EPO consulting users about a “grace period” for patents

The European Patent Office (EPO) is consulting users about the novelty requirement under the European Patent Convention (EPC) and the lack of a so-called “grace period” in the European patent system, in what appears to be the start of the EPO considering whether to introduce a “grace period” into the EPC.

Scope of the EPO’s survey

The survey, which will explore the impact of the strict novelty requirement on the filing and business practices of EPO applicants, will be complemented by a consultation of user and stakeholder associations. The survey will focus on users’ experiences of the current novelty requirement under the EPC.

The survey participants have been selected from a random sample of EPO applicants selected from the latest published patent documents. Participants will be asked about their organisations’ patenting activities in Europe and how they currently deal with the EPC’s strict novelty requirement when filing patent applications at the EPO. The EPO will also present participants with a number of different grace period options and ask for their thoughts on each.

The EPO’s survey aims to understand:

– How different categories of EPO applicants manage the strict novelty requirement
– How this requirement impacts disclosure and patent commercialisation strategies
– What effect different grace period scenarios might have

What is a “grace period”?

One of the most important features of the EPC is the strict novelty requirement which means that an invention must not have been publicly disclosed prior to their earliest filing date. Under some patent systems, most notably the US, this strict novelty requirement is partly mitigated to allow inventors to make disclosures of their inventions during a “grace period” of, for example, six or twelve months prior to filing their patent application. During such a “grace period” an invention can be disclosed to the public without losing its novelty, so that the invention remains patentable.

The resulting feedback will be published by the EPO in the spring of 2022.

5 ways to improve how you manage your IP

Managing your intellectual property (IP) can seem like a daunting task at times. However, it can be easier than you think. We’ve put together 5 simple things you can do to make IP portfolio management easier and more efficient.

  1. Request client access to your attorneys’ case management system – this contains details of all of your applications and granted patents, trade marks etc, plus upcoming deadlines, all in one place (and it will be regularly updated)
  2. Ask your attorney to set up a regular (monthly/quarterly) meeting to discuss outstanding actions and upcoming deadlines – it’s a really efficient way to instruct your attorney.
  3. Form a patent board to review new invention disclosures and make decisions on whether to file patent applications – to be most effective you need to have the key decision makers on the patent board (usually CTO, CFO, IP manager/responsible) and meet regularly (monthly or quarterly, depending on how many inventions are being reported)
  4. Write a patent filing strategy detailing where (and whether) you will file patent applications for different areas of technology – next time you have a decision to make about where to file a patent application all you need to do is refer to your strategy. Ask your patent attorney to help you do this, looking back at what you have done before and what your business strategy is for the next 3-5 years
  5. Provide an Invention Disclosure Form for your engineers to complete to report details of new inventions to the patent board – your patent attorney can provide you with one that includes guidance on what they should include, so that the patent board has all the information it needs to make a decision and your attorney has all the information they need to draft a patent application.

If you’re looking for further advice on how to manage your IP portfolio or if you would like a template Invention Disclosure Form that you can use, email us hello@two-ip.com we will be happy to help.

Will Glasgow Climate Pact drive up green-tech innovation?

Will the Glasgow Climate Pact drive even higher levels of innovation (and patenting activity) as we look for solutions to the climate crisis?

In October more than 100 world leaders and an estimated 20,000 delegates flocked to Glasgow for COP26.  Their agenda was simple.  They were there to work out how best to tackle the escalating climate crisis.  One of the outcomes from COP26 was The Glasgow Climate Pact. 

A large part of The Glasgow Climate Pact is a firm commitment from all parties to come forward with enhanced Nationally Determined Contributions (NDCs) during 2022.  NDCs formed the heart of the Paris Agreement.  They were designed to set out how each signatory will achieve their long-term environmental goals, reduce national emissions and adapt positively to combat the impacts of climate change.   

The Glasgow  Climate Pact will expediate the current plans by ramping up activity to meet the Paris Agreement’s temperature goals by 2030.

The Pact has also implored governments to “accelerate the development, deployment and dissemination of technologies, and the adoption of policies, to transition towards low-emission energy system”. 

This is the first time such language has been included in COP decisions and has placed a much stronger emphasis on the part innovation will need to play in slowing the effects of the climate crisis. 

And where there is increased innovation, there is always the question as to how this will affect the patent landscape.

The UK IPO recently published a very detailed set of reports on patent activity within the various strands of the green/environmental/cleantech technologies and we’d like to summarise their conclusions to provide you with an overview of how it appears technology and innovation are attempting to help the UK realise its aim to become the first major economy to set reach net zero greenhouse gas emissions by 2050.

Patent activity in carbon capture  

There has been a significant increase in patent applications covering carbon capture and storage (CCS) technology in recent years.

From a global perspective this increased level of activity is led by major US corporates including  Exxon Mobil and patent owners are looking for protection in the US, China and Europe.

From a UK perspective it is interesting to note that at its peak the majority of CCS patent applications were being filed by companies based outside of the UK while the patents filed by UK-based companies peaked in 2010 before stabilising in 2014.

It appears from the available information that Carbon capture, utilisation and storage (CCUS), an important emissions reduction technology that can be applied across the energy system, is the area enjoying most growth.  This is likely to be because the UK government is significantly investing in the development of CCUS facilities in the UK and this could influence how patenting activity develops over the next few years.

Patent activity in greener vehicles

While ‘greener vehicles’ is a very broad church that covers automobiles, public transport, shipping and aviation, enormous attempts are being made to lower the environmental impact every type of vehicle is having on the environment.

This need is so significant that three of the points in the government’s ten point plan for a green industrial revolution mention transport, both generally and more specifically using examples like Jet Zero.  It is therefore no surprise that between 2001-2018 there has been a massive increase in relevant patenting activity.

The UK is performing strongly.  Overall active patent families belonging to UK owners have increased between 2001 and 2018 and when we look at specific challenges like Jet Zero, the data shows major UK manufacturers like Rolls-Royce are working hard to bring us closer to net zero-emission aviation.

We would expect patent activity around greener vehicles to continue to grow given the growing pressure being put on OEMs to find and market more environmentally friendly modes of transport.  And as aviation can make the most dramatic difference to emission levels it looks likely that activity in areas like Jet Zero will increase at the fastest rate.

Read the UK IP Office report “Greener Vehicles” for more details of patenting activity in this area.

Patent activity in wind and offshore wind power

Patenting activity related to wind power increased across the world between 2001 and 2018 but unfortunately the trend is not reflected in the UK.  During this period the most prolific patent filers were the State Grid Corporation (China), General Electric (US) and Vestas (Denmark).

However, the reason the UK has not been as active could be that UK innovators’ endeavours in this area are more specialised, a view supported by the supporting data being produced by the Relative Specialization Index (RSI), an international indicator that measures the research profile of a country by comparing its activity with its share of a given field.

The picture in the offshore wind power sector is similar. 

There has been in an increase in patenting worldwide – dominated this time by Vestas, Siemens Energy and General Electric – but in the UK there has been a lower number of patents filed although again the subject matter of these patents appears to be more specialised with more offshore related patents than more general wind power patents.

If we look at future developments, we feel the UK government’s plans to develop more floating offshore wind capabilities will shortly have a direct impact on the number of patents filed in this area.

Read the UK IP Office report “Offshore Wind Power” for more details of patenting activity in this area.

Patent activity in green buildings and heat pumps

At the moment a great deal more patents are being filed for inventions relating to greener building technologies than there are for heat pumps.  In fact, there are still very few patents being filed for heat pumps, particularly in the UK. 

If we look globally, the number of greener building patents has increased steadily between 2001 and 2018 which suggests this is an area of technology that is continuing to develop at pace.

However, with governments all over the world (particularly the UK where The Green Heat Network Fund, a £270 million scheme supporting the commercialisation of low carbon heat network projects has just been launched) looking to find cheaper and more environmentally friendly methods of heating homes, we think it’s fair to expect an increase in R&D relating to heat pump technology and an exponential increase in patenting activity as the technology develops. 

WIPO Global Innovation Index (GII) – 2021 Edition

The 14th edition of the Global Innovation Index (GII) has just been published by the World Intellectual Property Organization (WIPO). 

Since the first edition was released in 2007, the GII has become an invaluable tool with which to measure innovation.  As always, the 2021 edition ranks the innovation taking place in 132 global economies by using 81 indicators, but this edition also introduces a ‘Global Innovation Tracker’.  This examines innovation trends against the various stages of the innovation journey, namely: science and innovations investments; technological progress; and socioeconomic impact.

Understandably, the coverage in this year’s report contains an additional feature focussing on the one theme that has affected all our lives over the last 18 months, ‘Tracking Innovation through the COVID-19 Crisis’.

How has COVID-19 influenced innovation?

According to the 2021 GII governments and enterprises in many parts of the world scaled up their investment in innovation despite the massive human and economic cost of the pandemic.  The Index shows “a growing acknowledgement that new ideas are critical for overcoming the pandemic and for ensuring post-pandemic economic growth.”

Before adding that R&D expenditure appeared to be more resilient to the downturn caused by the pandemic than it had been to previous slumps, the narrative also admits “the impact of the crisis has been highly uneven across industries”. 

Businesses producing software, internet and communications technologies, the hardware and electrical equipment industry and pharmaceuticals and biotechnology increased their investment in innovation and R&D.  Conversely, those whose businesses rely on in-person activities – for example transport and travel –  reduced their investment.

WIPO Director General Daren Tang was quick to underline the impressive way innovation has continued to grow during the last 18 months and the vital role it will play during the recovery:

“This year’s Global Innovation Index shows us that in spite of the massive impact of the COVID-19 pandemic on lives and livelihoods, many sectors have shown remarkable resilience – especially those that have embraced digitalization, technology and innovation.  As the world looks to rebuild from the pandemic, we know that innovation is integral to overcoming the common challenges that we face and to constructing a better future.”

What other trends in innovation has the 2021 GII discovered?


WIPO shared some of their key findings in the press release that accompanied the launch of the GII. 

The volume of venture capital deals is growing.  Activity increased by 5.8% in 2020 which was higher than the average rate of growth over the last decade. 

The publication of scientific articles across the world also grew by 7.6% in 2020.  Arguably this could also have been a by-product of the pandemic given some academics had greater flexibility due to having to work from home.

Which countries does the GII rank as the world’s most innovative?

Looking more closely at the innovations in levels in individual countries the GII reported:

  • Seven European countries continue to rank in the global top 10 including Switzerland (No1) who have topped the ranking for the last eleven years and Sweden (No2) who together lead in “international patent applications filed via WIPO’s Patent Cooperation Treaty (PCT)”.
  • The U.S.A. has stayed in 3rd place for the third year in a row.  It also led the way in “key metrics such as patents by origin, the quality of its universities and the impact of its scientific publications and in R&D intensive global companies”.
  • The UK maintains it’s position at number 4 in the GII and leads Europe in the quality of its universities and the impact of its scientific publications.
  • The other European countries in the global top 10 are The Netherlands (6) , Finland (7), Denmark (9) and Germany (10).
  • India (46) continues to maintain its position as the world leaders in “the indicator of exports of ICT services”, South Korea (5) improved its position in the indicators related to “trademarks, global brand value, and cultural and creative services export” and China (12) boasted “19 of the top science and technology clusters worldwide – with Shenzhen-Hong Kong-Guangzhou and Beijing in the 2nd and 3rd spots, respectively”.
  • Korea, India and China are joined in the global top 20 by Singapore (8), Japan (13) and Hong Kong (14).

How is the geography of global innovation changing?

The word the GII uses is “unevenly” but there may be signs this is changing.

Although the findings show North America and Europe continue to lead the global innovation landscape,  the performance of South East Asia, East Asia, and Oceania is currently the most dynamic and they are closing the gap.

There is also still a definite bias toward high income economies too and China is still the only middle-income economy to make it into the top 30.  However, Bulgaria (35), Malaysia (36), Turkey (41), Thailand (43), Viet Nam (44), the Russian Federation (45), India (46), Ukraine (49), and Montenegro (50) have all climbed into top 50. 

This could again be a signal change is afoot but in real terms only Turkey, Viet Nam, India and the Philippines are actually catching up.  Other than China, these are the only economies with the potential to make any significant changes to the global innovation landscape and that change will only happen (according to Soumitra Dutta, Professor of Management at Cornell University) if these countries are:

“Able to successfully complement their domestic innovation with international technology transfer, develop technologically dynamic services that can be traded internationally, and ultimately have shaped more balanced innovation systems”.

How to get Prioritized Patent Examination in the US

The USPTO has just increased the annual limit on the number of applications that can be submitted via its Track One prioritized examination program from 10,000 to 12,000 – so what is it? and why might you want to use it?

What is Track One?

The US Patent and Trade Mark Office, USPTO, Prioritized Patent Examination Program, called ‘Track One’, was launched in 2011 as part of the America Invents Act changes to US patent law.

Track One aims to deliver a final decision on a patent application within 12 months. This can be attractive if you need to get your US patent granted quickly, and there are less requirements involved with Track One than there are with the USPTO’s Accelerated Examination Program.

Entry onto the Track One program requires the filing of a request and payment of a $4000 Track One prioritized examination fee (although this is discounted to $2000 for small entities or $1000 for ‘micro’ entities) and a processing fee.

Why should you use Track One?

While there is an additional cost, the reduction in time is significant.

The average time for a US patent application to complete examination is over 27 months.  With Track One it goes down to 7.8 months.

Track One applications also start the examination process much earlier.  A first Examination Report is usually issued by the USPTO within 3.4 months of filing a Track One request, compared to over 18 months in the case of a standard application.

This means that if speeding up your application is your primary objective, Track One offers an attractive alternative.

However, speed is not the only benefit. 

A 2015 analysis for IP Watchdog found that allowance rates were 19% higher for US patent applications on Track One than for standard applications.  And in their analysis the following year IP Watchdog found that not only were allowance rates higher, but also that Track One requests enjoyed shorter examination timelines and fewer examination reports (although applicants who entered the Track One program after filing a Request for Continued Examination, RCE, appeared to receive fewer of these benefits).

When can you use Track One?

A US patent application is eligible for Track One if:

  • It has no more than four independent claims
  • It has no more than thirty total claims
  • It has no multiple dependent claims

Both first filings and continuing applications (what we would call ‘divisional applications’) are eligible for Track One.

The point of Track One is to seriously speed up examination, so an application will lose its Track One status if you:

  • Request an extension of time
  • File an amendment that contains more than four independent claims/more than thirty total claims/a multiple dependent claim
  • File a Request for Continued Examination, RCE
  • Receive a final Office Action from the USPTO
  • Abandon the application

What to consider before using Track One

Track One applications enjoy higher allowance rates and shorter examination timelines than standard US patent applications.  However, if you are considering using Track One, you will need to balance the potential benefits of speeding up the potential grant (or refusal) of your application against your commercial objectives and, more pointedly, the cost of a Track One request.

Better still, why not have that conversation with a Two IP patent attorney? We have years of experience advising clients on US patent protection and long standing relationships with expert US patent attorneys.

Are EPO ViCo proceedings a good thing for clients?

I think it’s safe to say that when it comes to conducting oral proceedings at the EPO, videoconferencing is here to stay.  However, despite some initial misgivings, are EPO ViCo proceedings actually a good thing for clients?

During the global pandemic the move to video was inevitable. 

It not only allowed us to circumvent the obvious travel restrictions, it also arguably improved the timeliness and efficiency with which oral proceedings in examination, opposition and appeal could be dealt with, albeit remotely.

As things slowly start to open up, it appears that attorneys want to retain the ability to attend hearings virtually.  This is a view supported by the EPO’s recent Progress Report.  It claims ViCo offers a range of tangible benefits including increase efficiency, accessibility, and inclusivity while reducing costs and the impact constant travel has on the environment.

The Chartered Institute of Patent Attorneys (CIPA) has responded to the report by putting forward the case for the urgent adoption of ViCo as they feel the technology has been proven to be fit for purpose and that ViCo promotes fairness, the right to be heard, and the right of access. 

They did add however that they “strongly oppose” hybrid proceedings; in CIPA’s view mixing in person and ViCo attendance is “inherently unbalanced”.

Why are EPO ViCo proceedings a good thing for clients?

In our view the main benefits of ViCo to the client are:

1. Lower cost

Obviously meeting virtually takes out the usual travel costs and disbursements which immediately represents a significant saving for the client.

There is also the question of the video conferencing platform the EPO uses.  All oral proceeding can be held by Zoom, which can be downloaded for free via Windows, Mac, iOS, and Android meaning even accessing the required technology carries no additional cost.

2. Greater accessibility

Anyone can access Zoom and there are almost no restrictions on the number of people who can join a virtual proceedings.  So as many people as need to can join from both the client side and from the attorney’s team, regardless of location.

Better still as everyone involved can easily attend, conversations can take place during the hearing.  This allows the applicant and their attorney/s to discuss and agree and changes to their strategy as required.  This is made even easier by the technology. 

This is particularly advantageous for opposition oral proceedings – during breaks in the oral proceedings, the team can gather in their own virtual meeting room and can use it to stay in constant contact during the proceedings itself, exchanging messages confidentially using the chat function.

There is also a greater flexibility in terms of start-times.  There have been a number of cases where the EPO has agreed to move the start-time to accommodate participants in different time-zones, most notably in the US.

3. Lower carbon footprint

Along with the reduction in travel costs, with less travel involved ViCo hearings will also have appositive impact on the environment with fewer people flying to Munich and The Hague.

4. Better attorney performance

As the hearings are conducted at the attorney’s desk (or at from the video conferencing room at their offices), they will be more comfortable, better rested, and raring to go having been able to side-step the energy sapping irritations of travelling. 

As they are operating from the office, they also have all the necessary files to hand.  Moreover, they can easily request anything that might be missing without having to worry about when or how that information would arrive if it had to be requested from an office in another country.

5. They are open to public

This means you can attend your competitors’ oppositions and find out more about their patents, their activities, and their plans.  Although admittedly, they will be able to do the same!

Two IP’s patent attorneys have enormous experience of successfully representing clients at oral proceedings at the EPO, both in person and via ViCo.  If you’d like to find out more, please email us.

 

 

Beware of patent and trade mark registration and renewal scams

According to reports from the UK and European Patent Offices, more and more patent and trade mark owners are receiving unsolicited and unexpected requests to pay registration and renewal fees for their IP rights.  However, on closer inspection these demands aren’t coming from official sources, they are a scam.

This type of scam is nothing new.  However, because of the continuing increase in email traffic – a trend that’s only been exacerbated by the pandemic – instances are on the rise.

How does a patent or trade mark scam work?

The scams typically generally split into two types: patent or trade mark applications; and patent and trade mark renewals. 

With a patent or trade mark application scam, the fraudster obtains a patent or trade mark owner’s details once their application becomes public. 

They then use the details to send fake demands for official application or renewal fees from authentic sounding organisations like the ‘World Bureau for Intellectual Property or ‘International Patent and Trade Mark Office’ (you can find a more complete list of the fake IP organisations that have been reported here). 

With a patent or trade mark renewal scam, they will also find the date of each renewal and use that along with the name and address details to make their demands look even more genuine.

More worryingly the invitations will often identify a PCT application by its international publication number, its publication date, the title of the invention, its international application number and its priority information to make it look even more legitimate.

The requests also often come with large red ‘WARNING’ or ‘FINAL DEMAND’ watermarks across the middle to wrong foot the recipient and create additional panic.

However, despite the fact they use official sounding names and official looking stationery, language, and details, they are being created by unscrupulous individuals deliberately attempting to mislead you.

What should you do if you receive an unsolicited demand for patent or trade mark fees?

Firstly, all correspondence relating to your patent or trade mark applications, including renewal fee reminders, will be sent by the relevant IP Office to your attorney to be dealt with and your attorney will report them to you. Any costs relating to your application or a renewal fee will appear in your attorney’s bill to you, clearly accounting for each charge. 

The only exception to this rule is if your attorney has transferred management of renewal fees on a granted patent, trade mark or registered design to a specialist renewals or annuities provider like Renewals Desk, the service Two IP use.

This means if you are in any doubt about the legitimacy of any payment request you receive, you should immediately send a copy to your attorney. 

They can then contact the relevant IP body to report it so that it can be investigated.  They will also confirm there is nothing for you to pay or to worry about.

Under no circumstances should you pay any invoice that does not come from your attorney or from the specialist annuities provider that they use – in our experience, it will be almost impossible for you to get your money back.

If you are based in the UK and want to take the matter further, you can send copies of any scam invoice that you receive to the UK Intellectual Property Office at misleadinginvoices@ipo.gov.uk, to Action Fraud, and/or to your local Trading Standards office in addition to sending a copy to your patent or trade mark attorney.

If you would like to find out more about how Two IP would manage and safeguard your IP portfolio, please email us today.

Does WIPO PROOF provide a more effective way to protect your copyright and designs?

While the patent and trade mark processes are well structured and clearly set out, protecting your other IP rights requires you to prove these ideas were definitely yours at a  specific point in time.  The World Intellectual Property Organisation’s (WIPO) new online WIPO PROOF service may finally offer a more effective way to protect your copyright and designs.

WIPO PROOF is a new digital service that allows you to date and time-stamp any digital file so you can inexorably prove your ownership of this asset at a specific point in time. 

It has been designed to provide innovators in any industry sector with a fast, effective, instantly accessible and, best of all, inexpensive way to safeguard a digital representation of their literary or artistic works, designs, trade secrets and data.

How does WIPO PROOF improve the current system for protecting copyright and unregistered designs?

Up until now if you needed to prove you owned copyright or design rights on a certain date, the best advice an attorney could give you was to print out or burn a copy of your words or a drawing or photo of your idea then seal it in an envelope with a signed statement from a credible witness and post it to yourself.

Then, as long as you gave the unopened envelope along with an official receipt showing the date of postage to your lawyer for safekeeping, you should be able to uphold your ownership of your copyright or design.

However, this has always been labour-intensive, expensive, and not entirely watertight.

Given the increasingly digital age in which we live, a more reliable and more user-friendly method has long been needed.

How could WIPO proof help you protect your copyright, designs, trade secrets and data?

WIPO describes the new WIPO PROOF service as being “very easy to use, making the service indispensable for any intellectual asset strategy”.   We’d add that at just 20CHF for 5 years, it also seems extremely cost-effective.

However, if it’s going to be adopted it must also be easy to use.  Thankfully this also looks to be the case as the system follows a simple 6-step process:

  1. You access your account
  2. You choose which assets you wish to establish proof of ownership of (in a digital format)
  3. The browser then generates a unique record of your asset
  4. You request a WIPO proof token
  5. Your asset is time stamped and the time and date are added to your token
  6. You can then download unalterable proof the digital token was created at that exact moment in time

Which intellectual property rights can WIPO PROOF be used to protect?

While copyright (the IP right used to protect art, music, lyrics, literature, software, and textile designs) and unregistered designs (the IP right used to protect the physical appearance of your products) are the most obvious applications, there are two more IP rights you could use WIPO PROOF to protect:

1. Trade secrets and know-how

This could include software algorithms, formulae, recipes, manufacturing processes or your client data or business plan, in fact any proprietary information that you can leverage economic value from.

2. Data

Even though the end result of your R&D could well be a new patent application, the data behind your innovation may be valuable in its own right.

Two IP advise on the protection of every type of IP right including copyright and designs as well as patents and trade marks and we are committed to finding a better way of working including finding solutions like WIPO PROOF.  To find out how we could help protect and grow your IP portfolio, please email us today.