six month period is now nearing its end, this blogger wonders who will be lucky enough to apply for Andorran patent number 1.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

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Italy joins the unitary patent!

On 30 September 2015, Italy joined the unitary patent. Italy will thus form part of both the unitary patent and the Unified Patent Court (UPC) upon entry into force. So reports the Commission of the EU here.

Italy is the country in which the fourth largest number of European patents is validated. The Italian decision is therefore very good news for patent applicants with an interest in the Italian market, as the present requirement of a complete translation into Italian in order to validate a granted European patent in Italy will thus become obsolete upon entry into force of the unitary patent.

Hence, the unitary patent with its single procedure for the registration of patents in all participating countries has with Italy joining become even more attractive for small and large applicants alike.

The unitary patent and the UPC will enter into force simultaneously when at least 13 out of the 26 member states with Germany, France and the UK being mandatory have ratified the agreement. At the time of writing this a total of 8 of the member states have ratified the UPC, namely Denmark, Sweden, France, Austria, Belgium, Portugal, Malta and Luxembourg.

It is at present expected that the unitary patent and the UPC will enter into force by the end of 2016 or at latest in the beginning of 2017.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

European patents can now be validated in Moldova

On 1 November 2015 an agreement between the European Patent Office (EPO) and the State Agency on Intellectual Property of the Republic of Moldova allowing European patents to take legal effect in Moldova will enter in to force.

Thereby, applicants with a European patent application will after this date be able to validate their granted patent in Moldova – and thus obtain patent protection in Moldova in a significantly cheaper way than hitherto.

Until, and by all likelihood also after, 1 November 2015 patent protection in Moldova may be obtained by filing national patent applications and/or PCT national phase applications.

In any event, for applicants interested in obtaining protection in Moldova the new validation procedure should prove significantly cheaper and more streamlined than applying for a direct national patent in Moldova.

The detailed requirements as to documents and translations required are not yet published, but the Awapatent IP Blog will monitor the development with interest to keep our readers updated.

With the addition of Moldova, it is now possible to obtain patent protection based on a European patent in 42 different countries, which in addition to the 38 member states also include the two extension states of Bosina & Hercegovina and Montenegro as well as Morocco by means of the validation agreement between EPO and the Moroccan IPO.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

(Read the EPO press release)

The Global Patent Prosecution Highway expands in the heat of summer

As summer, at least here in Denmark, finally heats up, so does the PPH thus giving both Danish and Swedish patent applicants new possibilities of speeding up and simplifying examination of their patent applications. In the following the AWA IP Blog sums up these new possibilities.

To recall, for a given PPH-agreement the PPH allows for requesting accelerated examination at the one office participating in this agreement based on the search results and a set of claims accepted for grant in an analogous application at the other participating office. For the Global PPH this principle applies for any combination of two participating offices.

Effective 6 July 2015, the German and Estonian IP offices join the Global PPH network, thus bringing the number of participants in the Global PPH up to 21. The Global PPH network already counts inter alia the IP offices of Sweden and Denmark as well as the Nordic Patent Institute as members. Hence, the IP offices of Sweden and Denmark as well as the Nordic Patent Institute now all have PPH agreements with the German and Estonian IP offices. Also, the Estonian IP office is new in the PPH altogether.

Furthermore, it is worth mentioning that also the Egyptian and Romanian IP offices have entered the PPH-network, by signing an agreement with the Japanese patent office, JPO, and the US patent and trademark office, USPTO, respectively.

Thereby, Egypt has become the first African country to join the PPH family, while the total number of countries in the PPH family has reached 37.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

First non-European country begins validating European patents

As earlier announced on the Awapatent IP Blog here, Tunisia and Morocco has signed an agreement with the EPO on the validation of European patents in the respective countries.

Effective 1 March 2015 the agreement with Morocco entered in to force, thus enabling applicants with a European patent application filed on or after this date to validate their granted patent in Morocco – and thereby to obtain patent protection in Morocco in a significantly cheaper way than hitherto.

Thereby Morocco has become the first ever non-European country to begin validation European patents.

Morocco is automatically designated for all European patent applications filed on or after 1 March 2015.

Validation in Morocco costs a flat rate fee of EUR 240. The fee is payable at the same time as the ordinary designation fees, namely 6 months calculated from publication of the European application.

Late payment within 2 months is possible subject to a surcharge of 50 % of the above-mentioned fee.

Upon grant of the European patent, a translation will have to be filed. At the time of writing this the translation requirements are not completely clear. Indications, however, are that only a translation of the granted claims into Arabic or French must be submitted to the Moroccan IPO. An exception may be for European patents granted in German, in which case a translation of the description into Arabic, French or English will also have to be filed.

In any case the time limit for filing the validation will, as in all other cases, be three months from the publication of the decision to grant.

In other words it seems that it will in most cases not be necessary to file a full translation of the application, which is otherwise required for a direct national application in Morocco. Moreover, as a French translation of the claims will already be on file due to the EPO requirements relating to the grant of the European patent, validation in Morocco will in most cases incur no additional translation costs.

As such, for applicants interested in obtaining protection in Morocco this new procedure should prove significantly cheaper and more streamlined than applying for a direct national patent in Morocco.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent