Patent Cooperation Treaty

News & Analysis as of

Continental patents a la carte or prix fixe? Biotechnology considerations for the unitary patent in Europe

Unitary patents in Europe - The European unitary patent and Unitary Patent Court (UPC) are slated to go into effect in early 2017. These monumental changes will have a significant impact on the ways patent rights are...more

Kuwait Now 149th Member Of Patent Cooperation Treaty (PCT)

Kuwait has officially joined the Patent Cooperation Treaty (PCT) becoming it’s 149th member. The PCT supports applicants in pursuing patent protection in multiple jurisdictions for their inventions. ...more

Effects of Brexit on Intellectual Property Rights

The recent “Brexit” referendum in which a majority of United Kingdom voters elected to leave the European Union has caused significant political and economic turmoil. It also raises questions about how EU designations for...more

The UK Has Spoken “Brexit” - But What Does This Mean for the IP Community?

The immediate reaction to Great Britain’s June 23, 2016 vote to leave the European Union (“EU”) (commonly referred to as “Brexit”) has been nothing short of hysterical. This paper focuses on what Brexit means for the...more

Brexit: IP Considerations in Light of the UK’s Vote to Leave the EU

While the “Leave” result of the June 23 referendum will not have an immediate impact on intellectual property, the eventual British exit (“Brexit”) from the European Union could have long-term implications for IP protection...more

Foreign Litigation Does Not Defeat Presumption of Laches - Lismont v. Alexander Binzel Corp.

Addressing laches issues in the context of a multi-jurisdictional dispute, the US Court of Appeals for the Federal Circuit affirmed a summary judgment ruling that the plaintiff’s correction of inventorship lawsuit was barred...more

Blog: Utility Patents and Utility Patent Applications

If you’ve ever overheard water-cooler banter about patents, chances are it was about utility patents, the most common kind of patent issued by the United States Patent and Trademark Office (USPTO). What is a utility...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

Blog: How to Protect Your Patent in Multiple Countries

If you’re thinking of protecting your invention in multiple countries, you have two general options: (1) file your first application directly in each country of interest, or (2) file a Patent Cooperation Treaty (PCT)...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

Successful Strategies for Doing Business in Asia: Malaysia (Updated)

WHAT ROLE WILL THE GOVERNMENT OF MALAYSIA PLAY IN APPROVING AND REGULATING FOREIGN DIRECT INVESTMENT? Regulation of foreign investment in Malaysia is done both through legislation as well as governmental policies....more

Going Global: Tips on Building a Patent Portfolio Outside the United States

I occasionally hear an inventor or businessperson talk about how his or her company has a “global patent” or an “international patent.” Unfortunately, there is no such thing. While some companies have filed patent...more

JPO and USPTO Announce PCT and Search Collaborations

Earlier this month, the U.S. Patent and Trademark Office announced two new collaborations with the Japan Patent Office. In a press release issued on July 1, the USPTO announced an agreement with the JPO in which the JPO will...more

Using Utility Models to Protect your Intellectual Property in Taiwan

A new “green” attitude is pervading Taiwan. Besides ongoing environmental efforts, Taiwan is home to multiple green technology companies. While revenue results for some Taiwanese solar cell manufacturers declined this year,...more

U.S. Institutes New International Design Applications

In February 2015, the United States completed steps to become a member of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement). The Hague Agreement went into effect for the...more

European Opposition Tactic Using Ambiguous Patent Conveyances in Employee Agreements

Opponents in Europe have been invalidating priority claims in European patent applications using a formalistic challenge. In Europe, in order to have a good priority claim the applicant listed on the priority application must...more

The PCT Process - flexible, cost-effective and efficient

Initiated in 1970, the Patent Cooperation Treaty (PCT) has become a popular tool for patent applicants interested in obtaining patents in multiple countries. In 2014, 61,492 PCT applications were filed by U.S. applicants. As...more

PTO Revival Rulings Are Not Subject to Collateral Attacks by Third Parties - Exela Pharma Sciences, LLC v. Lee

Addressing whether third parties have the right to challenge a patent revival ruling by the U.S. Patent and Trademark Office (PTO) under the Administrative Procedure Act (APA), the U.S. Court of Appeals for the Federal...more

WIPO Releases Data on 2014 International Patent Filings

Last week, the World Intellectual Property Organization (WIPO) released data on 2014 international application filings under the Patent Cooperation Treaty (PCT). WIPO noted that U.S. and Japanese filings accounted for almost...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

Are U.S. Law Idiosyncrasies Destroying Your PCT Applications?

Suppose a business’s patent strategy makes studied use of the Patent Cooperation Treaty application: draft one master application to serve as the basis for filing throughout the world. Coverage is required in the United...more

United States Takes Final Step to Join the Hague Agreement - Design Patent Law Changes to Take Effect May 13, 2015

In December 2012, Congress passed the Patent Law Treaties Implementation Act, which authorizes the United States to become a member of the Hague Agreement for the Registration of Industrial Designs (i.e., design patents). On...more

International Design Applications Under the Hague Agreement: Q&A for Companies Designating the U.S.

In early February 2015, the U.S. announced that it had deposited its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) with...more

New PPH Pilot Agreement between CIPO and EPO

A new Patent Prosecution Highway (PPH) pilot agreement between the Canadian Intellectual Property Office (CIPO) and the European Patent Office (the EPO) came into effect on January 6, 2015. The pilot will last for a period of...more

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