Foreign Patent Applications

News & Analysis as of

Packing Your Patent Application for Europe: Avoiding Problems Under European Patent Law

Planning an extended European vacation for your patent application? A lengthy stay in Munich with possible outings to The Hague, Berlin, Vienna, or Brussels? While your patent application won’t be strolling through the...more

Foreign Filing License in a Nutshell

Foreign filing licenses do not typically require much attention in daily practice since the license is routinely applied for and granted as a matter of course in new application filings. However, in certain situations...more

Claims Strategies in Patent Applications – Matching or Varied?

Up to 20 claims, including three independent claims, are paid for in the standard filing fee for a US non-provisional patent application. Some clients prefer matching claims in the claim set, others prefer varied claims. ...more

What Type of Patent Application Should You File First?

without the filing of any related applications, the provisional application will not be published or otherwise disclosed by the United States Patent and Trademark Office. One significant disadvantage of a provisional...more

Use of Provisional Patent Applications

Provisional patent applications became available on June 8, 1995 in response to the General Agreement on Tariff and Trade (the GATT treaty) whereby applicants in the United States are able to establish an early filing date by...more

Latest Options for Fast-Tracking Clean Technology Patent Applications

The grant of a patent can be delayed by years due to backlogs at patent offices around the world. However, recognizing the urgent need to address climate change, certain patent offices have established programs to expedite...more

Do the Evolution: Five Ways to Adapt Your Patent Strategy

The eastern coyote (or coywolf) is spreading across eastern North America. A study showed that coyote DNA dominates, but average eastern coyote DNA is about 10 percent dog (like Doberman Pinscher or German Shepherd) and 8-25...more

USPTO News Briefs - December 2015

USPTO and INPI Establish PPH Pilot Program - On November 23, the U.S. Patent and Trademark Office and Brazil's National Institute for Industrial Property (INPI) entered into a Memorandum of Understanding to establish a...more

USPTO Launches Dossier Access

The U.S. Patent and Trademark Office (USPTO) announced today that it had launched Dossier Access, the first of a set of business services to be developed as part of the Global Dossier Initiative. The Global Dossier...more

USPTO Proposes New IDS Framework

Tucked into the USPTO’s proposed patent fee changes is a proposal to change the Information Disclosure Statement (IDS) framework. While applicants may welcome the simplified procedures for obtaining consideration of an IDS,...more

URGENT: Change to Correction of Claims for Foreign Priority Dates

The Leahy-Smith America Invents Act (AIA) provides that the filing date of an earlier foreign patent application may now be the effective prior art date for subject matter disclosed in a U.S. patent or a U.S. patent...more

USPTO Revises Rules to Facilitate Access to Applications and File Contents by Foreign IP Offices

In a notice published earlier this week in the Federal Register (80 Fed. Reg. 65649), the U.S. Patent and Trademark Office issued a final rule revising the rules of practice to permit applicants to authorize the USPTO to give...more

Improving Patent Quality With International Collaborative Search Pilot Programs

The USPTO has launched two new programs aimed at improving patent quality by joining forces with the Japanese Patent Office (JPO) or the Korean Intellectual Property Office (KIPO) at the initial stages of the patent...more

Patenting: A Guidebook For Patenting in a Post-America Invents Act World

Patenting - Patenting generally offers a superior means for legally protecting most inventions, particularly since: • copyright, when available, does not provide a broad scope of protection; and • the ability...more

Expediting Patent Prosecution with the New Collaborative Search Pilot Program

Two new Collaboration Search Pilot Programs are or will soon be available to patent applicants. The Collaboration Search Pilot Program (CSP) between the United States Patent and Trademark Office (USPTO) and the Japan Patent...more

“Restriction Requirements” Series, Part 1: Considering Restrictions When Developing A Claim Filing Strategy

Welcome to the blog’s first post in a series about restriction requirements! This series will explore nuances in restriction requirement law and provide strategies for most effectively handling restriction requirements, both...more

Top Eight Things You Should Know About the Hague System For International Registration of Designs

U.S. applicants will soon be able to use a streamlined international filing procedure for design patents similar to the Madrid Protocol for trademark registrations. Currently, U.S. applicants seeking to protect designs in...more

Designing foreign applications

The importance of industrial design to Australian businesses is increasing, with competitive advantage being gained by investment in innovative design. Many Australian companies are now looking to sell their products outside...more

MBHB Snippets: Review of Developments in Intellectual Property Law: Winter 2015 - Vol. 13, Issue 1

In This Issue: - Tips for Developing a Cost-Effective Foreign Patent Strategy - Supreme Court Holds that Trademark Tacking Should be Decided by a Jury in Hana Financial, Inc. v. Hana Bank - Amending...more

Tips for Developing a Cost-Effective Foreign Patent Strategy

According to a recent survey of over 100 companies and universities, nearly 93% who filed patent families in 2013 filed at least some of those patent families internationally. While obtaining patent protection abroad is...more

USPTO News Briefs - November 2014

ILPO to Act as ISR and IPEA for PCT Applications Received by USPTO - Last month, the U.S. Patent and Trademark Office announced that as of October 1, 2014, the Israel Patent Office (ILPO) can act as an International...more

Effect of foreign patent proceedings on U.S. patent litigation

Prosecution and litigation of patents in foreign jurisdictions may have an impact on the enforcement of their corresponding U.S. patent rights - In today’s global marketplace, it is common for patent owners to file for...more

Where Should Foreign Patent Protection Be Pursued?

Once a client has made a decision to file a patent application, invariably, at some point during the patent procurement process, assuming foreign protection is not barred, the client will be asked whether it desires to pursue...more

Protecting Inventions Internationally – PCT Example

The United Kingdom, Japan and Norway, are all members of both the Patent Cooperation Treaty and the Paris Convention. The British Patent Office acts as the Receiving Office for the United Kingdom, the Japanese Patent Office...more

A Brief History of the Patent Law of the United States

Public perception of the patent system has swung widely over the years from highs, such as those in the late nineteenth century when Mark Twain could write “a country without a patent office and good patent laws was just a...more

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