Archive for October, 2013

This is hopefully a solution to a problem that has driven me mad for years.

When attaching PDF documents you often see errors from patent online filing software. For PCT applications a usual one is that a set of PDF Figures are not ‘Annex F compliant’ or the page numbers are not calculated properly.

One way around this is to use the Amyuni PDF printer driver that is supplied with the European Patent Office online filing software. However, this also tends to garble a PDF document .

I think there is another, better way:
– Choose to print the document.
– Select an AdobePDF ‘printer’ (assuming you have an Acrobat print driver installed).
– Select the ‘properties’ of this printer.
– Where it says “Default Settings” change “Standard” to one of the “PDF/A” options.
– Also, while you are here, click the “Paper/Quality” tab and select “Black & White”.
– Click OK and print.
The document should then print (better than the Amyuni driver). You should then be able to upload it without errors and it should pass the online filing validation checks. 

AdobeError2

 

Update: My US colleagues advise that for US Patent Office compliance CutePDF is recommend – http://www.cutepdf.com/ .

On official communications from the European Patent Office (EPO) the application number is listed in the form: 13123456.9.

However, to search for this patent application on the European Register you need to use:  EP13123456 – i.e. you need to add EP and remove the check digit.  

This is often a pain. It is especially a pain if you have performed optical character recognition on a scanned-in communication. In this case you cannot copy the application number directly from the PDF into the European Register search bar.

A quick solution (until the EPO fix it): this little bit of HTML and Javascript.

<!DOCTYPE HTML>
<html>
<head>
<meta charset="utf-8">
<title>EP Quick Search</title>

<script>
function changeNumber()
{
	var n = document.getElementById("number");
	var number = n.value;
	var start = "EP";
	var end_of_num = number.length-2;
	number = start.concat(number.substring(0, end_of_num));
	url = "https://register.epo.org/application?number=";
	url = url.concat(number, "&tab=main");
	window.open(url, '_blank')
}
</script>
</head>

<body>
<input type="textbox" id="number" value=""/>
<button onclick="changeNumber()">GO!</button>
</body>
</html>

Save this as an HTML file on your computer and add it as a favourite. Now just paste the application number in the box and search!

[To do – extend to GB and WO online patent registers.]

Huzzah.

The Administrative Council of the European Patent Office has decided to accept a change to Rule 36 EPC to remove the 24-month time limit for filing divisional applications.

Update: The actual decision has now been published and can be found here: http://www.epo.org/law-practice/legal-texts/official-journal/ac-decisions/archive/20131024a.html .

A draft of the decision is set out below:

Article 1
The Implementing Regulations to the EPC shall be amended as follows:

1. Rule 36(1) shall read as follows:

“(1) The applicant may file a divisional application relating to any pending earlier European patent application.”

2. The following paragraph 4 shall be added to Rule 38:

“(4) The Rules relating to Fees may provide for an additional fee as part of the filing fee in the case of a divisional application filed in respect of any earlier application which is itself a divisional application.”

3. Rule 135(2) shall read as follows:

“(2) Further processing shall be ruled out in respect of the periods referred to in Article 121, paragraph 4, and of the periods under Rule 6, paragraph 1, Rule 16, paragraph 1(a), Rule 31, paragraph 2, Rule 36, paragraph 2, Rule 40, paragraph 3, Rule 51, paragraphs 2 to 5, Rule 52, paragraphs 2 and 3, Rules 55, 56, 58, 59, 62a, 63, 64 and Rule 112, paragraph 2.”
Article 2

1. This decision shall enter into force on 1 April 2014.
2. It shall apply to divisional applications filed on or after that date.

The proposals are described in more detail in this document kindly circulated by the President of the European Patent Insititute.

Basically, Rule 36(1) EPC reverts back to its old form – from 1 April 2014 you will be able to file divisional applications as long as the parent application is still pending. [Subject to the caveat that an official version of the decision is yet to be published.]

Extra charges are being introduced, but these will only apply to divisionals of divisionals (i.e. “second generation divisional applications”). The exact charges have not been decided yet.

Although some will cry “u-turn” (not European Patent Attorneys though, we are all too polite), it is good to see the Administrative Council listen to feedback from users of the current system and act accordingly.

Feedback

Out of 302 responses received to a survey in March 2013 only about 7% sympathised with the current system. The negative consequences of the current system are clear:

It requires applicants to decide too early whether to file divisional applications (146 responses), e.g. before being sure of their interest in the inventions or their viability, prior to the possible emergence of late prior art, before having had the opportunity to dispute a non-unity objection, or even before being sure of the subject-matter for which (unitary) patent protection will be sought. Thus, the applicant is forced to file precautionary divisionals, thereby increasing the costs associated with prosecution (143 responses).

The time limits have not met their objectives (102 responses), since there has been no reduction in the number of divisionals, legal certainty has not increased, long sequences of divisionals are still possible, or there has been no acceleration of examination.

The time limits are complex and difficult to monitor, creating an additional burden and further costs for applicants and representatives (89 responses).

The negative effects of the introduced time limits are increased by the slow pace of examination (82 responses).

To address these consequences, the message from users was also clear: 65% voted for the reinstatement of the previous Rule 36 EPC. To their credit, it appears that the Administrative Council has done just that.

Reading between the lines it seems that enquiries from users of the system regarding the 24-month time limit and its operation were also causing a headache for the European Patent Office.

More Divisionals After Refusal?

An interesting aside is that it appears G1/09 is gaining ground. The document prepared for the Administrative Council stated:

This practice [of filing divisional applications before oral proceedings], though, has lost most of its basis since the Enlarged Board of Appeal issued its decision G 1/09 on 27 September 2010, in which it came to the conclusion that a European patent application which has been refused by a decision of the Examining Division is thereafter still pending within the meaning of Rule 25 EPC 1973 (current Rule 36(1) EPC) until the expiry of the time limit for filing a notice of appeal.

Consequently, applicants may file divisional applications after refusal of the parent application, without the need to resort to precautionary filings before oral proceedings

These “zombie” divisional applications always gave me the creeps – I would prefer to file before refusal. It will be interesting to see whether the practice of filing divisional applications in the notice of appeal period will now increase.

This sneaked under my radar so I will post it here. The European Guidelines for Examination are now revised annually. The most recent version was issued on 20 September 2013.

Details of the updates and a link to the most recent Guidelines can be found here: – http://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20130920.html

As highlights:

A nice little trick is that there is now a “track changes” style “show modifications” checkbox on the HTML Guidelines site. This shows the recent edits.

Just be careful: if you refer to a PDF copy, it would be easy to slip up by looking at the wrong edition. My tip is to use the HTML where you can.

Another one of those lacuna in European design law (yay!).

Under European design law the designer has a right to be cited:

Article 18 – Right of the designer to be cited
The designer shall have the right, in the same way as the applicant for or the holder of a registered Community design, to be cited as such before the Office and in the register. If the design is the result of teamwork, the citation of the team may replace the citation of the individual designers.

However, you can still file, and receive a certificate of registration for, a design where the designer is not cited. For example, the Manual for The Examination of Registered Community Designs states in section 5.2.4:

“The citation and the waiver or the absence of any indication regarding the designer(s) is merely optional and is not subject to examination”.

The question is, then: what could happen under national design law if designer information was omitted?

Having a quick look at the commentary the jury would appear to be out.  The Community Designs Handbook states in section 4-051 that one possible remedy is:

“an amendment at the behest of the designer”.

and that it is:

“safest to name the designer where possible”

with an eye to US design rights where the designer must be named.

Under UK Design Law a designer does not need to be named (in fact there is no mechanism to do this). So in the UK at least, as long as the ownership of the design is clear, there would appear to be no consequence if designer information was omitted. Whether this applies across other European countries though is unknown. If any Design Attorneys in other European Countries have any observations please feel free to add them to the comments.

[Of course: this discussion is independent of one on ownership, which is assumed to be taken care of here. This is a separate important factor that needs to be checked carefully.]

One of my little bugbears is that the European rules (R.49(6) EPC) require a page number to be located at the top of a page:

Rule 49(6) EPC – All the sheets contained in the application shall be numbered in consecutive Arabic numerals. These shall be centred at the top of the sheet, but not placed in the top margin.

whereas the Patent Cooperation Treaty (PCT) rules (Rule 11.7 PCT) allow a page number to be placed at the top or bottom of a page:

11.7 Numbering of Sheets

(a) All the sheets contained in the international application shall be numbered in consecutive Arabic numerals.

(b) The numbers shall be centered at the top or bottom of the sheet, but shall not be placed in the margin.

This becomes annoying when you have to file translations or amendments at the European Patent Office (EPO), as these should follow European rules.

This means I often find myself needing to swap from bottom page numbers to top page numbers.  This is fine when you have a Word document  but trickier when all you have are PDF documents. However, there is a trick to swap from bottom to top page numbers.

  1. Open the PDF document.
  2. In Adobe 9 – go to the top menu – ‘Document’ > ‘Header & Footer’ > ‘Add…’. Add header
  3. Add a top header with a central page number. As the page number needs to be outside the top margin, the top margin needs to be set to at least 2cm (0.8 inches). The font size should be at least 12. Check the preview and click OK.Add header options
  4. Now to remove the existing bottom numbers. Using the top menu add another header/footer. Add header
  5. Don’t replace the existing header – click Add New.
  6. Now here comes the trick – select a ‘full block’ character using Character Map (a Windows system tool). Change the text colour to white and select a largish font size (e.g. 20+). Now copy a few of the ‘full block’ characters to the center footer. Then adjust the size of the bottom margin so the ‘full block’ characters obscure the existing page number.add new footer
  7. There you go – now compliant with European practice. To ‘fix’ the changes ‘print’ the PDF file (e.g. using the EPO-supplied Amyuni PDF printer). If you save the header and footer settings you can recall them easily.

[Bonus tip: On Adobe Acrobat X (10) they have irritatingly moved most of the top menu options to a right-hand-side “Tools” menu. Use this to select header-footer options as below.]

Adobe X

Last time we looked at how certain legal processes could benefit from automation. Today we will identify some patent process examples.

This post (and the others in the series) may be useful for:

  • Patent attorneys wishing to automate their processes;
  • Software developers looking to develop legal products; or
  • Those who are interested in how patents work.

First let us have a look at a “vanilla” patent application. The process of applying for a patent looks something like this:

20131001-071717.jpg
The colour-coding is as follows:

  • Grey process blocks are performed in relation to a patent office (e.g. European Patent Office).
  • The blue documents are typically prepared by a patent attorney.
  • The green documents are prepared and issued by the patent office.

For now we will concentrate on the central blocks. Much of a patent attorney’s day-to-day work consists of reporting documents issued by patent offices and of preparing documents to file in response.

The search and each iteration of the examination go something like this:

20131002-184025.jpg

In my mind there are three areas in the above workflow where we could build an automated framework:

  • Initial brief review of objections by an attorney;
  • Detailed review of objections by attorney and development of a strategy to address the objections; and
  • The building of a response letter.

The reasons are:

  • To improve consistency, both for a single attorney and between attorneys;
  • To increase the chances of grant, by ensuring all outstanding objections are addressed;
  • To improve quality, by prompting an attorney for reasoning and basis;
  • To improve training, by embedding knowledge within the system and providing a guided path; and
  • To reduce stress, by providing a framework that ensures consistency and quality without requiring the attorney to remember to provide the framework; and
  • Last but not least, reduce attorney costs for clients by concentrating attorney time appropriately.

To start small, my aim is to build a web-based system for each of the three areas set out above. This system involves:

  • Creation of an XML document to store data;
  • Use of HTML forms to obtain data entered by an attorney;
  • Use of PHP to save obtained data as said XML document; and
  • Use of a letter-generation engine to generate letter text based on the XML document.

For example, a first stage may resemble the following flow diagram:

20131002-193447.jpg

The aim is that this should take no more than 10 minutes. Information is gathered that may serve as a framework for a detailed review. Also a brief review highlights anything that may need to be emphasised to an applicant (and avoids an attorney being negligent).

A web-form gathers data, which is stored as an XML document. A suggested DTD is as follows:

<!ELEMENT REVIEW (CASEREF, COMMUNICATION, COMM_DATE, OBJECTIONS)> <!-- ROOT ELEMENT-->
<!ELEMENT CASEREF (#PCDATA)>
<!ELEMENT COMMUNICATION (#PCDATA)>
<!ELEMEMT COMM_DATE (DATE)>
<!ELEMENT OBJECTIONS (OBJECTION*)>
<!ELEMENT OBJECTION (TYPE, COMMUNICATION, COMM_SECTION, APPLICATION_SECTION, LEGAL_PROVISION, REASON)>

<!ELEMENT COMM_SECTION (MAIN_NUMBER, PARA_NUMBER*)>

<!ELEMENT MAIN_NUMBER (NUMBER)>
<!ELEMENT PARA_NUMBER (NUMBER)>

<!ELEMENT APPLICATION_SECTION (CLAIM | DESCRIPTION)>

<!ELEMENT CLAIM (NUMBER)>
<!ELEMENT DESCRIPTION (PARAGRAPH+ | PORTION+)>
<!ELEMENT PORTION (START_LINE_NUMBER, END_LINE_NUMBER?, PAGE)>
<!ELEMENT START_LINE_NUMBER (NUMBER)>
<!ELEMENT END_LINE_NUMBER (NUMBER)>
<!ELEMENT PAGE (NUMBER)>

<!ELEMENT DATE (DAY, MONTH, YEAR)>
<!ELEMENT DAY (NUMBER)>
<!ELEMENT MONTH (NUMBER)>
<!ELEMENT YEAR (NUMBER)>

<!ELEMENT NUMBER (#PCDATA)>
<!ELEMENT REASON (#PCDATA)>
<!ELEMENT PARAGRAPH (#PCDATA)>
<!ELEMENT TYPE (#PCDATA)>

This results in an XML document similar to this:

<?xml version="1.0"?>
<review>
  <caseref>130929Test7</caseref>
  <communication>Article 94(3) EPC</communication>
  <comm_date>2013-09-29</comm_date>
  <objections>
    <objection entered="True">
      <type>unity</type>
      <comm_section>O</comm_section>
      <application_section>O</application_section>
      <legal_provision>O</legal_provision>
      <reason>Claims 1 and 5 do not share special technical features.<reason/>
    </objection>
    <objection entered="True">
      <type>sufficiency</type>
      <comm_section/>
      <application_section/>
      <legal_provision/>
      <reason/>
    </objection>
  </objections>
</review>

(Both are works in progress so forgive any inaccuracies.)

This generated XML document can then be used to produce a short sentence or two for a reporting letter or email. For example, something like:

The Examiner raises [No. of <objection> tags] objections: [list <objection><type> for each <objection>].

Under [first <objection><type>] ([<objection><legal_provision>]), the Examiner objections to [<objection><application_section>] on the grounds of [<objection><reason>].

Etc.

If and when instructions are received to review the communication in more detail, the XML document can be extended during the process below:
Detailed Review

Finally, the extended XML document can be processed by a letter generation engine (e.g. something built in PHP or Python) to generate text for a response letter:
Letter Generation

This is all a work in progress so I will update you as I develop more. Any additional ideas or comments, please add them below.

(PS: if you like the charts see my previous post – Drawing Patent Figures on the iPad – they were drawn quickly in Grafio while giving the kids breakfast.)

PCT Filing Tip:
If you need to change the user reference on a case with a prepared Form 101 –
– Click on the case in the file view;
– Goto File > Export > Forms (this will export as a ZIP file);
– Unzip the ZIP somewhere findable;
– Goto File > Import > XML from Folder(s) – select the folder you just unzipped.

You should then get a chance to enter a new reference and the previous documents should be imported. (I think it also works by exporting as XML to Folders).