Quick Post: IP Enforcement in the Age of Austerity – The PCC

Without much publicity (both inside and outside of the world of IP), fundamental reforms to the procedure for IP enforcement at the Patents County Court (PCC) have come into effect.

Basically, the PCC offers a more streamlined and cost effective forum for low value/complexity claims. Designed for small to medium sized enterprises (SMEs), costs are capped at £50,000. The form of proceedings sits somewhere between proceedings before the UKIPO, the EPO and the High Court.  Damages are due to be limited to £500,000 by legislation coming into force in April 2011.

The changes are summarised by the UKIPO here.

The reforms are discussed by Field Fisher Waterhouse here. [Update: details of the first case management conference have been published; see here]

Patlit has a useful two-part guide here and here.

The Spark comments on the transfer of cases from the High Court here (also discussed by Patlit here).

Quick Post: UK Patent Costs

OK. You have, or are going to have, a granted UK patent. It lasts for 20 years from the filing (not priority) date. How much will it cost once granted?

Renewal fees are due annually by the end of the month in which the filing anniversary lies. (E.g. filed on 3 October: pay renewal in 3 months up to 31 October). They are due for years 5 to 20 (i.e. the first renewal is due 4 years from filing for the 5th year).

As of 6 April 2010, the official fees increase from £70 to £600 for years 5 to 20. Current fees can be checked here. This totals £4,550 over the 20 year term (excluding pre-grant prosecution costs).

If you wish for someone else to monitor and pay the fees (typically an annuity service linked with your patent attorney), increase this cost by about 30%, i.e. ~ £6,000.

Official fees can be cut by half if you make licences of right available (which in term limits enforcement/damages in court). If the cost is a burden ask your patent attorney about this option. Application needs to be made at least 10 days before the next anniversary date to obtain the discount on the next fee.

British Photographer v. Texan Pornographer

I read about this case last week. Although pretty straightforward from a legal point of view it made a good story: hard-working teenage amateur – check; evil Texan pornographer – check; lawyer-done-good – check; copyright issues – check; amusing email exchanges – check; and justice served – check.

I will leave the details of the story to Plagiarism Today and Eric Goldman (follow links). The photographer in question (Lara Jade Coton – who is now a bit older) writes about winning the case here.

An interesting point that arose was the separation in the US between copyright and publicity rights (see Eric Goldman’s report). Even if a photograph on the Internet appears to have a permissive (copyright) Creative Commons licence, if it features or references one or more people, and is used in advertising, you will also need to obtain permission from those people with regard to their publicity rights. This was apparently poorly considered by the court.

Another interesting aspect is the registration of copyright works in the US.  If the photograph in question had been registered in the US damages would have been a lot higher (in the end they were around $4k) and costs for attorneys fees may have been available. However, is it reasonable to expect a 14-year-old British amateur photographer to register her photos in the US? (Or even to know to do this?) What about a Flickr account with hundreds of photos? A quick glance at the US Copyright Office website shows that there is room for improvement in terms of usability and clarity; even the material for Teachers and Students is unclear as to the registration process (i.e. What exactly can be registered? What fees are required? How does registration function for works uploaded to Internet sites?)

In the present case, if there was no additional defamation action, it would likely not have been worth pursuing a copyright action. The issues with registration and enforcement raised by the case are not unique to the US; however, they again demonstrate that some form of global copyright is needed (e.g. to protect artists and their works) but that the present system(s) need revision in the Internet age.

UKIPO: Dedicated Email Addresses

There are a number of dedicated email addresses used by the UK IPO in their day-to-day activities. As I get older, my already over-loaded brain refuses to remember anything with an “@” (which either the Dutch or Germans allegedly call a “monkey’s tail”) . I will therefore set them out below.
[The @ signs below have all been replaced with [at] to prevent crawling by automated spam-bots.]
In general, all emails should be a plain text email message (RFC822-compliant). The UKIPO will not accept MS-TNEF/RTF format messages or HTML format messages. Nor will they accept messages that are encrypted or digitally signed. Make sure you change your email settings appropriately.
The UKIPO will send a return email message confirming receipt of the any sent email – do not assume your email has been received until you receive this.

Extensions

Extensions of time under Section 117B (e.g. for examination reports): pateot[at]ipo.gov.uk
Form of email required
  • Example subject line: “Extension of time under s.117B for patent application number GBYYXXXXX.X”. For requests under section 117B(4)  add the word “DISCRETIONARY” in capital letters.
  • Example body text: “We hereby request a [2 month] extension to the period [for replying to the Examination Report dated DD/MM/YY].”
  • Further extensions under s.117B(4) require reasons.

Withdrawal

For withdrawing a UK patent application: withdraw[at]ipo.gov.uk
Form of email required
  • Example subject line: “Withdrawal of patent application number GBYYXXXXX.X”.
  • The body text of the email message should contain a statement of withdrawal that is not ambiguous or conditional. Such a statement could read:”I withdraw patent application number GBYYXXXXX.X”.
  • If you wish to file a subsequent application, and use this as a basis for a priority claim, then, inter alia, the withdrawal of the application should be made without leaving any rights outstanding. This can achieved using a statement such as “I withdraw patent application number GBYYXXXXX.X without leaving any rights outstanding”. Please note that making this statement rules out the possibility of later making a request to correct the withdrawal of a withdrawn application (resuscitation) or to request reinstatement of an abandoned application (i.e. leave any withdrawals to a professional).
  • The email message should also contain some indication that the person withdrawing the application is authorised to do so, eg. “I am the applicant / the applicant’s agent for the application”.
  • The email message should contain no attachments and the request to withdraw the application should not be contained in an attachment. The request should be made in the body of the message.
  • Also see here.

Third Party Observations

For submitting third party observations under Section 21: section21[at]ipo.gov.uk

Form of email required
  • Example subject line: “Third Party Observations under s.21 for patent application number GBYYXXXXX.X”.
  • Observations can either be provided in the body text of the email or in an attachment. The attachment should preferably be in one of the following formats: MS Word, WordPerfect, PDF or plain text (.txt/.rtf).

Amendments

Filing amendments to a patent under Sections 27 or 75: litigationamend[at]ipo.gov.uk

Form of email required
  • Example subject lines: “Proposal to amend patent number GBXXXXXXX under s75 before the courts [or the comptroller]” or “Proposal to amend patent number GBXXXXXXX under s27” as appropriate.
  • The text may be provided as an attachment to the email.
  • Use of “Track Changes” is encouraged.
  • Accepted formats, inter alia, MS Word, WordPerfect, and PDF.

Observations on Patent Office Opinions

Filing observations for a UKIPO Opinion: opinions[at]ipo.gov.uk

Form of email required
  • Example subject line: “Observations relating to Opinion No. [NN/YY]”.
  • Observations can either be provided in the body text of the email or in an attachment. The attachment should preferably be in one of the following formats: MS Word, WordPerfect, PDF or plain text (.txt/.rtf).
  • An acknowledgement may not be provided immediately.
[ Image: Modern lamp letter box at Abbey Mill, Tintern (Roy Parkhouse) / CC BY-SA 2.0 ]

Filing Confidential Information at the UKIPO

If you need to file confidential information relating to a published application or patent at the UK Intellectual (i.e. Patent) Office, you must make a request for confidentiality at the time of filing the document containing the information.

Rule 53 allows a request for confidentiality to be made on filing the document or up to 14 days after this date. However, due to the electronic filing systems of the UKIPO, any confidential document not accompanied by a request for confidentially will be open to public inspection until a request is made.

This was set out in a Practice Notice issued in April 2007 (see page 42 of this document):

From 1 April [2007], any document filed in connection with a published patent application or a patent is open to inspection on filing. However, it remains possible to make a request for confidentiality at the time of filing the document. If such a request is made, the document is kept confidential while the request is considered. It also remains possible for confidentiality to be requested up to 14 days after the document has been filed. The document will have been open to inspection in the meantime, but will become confidential once a request has been made and will remain so while the request is considered. The 14 days for making a request continues to be extendable at the comptroller’s discretion.
Therefore, if you do need to keep information confidential, make sure it is clearly indicated in a covering letter.
Thanks to ivoryelephantphotography for the use of the photo.

European Attorney Japes?

Just spotted this notice issued by the EPO concerning:

…an e-mail containing a hoax announcement purporting to be from the EPO in which the public is given the impression that the Office’s fax and online filing services will not be available from 30 September 2010 to 6.00 hrs on 4 October 2010…

Whoever instigated such an email would appear to need an understanding of the transitional deadline for filing divisional applications (1 October 2010) set by the recent EPO Rule Changes.

They would also appear to need to get out more often.

Quick IP Related Stories from the Economist

There were a few IP-related stories in this week’s Economist:

Innovation in Asia: Trading Places – How China is about to overtake Japan in patent applications.

Financing Small Business: The Mother of Invention – Innovative new funding models step in when the banks retreat (see http://www.fundingcircle.com/).

Books and arts: Well, what a good idea! – The release of two interesting books on innovation.

Oops! We’ve missed the Priority Deadline – Abaco Revisited

The case of Abaco Machines (Australasia) Pty Ltd, Re Patent Application [2007] EWHC 347 concerned an unfortunate group of Australian patent agents who managed to make a mess of a priority filing. In a cruel twist of fate, the case was heard in the UK only a few months before reforms of the Regulations of the PCT came into force that might have alleviated their errors.

Image: Francesco Marino / FreeDigitalPhotos.net

Original Facts of the Case

A Vietnamese priority application was filed on 7 January 2004. The applicants wanted to file a PCT application before the end of the priority year. The Australian patent agents mistakenly timetabled the end of the priority year as one of 14 or 17 January 2005; both dates being after the actual deadline of 7 January 2005.  The patent agents only began to prepare the PCT application on 8 January 2005 and by 13 January 2005 they had realised they had missed the 12-month priority window.

UK Decision

At the time, UK patent law allowed a request for a late declaration of priority under s.5(2B). A late priority claim could be made if, inter alia, a UK application was filed within two months of the expired priority period (i.e. by 7 March 2005) and it could be shown that the applicant’s failure to file the application was unintentional.

The Judge agreed with the hearing office’s finding that there was no unintentional failure to file a UK application, the failure related to a PCT application and the filing of the UK application was intentional based on this failure. At the time there was no mechanism to request a late declaration of priority under the PCT.

PCT Reforms

On 1 April 2007, Rules 26bis.3 and 49ter allowing the restoration of a priority right under the PCT came into force (see page 55 of this document).

Let us see what happens when we take the Abaco facts while adding 5 years to the dates:

Revised Facts

A Vietnamese priority application was filed on 7 January 2009. The applicants want to file a PCT application before the end of the priority year. The Australian patent agents mistakenly timetable the end of the priority year as one of 14 or 17 January 2010.  The patent agents only begin to prepare the PCT application on 8 January 2010 and by 13 January 2010 they realise they have missed the 12-month priority window.

What can we do?

1. Restore the right of priority upon filing the PCT application under PCT Rule 26bis.3:

  • As set out here, Australia as a Receiving Office (RO) under the PCT accepts requests for restoration of the right of priority under Rule 26bis.3. Hence, the Australian patent agents can file a PCT application with the Australian Patent Office (APO) as RO. The application must be filed, and the request must be made, within two months of the expiration of the priority period, i.e. by 7 March 2010.  The APO applies national standards relating to missed time limits (see page 7 of the AU PCT Guide), which are equivalent to at least the “unintentional” standard. The APO charges a fee for making the request. Prima facie it is likely the request will be accepted.
  • When the application enters the national phase in the UK, the UK Intellectual Property Office (UKIPO) should accept the late declaration under 49ter.1 (presuming the UKIPO does not dispute the APO’s findings). See paragraphs 6.26 and 13.73 of the UKIPO’s Formalities Manual.

2. Restore the right of priority upon filing the UK national phase application under PCT Rule 49ter.2:

  • File a Form 3 within one month of entering the UK national phase, together with a fee (£150) and evidence of the Australian agents’ errors. Prima facie, the facts would likely support a finding that the failure to file the PCT application was unintentional. Ideally, the evidence should be in the form of an affidavit or witness statement signed by the Australian agents.
  • This can also be performed if the RO were to refuse the restoration request.

There you go. Just one of the reasons why the world we live in today is not as bad as yesteryear.

[Photo with thanks to Francesco Marino / FreeDigitalPhotos.net]