REFLEXIONS

A group of members attending the Geneva Congress:
From left to right: Robert Mitchell, Donald MacOdrum, Rose-Marie Perry, Joan Clark and Bruce Morgan

In this photo, Vincenzo Pedrazzini, Secretary General of AIPPI, is in the process of awarding the medal of a Member of Honour to Robert Mitchell

In our newsletter No. 4 of March 2003, we announced that "EU appears to have agreed on a new patent law" leading to one Community patent covering all of the European Union. Apparently that was premature.

European Union Cancels Plan for a Single European Patent

Newswires report that the European Union has canceled plans for a unitary European patent, for two reasons involving .... money:

The first reason was language translation, important with the 20 official languages of the EU. There was a compromise that the patents would be submitted in three languages: English, French and German, but that patent claims be submitted in all 20 languages. Spain insisted that all of the translations be legally binding (an economically nonsensical requirement if you know anything about the complexities of natural language translation), which Germany objected to.

The second reason was that Germany didn't want to let the others in on its patent prosecution and litigation law business. About half of all European patents are registered in Germany, and Germany handles about
70 percent of all patent litigation. A unitary European patent would cut into this business.

Source: Internet Patent News Service - Sent: 19 May, 2004

EPO starts Harvard oncomouse hearing - James Nurton, London - 04 July 2004
(MIP Week)

Munich, as a coalition of religious and animal rights groups sought to have the patent invalidated.

The hearing, before the Second Board of Appeal, prompted demonstrations outside the European Patent Office (EPO). One
observer reported seeing campaigners waving banners saying "Kill the mouse patent" and holding up giant rodents.

Harvard applied for a European patent for the so-called oncomouse in 1985 and it was granted in May 1992 (number EP 0 169 672). The mouse is genetically engineered to develop tumours and is useful in cancer research. It is the first patent the EPO has granted for a transgenic mammal.

The patent was upheld following an opposition launched by 17 parties in November 2001, with only a few minor changes made to the specification. Six of those 17 opponents lodged an appeal against that decision. They claim that the patent contravenes public order and morality and also that it does not meet the novelty and inventive step requirements.

Wolfgang Bublak, a partner and biotech specialist at Bardehle Pagenberg Dost Altenburg & Geissler in Munich, expects the patent to be upheld in most respects. He told MIP Week: "The EPC article on public order and morality is one of the only possible reasons to invalidate the patent. But I am pretty confident the patent will survive."

Campaigners against the patent argue that it is immoral to patent genetic tests on animals, and that patents provide too broad a monopoly. However, the Second Board is likely to restrict its considerations to the facts of the case. The oral proceedings are expected to last until the end of this week. The Board of Appeal may deliver its decision immediately or it may consider further evidence in writing. A fully-reasoned judgment will be published later this year.

Harvard obtained a US patent for the oncomouse in 1988, but elsewhere it has proved controversial. In Canada, the Supreme Court voted 5-4 against allowing the patent in 2002. Bublak said the outcome of the EPO appeal is likely to have an impact on other cases involving transgenic animals: "There are a few cases pending before the EPO - though not a great number. There are a few applicants trying to claim these kinds of animals and it will have an influence."

Opponents of gene patenting have also turned their attention to legislative bodies in recent years, and there is pressure on the German Parliament to enact a law that would forbid the patenting of animals.

House Votes to Fund USPTO 21st Century Strategic Plan

The United States House of Representatives passed the "U.S. Patent and Trademark Fee Modernization Act" (H.R. 1561), described as a landmark bipartisan bill supporting a quality driven, highly productive, cost-effective organization. The bill would give the Department of Commerce's U.S. Patent and Trademark Office (USPTO) the resources to implement its five-year strategic plan emphasizing excellence in examiner recruiting, hiring and training; and greater use of electronic initiatives.

SUMMARY AS OF:
3/3/2004--Passed House, amended.

United States Patent and Trademark Fee Modernization Act of 2004 - (Sec. 2) Amends Federal patent law to reduce the filing fee for an application for: (1) an original patent from $690 to $300; (2) an original design patent from $310 to $200; (3) a plant patent from $480 to $200; and (4) reissue of a patent from $690 to $300. Changes from $670, $690, $970, and $96 (in different specified circumstances) to $300 the basic national fee for each international application filed under the Patent Cooperation Treaty done at Washington, on June 19, 1970, entering the national stage.

Increases from $150 to $200 the patent filing fee for a provisional application for an original patent.

Sets additional fees for any application whose specification and drawings exceed 100 sheets of paper (or equivalent, if filed in an electronic medium), excluding any sequence listing or computer program listing filed in an electronic medium, at $250 for each additional 50 sheets of paper (or equivalent, if filed in an electronic medium) or fraction thereof.

Increases excess claims fees for: (1) each claim in independent form in excess of three from $78 to $200; and (2) each claim (whether dependent or independent) in excess of 20 from $18 to $50. Repeals the $260 excess claim fee for each national stage of an international application containing a multiple dependent claim. Sets a new $360 excess claim fee for each application containing a multiple dependent claim (regardless of whether it is a national or international application).

Prescribes examination application fees for: (1) an original patent at $200; (2) an original design patent at $130; (3) an original plant patent at $160; (4) the national stage of each international application at $200; and (5) reissue of a patent at $600.

Increases fees: (1) for issuing each original patent from $1,210 to $1,400, original design patent from $430 to $800, original plant patent from $580 to $1,100, and each reissue patent from $1,210 to $1,400; (2) for filing each disclaimer from $110 to $130, for filing an appeal from the examiner to the Board of Patent Appeals and Interferences from $300 to $500, for filing a brief in support of the appeal from $300 to $500, and for requesting an oral hearing in the appeal before the Board from $260 to $1,000; (4) for filing a certain revival petition of patent application from $1,210 to $1,500, or, in specified circumstances, from $110 to $500; (5) for filing petitions for one-month extensions for the first petition from $110 to $120, for the second petition from $270 to $330, and for the third or subsequent petition from $490 to $570; and (6) for maintaining in force certain patents three years and six months after grant from $830 to $900, seven years and six months after grant from $1,900 to $2,300, and for eleven years and six months after grant from $2,910 to $3,800.

Requires the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (Director) to: (1) charge a fee for the search of each patent application, except for provisional applications; and (2) establish the fees charged to recover an amount not to exceed the estimated average cost to the Patent and Trademark Office (PTO) of searching patent applications either by acquiring a search report from a qualified search authority or by causing a search by PTO personnel to be made for each patent. Provides patent search fee limits for the three-year period beginning on October 1, 2004. Prohibits the Director from: (1) increasing any such fee by more than 20 percent in each of the next three one-year periods; or (2) increasing any such fee thereafter.

Deems PTO's cost of causing such application search to be: (1) $500 for each original patent; (2) $100 for each original design patent; (3) $300 for each original plant patent; (4) $500 for the national stage of each international application; and (5) $500 for each reissue of a patent.

Disqualifies commercial entities from being qualified search authorities unless: (1) the Director conducts a pilot program of limited scope within a 18-month period, which demonstrates that searches by commercial entities of the available prior art relating to the subject matter of inventions claimed in patent applications are accurate and meet or exceed the PTO standards used during the patent examination process; (2) the Director reports to Congress and the Patent Public Advisory Committee on the results of the pilot program; (3) the Committee reviews and analyzes the Director's report and the results of the pilot program and submits a separate report on its analysis to the Director and Congress; and (4) Congress does not, during the one-year period beginning on the submittal of such report, enact a law prohibiting searches by such commercial entities. Requires any search by a qualified search entity that is a commercial entity to be conducted in the United States by persons that: (1) if individuals, are U.S. citizens; and (2) if businesses, are organized under the laws of the United States or any State and employ U.S. citizens to perform the search. Requires searches of applications that are the subject of a secrecy order or otherwise involves classified information to be conducted only by PTO personnel. Prohibits a qualified commercial search authority from conducting a search if the entity has any financial interest in any patent or patent application filed or to be filed with the PTO.

Requires fees charged to small businesses to be reduced by 75 percent if the application is filed by electronic means as prescribed by the Director. Requires the Director to study the effect of patent fees on the ability of small business inventors to file patent applications.

(Sec. 3) Amends the Trademark Act of 1946 to prescribe a fee of $325 for filing an electronic application for the registration of a trademark. Increases the fee to $375 for a paper application. Authorizes the Director to reduce the fee to $275 for any applicant who prosecutes the application through electronic means under such conditions as the Director prescribes. Authorizes the Director, beginning in FY 2005 and under certain conditions, to adjust such fees annually.

(Sec. 4) Amends the Intellectual Property and High Technology Technical Amendments Act of 2002 as enacted by the 21st Century Department of Justice Appropriations Authorization Act to replace the name of the "Deputy Commissioner" with the "Deputy Director" with respect to the officers on the Board of Patent Appeals and Interferences and the Trademark Trial and Appeal Board.

(Sec. 5) Establishes in the Treasury a Patent and Trademark Fee Reserve Fund for the deposit of excess PTO fees (fees collected in excess of the appropriated amount). Requires the Director, after determining the amount of such excess, to make repayments to persons who paid patent or trademark fees during that fiscal year.

(Sec. 6) Applies the fees set by this Act, with specified exceptions, to all patents, whenever granted, and to all patent applications pending on or filed after the effective date of this Act.

Terminates any existing PTO appropriations in effect on October 1, 2004, or the enactment of this Act, whichever is later.

It would appear that the above fees will be implemented as of October 1, 2004

National Academies' call for first-to-file - Sam Mamudi, New York - 19 April 2004

A long-awaited report published this week by the National Academies' National Research Council has called for the US to conform to international standards by adopting the first-to-file principle for patent applications.

The US is alone among the large patent jurisdictions in adhering to the first-to-invent principle, and has held out against calls to switch to first-to-file for mainly political reasons.

But the report stresses the importance of a policy change to deliver greater international patent harmonization.

"Greater compatibility among the US patent system and those of the EU and Japan could more easily facilitate trade and investment, and therefore innovation," said the Council in a statement. "This objective should be pursued by all relevant governments."

Released on April 19, the 152-page report, entitled A Patent System for the 21st Century, is the culmination of more than two years' work by the Committee on Intellectual Property Rights in the Knowledge-Based Economy. The Committee's 16 members were drawn from academia, industry and the legal profession.

Among its other recommendations, the report also calls for a Congressional-led creation of an open review procedure for third parties at the US Patent and Trademark Office. Such a procedure, argues the report, will resolve patent validity questions without recourse to costly and time-consuming court cases, leaving the courts to focus on patent infringement issues.

The report also urges the Office to "strenuously observe" the non-obviousness standard for assessing patentability, a move that would raise the quality of patents, and potentially lead to fewer validity challenges; adopt more examination guidelines for new technologies; and content reviews of the Office's, and its examiners', performances.

To process these many changes, the report recommends additional Congressional funding for the Office, and also calls on Congress to mandate a research exemption for certain types of scientific research.

The report is the second such overview of the US patent system to be issued in the past six months. On October 28 2003, the Federal Trade Commission issued its report, To promote innovation: the proper balance of competition and patent law and policy. Many of that report's recommendations were aimed at improving patent quality - some of which were similar to those put forward by the National Research Council, such as a further review of patents post-grant - and stressing that competition concerns be considered when extending patent protection to new technologies.

Editor's Note: This issue of changing the first-to-file system in the United States has been discussed for a very long time within AIPPI and in other international fora, such as the Patent Harmonization Law. Somehow it has never come to anything because of a strong lobby mostly by independent American inventors. Some even claim that the American Constitution would prohibit such an amendment to the U.S. Patent Act.

Intellectual property owners who wish to transfer their ownership of a patent or trademark to another entity, which is called an assignment, may do so using the USPTO’s Electronic Patent Assignment System (EPAS) or the Electronic Trademark Assignment System (ETAS). The new USPTO systems allow the agency’s customers to create and submit a patent or trademark assignment recordation coversheet by completing on-line web forms and attaching the supporting legal documentation as TIFF images.

The new systems reflect the agency’s commitment to the e-government initiatives outlined in the 21st Century Strategic Plan.

The two previous FORPIQ meetings were held in Quebec city and were very well attended. This is an early reminder that the next such meeting (FORPIQ 2005) will be held February 3-4 at Hotel Fairmount Tremblant, at Mont Tremblant and will deal with the topic Intellectual Property and Export Markets: Lessons from Here and Abroad. Those who wish to attend should put this date on their agenda. Additional information and registration forms will be supplied in a future Reflexions newsletter.

Les deux réunions précédentes de FORPIQ ont eu lieu à la ville de Québec avec une excellente assistance. La prochaine réunion (FORPIQ 2005) aura lieu les 3 et 4 février 2005, à l'Hotel Fairmount Tremblant, à Mont Tremblant et traitera du sujet suivant: La propriété intellectuelle et les marchés extérieurs : leçons d'ici et d'ailleurs. Ceux qui désirent y assister, veullez réserver cette date. Nous vous donnerons des informations additionnelles dans un prochain numéro de Réflexions.

Word From the Editor - Mot de l'éditeur

I would like to take this opportunity to personally congratulate my good friends Jacques Léger and Robert Mitchell for the achievements that they just got within AIPPI. Jacques' election to the position of Treasurer General is truly a historical event for the Canadian Group. Knowing Jacques, I am sure that he will provide a new level of excellence in this position. As for Bob, he certainly fully deserves the title of Member of Honour of AIPPI. His accomplishments within our organization are legion, and Joan Clark and I welcome him with open arms to our little club of Canadian Members of Honour. Good show Bob!

Je voudrais personnellement féliciter mes bons amis Jacques Léger et Robert Mitchell pour les accomplissements qu'ils viennent d'obtenir au sein de l'AIPPI. L'élection de Jacques au poste de Trésorier général de l'AIPPI est vraiment un événement historique pour le Groupe canadien. Connaissant Jacques, je suis sûr qu'il établira un nouveau barème d'excellence dans cette position. Quant à Robert, il mérite entièrement le titre de Membre d'honneur de l'AIPPI. Ses contributions à notre association sont légion, et Joan Clark et moi-même, nous lui souhaitons la bienvenue à bras ouverts à notre petit club de membres d'honneur canadiens.