Start from overseas patent protection including PCT (patent cooperation treaty), PPH (patent prosecution highway), CAF/CCD, new route pilot (work-sharing), tripway pilot (search sharing) … How to audit work of patent agent/lawyer Keep document & bill Pass a Bar exam to show your ability

1. From International
Protection to Patentability
search - 2
Chen JingFung (Grace)
@csie.ntut.edu.tw
2012/05/15
Chapter 6, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825
USPTO.gov – International Protection

2. outline
• Intellectual Property Offices work on
International Protection
– improving work-sharing & international
cooperation
• How to enhance your patent search
– Find or hire another one
Grace@iii.org.tw & cise.ntut 2

3. International Protection
• Provide information & agreements on improving
work-sharing & international cooperation among
various Intellectual Property Offices
– Patent cooperation treaty (international)
– Patent prosecution highway (fast track examination)
– Common application format & common citation
document
– New route (work-sharing pilot btw USPTO & JPO)
– Triway (Search sharing pilot btw EPO, JPO & USPTO)
– Share (work-sharing pilot btw USPTO & KIPO)
Grace@iii.org.tw & cise.ntut 3

4. Patent Cooperation Treaty (PCT)
• PCT legal Administration
– Branch 1: PCT special programs
Responsible to educate & assist the patent community
• Provide training courses <- help patent application
• Provide instruction to patent examiners <- search & examination
• Provide direct assistance regarding PCT application
– Branch 2: PCT legal affairs
Resolve legal issues in PCT international application & in US
national stage application (35 USC 371)
• Interpret and/or suggests changes to patent laws & rules & study
their effect on PCT
• Deal with other aspects of
– international patent law (as harmonization),
– Patent Law Treaty
– Electronic filing
4
Grace@iii.org.tw & cise.ntut

5. Patent examination jam
Pendency numbers
(2010)Average exam (ref: WIPO 2009 &
npf.gov.tw 2011)
SIPO (China’s State
Intellectual Property 24.2 months
Office)
KIPO (Korean) 24.6 months 0.47 millions (2008)
USPTO 34.9 months 1.25 millions (2008)
JPO (Japan) 35.3 months 2.37 millions (2008)
EPO (European) 40.6 months 0.58 millions (2008)
44 thousands (2004)
TIPO (Taiwan) 41.04 months
153 thousands (2010)
Grace@iii.org.tw & cise.ntut 5

6. Patent Prosecution Highway (PPH)
Pair-PPH
• PPH speeds up the examination process
– Participate countries by allowing examiners to re-
sue search & examination results
• a streamline patent processing
Office of First > 1 claim Office of Second
Applicant’s
Filing (OFF) (patentable) Filing (OSF)
file
– Ex. The OSF can use OFF’s work products
» All claims in the OSF application must sufficiently
correspond to the allowable claims (/search results) in OFF
2010/5/25 USPTO has eliminated the fee for the petition to
make special under PPH program
6
Grace@iii.org.tw & cise.ntut

7. PPH benefits
Greater Efficiency
90% PPH <50%
cases are > non-PPH
allowed cases
Accelerated examination Decreased costs of
(2~3 months) prosecution
PPH request (application) (PPH vs. non-PPH)
-> pre-exam processing average of PPH save
-> grant both applicants &
offices time & expense
Reduced pendency
No Petition Fee
PPH can use the applications
USPTO eliminated the
filed based on another office’s
petition fee in 2010/5
work product
Grace@iii.org.tw & cise.ntut 7

8. PCT-PPH
• PPH program -> permit PPH eligibility for national-
and regional-phase under the basis positive results
in PCT international phase (PCT-PPH)
Participating offices in PCT-PPH
Trilateral Offices KIPO APO ROSPATENT SPTO
• USPTO (Korean (Austrian (Russia) (Spanish
• JPO (Japan) Intellectual Patent Patent &
• EPO (European) Property Office) Trademark
office) office)
2011/9/1 TIPO join USPTO’s PPH program (ref: npf.org.tw 2011)
<- the speed of TW patent exam
2012/3/1 TW -SUPA (TIPO-Support Using the PPH Agreement)
Ref: TIPO 2012
a corresponding a national application filed from
national phase entry the fast-track examination
International Authority (USPTO)
8
Grace@iii.org.tw & cise.ntut

9. TW –SUPA
(TIPO-Support Using the PPH Agreement)
• TW-SUPA vs. PPH
Ref: TIPO.gov.tw 2012
Grace@iii.org.tw & cise.ntut 9

10. Patent DB - Machine translation
EPO & Google signed a agreement (completed by the
end of 2014) to collaborate on machine translation into
European (28), Slavonic (Russian) & Asian (Chinese,
Japanese & Korean) languages
• Provide a free, real-time translation of millions of
(ref: EPO 2011) patents granted
• speed up R+D efforts with searches in their own
language
KIPO + WIPO - the joint development of EPO & SIPO sign agreement on
“E-learning content” (2004-2007) Chinese-English machine
• IP PANORAMA relies on the design translation for patents (2011)
strategy - “Storytelling” with a • Especially SME stand to
practical story regarding intellectual benefit from this improved
property access to information on
• Focus on the situation of SMEs new technologies
• 2005-2006 English version, 2008 (ref: EPO 2011)
Mongolia, Portugal, Poland, Estonia, 2009 patent applications 
Morrison Francis & Thai, 2009 Arabic (world economic storm)
version, 2010 Spanish & Russian
SME (small and medium-sized enterprises)
10
Grace@iii.org.tw & cise.ntut

11. Common format & document
• Trilateral Common application format (2007 Trilateral
conference)
– Simplified and streamlined patent application filing requirements
– Example format (XML e-filing: “tags”)
• Description
– Title of invention, Technical field, Background art, Summary of invention (Technical
problem, solution to problem, advantageous effects of invention), Brief description
of drawings (figs), Description of embodiments (examples), Industrial applicability,
Reference signs list, Reference to deposited biological material, Sequence listing
free text, Citation list (patent literature, non patent literature)
• Claims
• Abstract
• Drawings
• Sequence listing
• Triateral Common citation document (CCD)
Category Patent no. Kind code Application name Pub. date
Claims
Relevant
passages 11
Grace@iii.org.tw & cise.ntut

12. New route pilot project btw JPO &
USPTO
• Start this new rout pilot project on 2008/1/28
• Objective
– Paris-Route: a patent application filed with the
OFF will be regarded as being filed on the same
date as the filing date in the OSF
• Speed up OSF to get the result of the pilot in a limited
time period
– providing for the mutual utilization of
search/examination results on a full scale
• an applicant sufficient time (30 months from the filing
(priority) date)
Grace@iii.org.tw & cise.ntut 12

13. Triway Pilot Among USPTO, EPO, & JPO
• Triway Pilot can eliminate certain timing issues
• A search sharing to leverage the searching expertise of
each of the Trilateral Offices (EPO, JPO, and USPTO) to
the benefits of both applicants and the Offices
• Worksharing effects (as PPH program) can improve the
resulting quality of any patents issued on the
corresponding applications by each of the Trilateral
Offices
– Important dates
• The Trilateral Offices agreed (2007/11) -> A notice
regarding the requirements/procedures on USPTO
website (2008/7/14) -> The start date (2008/7/28)
Grace@iii.org.tw & cise.ntut 13

14. work-sharing pilot btw USPTO & KIPO
• 2008~2009 KIPO + USPTO want to increase bilateral
cooperation between the Offices
– the Strategic Handling of Applications for Rapid
Examination (SHARE) pilot (as PPH program)
– Scope
• their examination of the corresponding cross-filed application
• The technical areas selected were Semiconductor (IPClass H01L)
and Fuel Cell (IPClass H01M). 344 applications were included in
the pilot.
Pos.
neutral
Neg.
14
Grace@iii.org.tw & cise.ntut

15. Intellectual Property Overseas
• Toolkits only can provide an overview
http://www.uspto.gov/ip/iprtoolkits.jsp
• Some basic, often low-cost, steps small companies
should consider include
– Working with legal counsel to
• develop an overall IPR protection strategy
– Developing detailed IPR language for
• licensing and subcontracting contracts
– Conducting due diligence of potential foreign partners
• (The U.S. Commercial Service can help, see Export.gov)
– Recording their U.S.-registered trademarks and copyrights
with Customs and Border Protection; and
– Securing and registering patents, trademarks, and
copyrights in key foreign markets,
• including defensively in countries where IPR violations are common.
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Grace@iii.org.tw & cise.ntut

16. HOW TO IMPROVE YOUR
PATENT SEARCH
Grace@iii.org.tw & cise.ntut 16

17. Why your search may not be perfect
• Some prior-art reference can be missing from
database
– drop out “class & subclass”
– Without being published or have been previously
invented
• Most patent computer searches do not contain
– foreign, non-patent, or other references (as
theses, service manuals, magazines, textbooks …)
• Very recently issued may not in the computer’s
database <- new!!
• Pick up “terms” only from your view
– People may select other terms to describe the
same thing
17
Grace@iii.org.tw & cise.ntut

18. Patent Agents & Patent Attorneys
Patent Agents Patent Attorneys
• Generally an undergraduate • US: Get certifications by the PTO
degree in engineering or & the attorney-licensing authority
Work
science (such as the state bar , supreme
ability
• May get a license by the PTO court ..) of at least one state
(or TIPA at TW) • TW: pass the national exam
• Express an opinion on
Clarifying patentability Handle the patent application,
the issue • Help to find out the issue copyrights and trademark
who make
Prosecute
X O
in court
18
Grace@iii.org.tw & cise.ntut

19. How to use a lawyer or Agent
In advance
• List the cost of every task
• Send the bill state by time/fixed rate
Lawyer/
Agent Keep saving in file
Generate
documents Send
document Official
(letter/official bills letters
papers
paper) for you
Understand
Ask practitioner to explain it
practitioner’s propose &
Be entitled know what & why to do
take the course of action
Pay $$ evaluation
The practitioner isn’t acting
Change competently, ethically or honestly …
Another
Patent Agent 19
Grace@iii.org.tw & cise.ntut

20. Find “discount” patent attorneys & agents
• Generally, hiring an lawyer in you
locality is very costly
– That attorneys will travel or hire
another one to Alexandria near DC
– PTO (local) website at
https://oedci.uspto.gov/OEDCI/Geo
Region.jsp (A&ARTP)
Active patent professionals are either in private
practice ( a law firm or solo practice)
• Charge about ($100 ~ $600)/hour
Just as good or
better than those of
the full-priced law
Many corporate-employed or semiretired patent firm lawyers
professionals or retired (but still licensed)
• Less payment than their downtown counterparts
• Have less overhead (rent, books, secretaries)
20
Grace@iii.org.tw & cise.ntut

21. Patent Bar exam information
• Participate a Bar exam to verify your ability
– USPTO bar exam info
http://www.uspto.gov/ip/boards/oed/exam/index
.jsp
– Taiwan IP certification
http://www.tipa.org.tw/certify_1/
Grace@iii.org.tw & cise.ntut 21

22. Summary
• Start from overseas patent protection
including
– PCT (patent cooperation treaty), PPH (patent
prosecution highway), CAF/CCD, new route pilot
(work-sharing), tripway pilot (search sharing) …
• How to audit work of patent agent/lawyer
– Keep document & bill
• Pass a Bar exam to show your ability
Grace@iii.org.tw & cise.ntut 22

23. Reference
• David Pressman, chapter 6, “Patent It Yourself: Your Step-by-Step
Guide” to Filing at the U.S. Patent Office, 2011, 15th edition, ISBN-
10: 1413313825
– Reference by “Previous Course Slide” record set: introduce invention,
evaluate invention, WM2Patent, Patent Requirement (novelty &
nonobviousness), Patent search (classification search)
• TW patent online search
– http://twpat.tipo.gov.tw/
• Blog: http://fungsiong.blogspot.com/
– Introduce hybrid TV/Smart TV (hbbTV) including widget design,
Android technology (API), system, ecosystem, framework, service,
application…,
– Agile for progressing:
http://fungsiong.blogspot.com/search/label/Agile
• About how to teamwork
– Some programming info. as Apache wookie, refactoring tech, CE-
HTML, a solution about removing a backdoor “Trojan” &
surveillance paper
23
Grace@iii.org.tw & cise.ntut