Foreign Patent Applications

News & Analysis as of

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

Design Patents and the Hague Agreement

Design patents protect the visual characteristics or aspects (e.g., appearance, ornamentation) of any article of manufacture. A design patent can be used to prevent competitors from producing similar items (e.g., knock-offs)...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

Protecting Technology and Inventions Internationally

As noted in “Patents are of National Origin,” obtaining a patent in one country, does not give the owner of the patent worldwide protection for the invention. Instead, a patent application must be filed in or for each country...more

Shortcuts on the Patent Prosecution Highway

The Patent Prosecution Highway (PPH) is a program that allows applicants to leverage allowable claims in one participating office to obtain a patent faster and more efficiently for corresponding claims in another...more

Five Patenting Lessons Exemplified by Google’s Glucose-Sensing Contact Lenses

Google recently announced on its blog that its “Google-X” laboratory is testing a prototype “smart” contact lens that includes a miniaturized electronic sensor designed to measure glucose level in the wearer’stears. I...more

USPTO Issues Memo On Changes Pertaining To Patent Law Treaty

Last week, we reported on changes to the rules of practice made pursuant to title II of the Patent Law Treaties Implementation Act of 2012 (PLTIA), which was enacted on December 18, 2012, and which amended U.S. Patent Law to...more

Anticipating First-to-File: What to do to Prepare for the United States Patent System’s Change to First-to-File

First, if you filed a U.S. provisional patent application or foreign priority patent application on or after March 16, 2012, and you intend to add material to your patent application when you convert to a non-provisional...more

The Patent Prosecution Highway Pothole for Pharmaceutical Patents

The USPTO promotes the Patent Prosecution Highway (PPH) as a way to “fast-track” a U.S. patent application when a corresponding foreign application has been allowed, or when a corresponding PCT application has received a...more

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