The Background: There has been a growing trend to invalidate European patents by challenging their formal priority and using intervening prior art. The Technical Boards of Appeal of the European Patent Office ("EPO") referred...more
Challenges to the validity of the “Patent Cooperation Treaty joint applicant” have been a problem for many applicants at the European Patent Office. On October 10, 2023, the EPO’s highest authority, the Enlarged Board of...more
Many people applying for a patent in the United States only consider filing in other countries as an afterthought. You should consider whether you want to file in foreign countries before filing a nonprovisional application...more
Two important, but sometimes overlooked issues in patent prosecution, particularly for companies with worldwide patent portfolios, are: 1) when a foreign filing license must be obtained; and 2) how to determine when an export...more
On 30 July, the Court of Appeal of The Hague ruled on the formal entitlement to priority following from a US provisional patent application. The attack on priority in this case is part of a recent trend by parties in patent...more
Both the European Patent Office (EPO) and the Japanese Patent Office (JPO) accept a third party observation regarding validity of a patent application. In February 2012, it was announced that third party observations could be...more
A Survey of Third Party Observation Systems - Third party observations can be a cost-effective way of introducing prior art or arguments related to patentability of a published patent application. The September 2018 issue...more
We salute the originators and implementers of the Patent Cooperation Treaty (PCT) and the European Patent Convention (EPO) on their fortieth anniversary and look forward to continued use of both long into the future....more
Is innovation a key component of your business plan? Will you distinguish yourself with unique product offerings? Whether protecting our men and women in uniform, advancing the treatment of medical conditions, or adding to a...more
For the past few years there has been fear that the law on priority claims in the European Patent Office (EPO) could result in a divisional application becoming prior art against its parent if the divisional application...more
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
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 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
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
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
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
Good news for European patent applicants! On November 1, 2014, amended Rule 164 of the European Patent Convention (EPC), which was previously analyzed by Global IP Matters, finally went into effect. Rule 164 as amended...more
U.S. design patents and their international counterparts (generally termed “industrial designs”) protect the ornamental appearance of an article of manufacture. Design protection has been the subject of increased attention...more
U.S. exports hit a record high of $188.7 billion in December 2012. This is part of a long (albeit inconsistent) trend of growing exports, which goes back to the early 1990s and has been particularly strong and steady since...more
While much attention has been given to the recent, significant changes in U.S. patent law arising from the America Invents Act (“AIA”), lesser attention has been given to patent law changes brought about by further...more