The Dolcera Blog

What is the PCT?

The PCT is an international treaty which provides a system for filing patent applications and allows you to obtain patents in multiple countries around the world on the basis of a single patent application.

The PCT simplifies the procedure for obtaining patent protection in many countries, making it more efficient and economical for:

(1) users of the patent system (applicants and inventors); and

(2) national Offices.

While the PCT simplifies the patent filing process for you, the ultimate decision to grant a patent rests exclusively with each national or regional patent Office.

PCT Contracting States

The PCT was signed in June 1970, in Washington, D.C., and became operational in June 1978 with 18 Contracting States. The terms Contracting State, PCT country and PCT Member State, are all used interchangeably to identify countries which are party to the PCT system. The PCT now has 141 Contracting States, providing you with near worldwide patent filing coverage. Please consult the website for an updated list of Contracting States.

Role of the International Bureau of WIPO

The staff of WIPO, generally referred to as the International Bureau, is responsible for the international coordination and management of the PCT system. This includes the review, communication, processing and publication of PCT applications and associated documents received by WIPO. In addition to these responsibilities, WIPO also provides regular advice and assistance to PCT Member States, applicants and other interested parties on the advantages and operations of the PCT system.

WIPO regularly promotes and raises awareness of the PCT with a wide range of users, i.e., IP Offices, universities, industry, R & D institutions, attorneys, and the general public, by holding seminars, training courses and similar events on the PCT system in locations around the world.

Why Use the PCT

The PCT is a cornerstone of the international patent system. It provides you with a worldwide system for the simplified filing of patent applications that:

• brings the world within reach;
• postpones major costs and provides you with additional time to consider your various patenting options;
• provides a strong basis for patenting decisions; and
• is used by the world’s major corporations, universities and research institutions when they seek international patent protection.

Brings the World within Reach

A single PCT application has the same legal effect as a national patent application in each of the PCT Contracting States. Without the PCT, you would have to file a separate patent application in each country of interest to you. For a 30-page patent application, the PCT would save you the time, effort and expense of preparing separate applications in various languages containing in total over 4,000 pages. (4,000 is an approximation of the number of pages if an application were to be filed in the separate Contracting States).

Cost and Time Advantages

A major feature of the PCT system is that it delays (and in some cases saves) various costs associated with obtaining patents on a global scale.

In addition to delaying costs, you also benefit from additional time to:

• further develop or market your invention;
• consider and explore your various patenting options;
• find investors, partners and secure funding; and
• investigate the commercial possibilities of your invention.

Translations, National Fees, Agent/Attorney Fees

The initial patenting costs that would be deferred are:

• translations of the patent application (which are highly technical documents) into various national languages;
• official fees charged by national or regional patent Offices; and
• fees for the services of local patent agents or attorneys

Cost Deferral Compared to the Traditional Patent System

If you were to use the traditional patent system, that it is to say, by filing separate patent applications in each country of interest to you, you would incur a significant portion of your patenting costs within one year from the date you filed your local (first) patent application.

In contrast, under the PCT, you have up to 30 months from the priority date to incur the majority of the patenting costs, representing 18 months of additional time when compared to the traditional patent system.

The PCT – Overview of the Process

The PCT process is comprised of the following main steps:

First Patent Application

(1) Filing of a local patent application (in the majority of cases)

International Phase

(2) Filing of a PCT application

(3) International search report (ISR) and written opinion

(4) International publication

(5) Optional supplementary international search

(6) Optional international preliminary examination

National Phase

(7) Processing of the PCT application (2) before national and/or regional patent Offices

Filing of a Local (First) Patent Application

The timeline provides you with a graphical representation of the PCT procedure and sequence. Each description is linked to the red highlighted sequence of events.

Typically, you would prepare your first patent application and file it with your national or regional patent Office. This patent application is commonly referred to as your local application and when in completed form, contains the following elements:

(1) A request (or petition)

(2) A description (also referred to as specification)

(3) One or more claims

(4) An abstract

(5) One or more drawings (where necessary)

Filing of a PCT Application

Based on the contents of your local (first) patent application you would then prepare and file your PCT application. You have up to 12 months from the filing date of your local (first) application to file your PCT application with the receiving Office of your national or regional patent Office. You may also file your PCT application directly with the receiving Office of WIPO if permitted by the national security provisions in your national law. Your PCT application has the same effect as a separate application filed in each PCT country.

International Search Report (ISR) and Written Opinion of the ISA

Each PCT Member State has selected at least one International Searching Authority (ISA) to perform international searches and to establish written opinions for its applicants, referred to in PCT terms as the “competent” International Searching Authority. You will receive, at around 16 months from the filing date of your local application, an international search report (ISR) and a written opinion from a national or regional patent Office that has been appointed as an International Searching Authority (ISA) under the PCT. The ISR will contain citations of patent documents and other technological references relevant to the patentability of your invention. The written opinion complements the ISR by providing a preliminary non-binding patentability assessment of your invention taking into consideration the references contained in the ISR.

International Preliminary Report on Patentability

After having considered the written opinion of the ISA, you may decide not to continue with the assessment of your PCT application and not file a demand for international preliminary examination. In this case, WIPO will attach a cover sheet to this written opinion effectively converting it into the international preliminary report on patentability. The international preliminary report on patentability is available for public inspection 30 months after the priority date of your PCT application (the date of your first-filed local patent application).

International Publication

The International Bureau of WIPO publishes your PCT application on PATENTSCOPE® shortly after 18 months from the priority date of your PCT application. Publication serves to provide technical disclosure of your invention which helps fuel greater technological progress and development.

(optional) - Supplementary International Search

You also have the option of requesting that a supplementary international search be conducted on your PCT application. The request from supplementary international search may be filed anytime prior to the expiry of 19 months from the priority date. The supplementary search is completely optional but may be of interest in cases where a more complete overview of the prior art is desired, particularly in respect of specific languages.

The supplementary international search service is not available across all International Searching Authorities. Those offering this service do so against the payment of a fee.The supplementary international search report prepared by the International Searching Authority should be available by 28 months from the priority date.

(optional) - Filing of a Demand for International Preliminary Examination

This part of the PCT procedure is optional. If you are not entirely satisfied with the contents of the written opinion, you may decide to continue the assessment of your invention under the PCT by filing a demand for international preliminary examination with a national or regional patent Office that has been appointed as an International Preliminary Examining Authority (IPEA) under the PCT. Each PCT Member State has appointed at least one IPEA to perform international preliminary examinations for its applicants, referred to in PCT terms as the “competent” IPEA.

You have at least 22 months from the priority date of your PCT application to file your demand with the competent IPEA

International Preliminary Report on Patentability

At about 28 months from the priority date, the IPEA will send you an international preliminary report on patentability (Chapter II) containing the opinion of the IPEA for national or regional Offices to use in assessing the patentability of your invention. This report is a non-binding opinion on patentability and is only provided to applicants who have filed a demand for international preliminary examination as described above.

Entry into the National Phase

Entry into the national phase represents the end of the international phase of the PCT procedure and the beginning of the national patent grant procedure. The international preliminary report on patentability (either under Chapter I or Chapter II), which you received during the international phase of the PCT procedure, will help you evaluate your chances of obtaining a patent in the countries of interest to you. The international preliminary report on patentability also provides guidance to each national or regional patent Office on whether a patent should be granted for your invention.

Once in the national phase, your patent application is subject to the patent laws, regulations and practices of each country. Rejections on form and content may not be raised provided that they conform to the requirements of the PCT.

Since its adoption in Washington in 1970, the PCT has enjoyed great success and continued growth. It has a near global membership of 139 Contracting States with millions of inventors, big and small, who fuel the world’s technological advances through the use of the PCT and national patent systems.

The PCT has revolutionized the way in which patents are obtained throughout the world. The search and examination reports, cornerstones of the PCT system, provide you with valuable information on which you can base your business and patenting decisions. The time delay feature of the PCT preserves your patent options, delays costs, giving you additional time to obtain financing and assess commercial, licensing and partnership opportunities.

The PCT helps you obtain patents for your inventions. It is the Smart Patenting Solution – your best option for obtaining patents on a global scale.

–Ashok–

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In continuation to my previous post on Michael Jackson’s patent.

http://blogs.dolcera.com/blog/2009/06/26/michael-jackson-patent-on-”method-and-means-for-creating-anti-gravity-illusions”-while-dancing/

After coming to know that Michael Jackson’s Patent was granted in 1993 (US Patent No. 5,255,452) for new design of shoes used for anti-gravity lean used in the music video for “Smooth Criminal”, I was curious to know what happened to the patent…. is it still in force..? or licensed by someone…?

Yesterday (July 2^nd 2009), there was a news report in “USA TODAY” saying that Jackson’s patent was expired in 2005. The reason is that the government maintenance fee was not paid to keep the patent in force. The news paper further says that ‘’ Despite his fame and fortune, Jackson claimed ‘small entity status’ in his patent application, which as a small-business employer entitled him to pay one-half the regular fees”.

We searched the file wrapper in USPTO PAIR to get the idea of transaction history. The details are as follows.

The assignee for this patent is TRIUMPH INTERNATIONAL INC (Los Angeles, CA).The brands owned by this company ‘once’ included pre-recorded phonograph records, audio tapes, compact discs, videotapes, and motion picture films featuring music and entertainment of ‘Michael Jackson’. Source

It was believed that Michael Jackson had cancelled his license agreement with Triumph international Inc in 2003 Source. He was busy with controversial cases during this period. These could be the possible reasons as for why the maintenance fee was not paid and the patent got expired.

- Ajay Kumar

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Recently, U.S. state of Mississippi settled an antitrust suit with Microsoft Corp for $100 million on Thursday and said businesses, individuals, schools and local government were eligible for a share of the money. Apart from antitrust suit Microsoft was also ordered to pay $521 million to Eolas Technologies, $200 million to a Canadian software firm i4i Ltd and much more to many more companies for patent infringment and offcourse these are all lost battles by Microsoft. Here is the current list of all patent under litigation.

• US5369702 – TECSEC Incorporated – Distributed cryptographic object method
• US6374289 – Backweb Technologies, Ltd. – Distributed client-based data caching system
• US6542814 – Horizon Navigation, Inc. – Methods and apparatus for dynamic point of interest display
• US6195662 – Juxtacomm Technologies Inc. – System for transforming and exchanging data between distributed heterogeneous computer systems
• US6405368 – Method for separate compilation of templates
• US7496854 – Arendi Holding Limited – Method, system and computer readable medium for addressing handling from a computer program
• US6405368 – Method for separate compilation of templates
• US7363592 – Tool group manipulations

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The objective and target of any organization is growth at 45 degree on x & Y axis through best products, best services etc… with latest innovations. Ever since recession has hit the western market the economy and jobs are melting like never before, chapter 11 filing cases are increasing. After all to run an organization revenue has to be generated. As newspapers across North America and the globe continue to flood with stories of economic downturn and businesses fighting to survive, organizations this month are placing a renewed focus on innovation and revenue generation.

Revenue generation through patent lawsuits is the new trend. 35 patent lawsuits have been filed just in 5 plus month time during 2009, wonder how many more are there. Surely first half of 2009 is not good for Google in terms of lawsuits, total 14 lawsuit are been battled.

Lawsuit filing cases of 2009:

1. Aloft Media, LLC v. Yahoo! Inc. et al
2. Performance Pricing, Inc. v. Google Inc. et al
3. Leader Technologies Inc. v. Facebook Inc.
4. Actus, LLC v. Bank of America Corp. et al
5. Paid Search Engine Tools, LLC v. Google, Inc. et al
6. ESN LLC v. Cisco Systems, Inc. et al
7. Heartland Recreational Vehicles LLC v. Forest River Inc
8. Software Rights Archive, LLC v. Google Inc. et al
9. Northeastern University et al v. Google, Inc.,
10. Polaris IP, LLC v. Google Inc. et al
11. Function Media, L.L.C. v. Google, Inc. et al
12. Aloft Media, LLC v. Google, Inc.
13. GraphOn Corporation v. Google Inc.
14. Google, Inc. v. EMSAT Advanced Geo-Location Technology, LLC et al
15. Picsel (Research) Ltd. et al v. Apple Inc.
16. Web Tracking Solutions, Inc. et al v. Google, Inc.
17. Association For Molecular Pathology et al v. United States Patent and Trademark Office et al
18. Cygnus Systems, Inc. v. Microsoft Corporation, et al
19. Google Inc. et al v. Egger et al
20. Certicom Corporation et al v. Sony Corporation et al
21. Klausner Technologies Inc v. Verizon Wireless et al
22. Clark v. The Walt Disney Company et al
23. HYPERPHRASE TECHNOLOGIES, LLC v. GOOGLE INC.
24. BabyAge..com, Inc. v. Leachco, Inc.
25. IP Innovation LLC et al v. Google, Inc.
26. Elan Microelectronics Corporation v. Apple, Inc.
27. Bid for Position, LLC v. AOL, LLC et al
28. Soilworks LLC v Midwest Industrial Supply Inc
29. Priest et al v Google Inc.
30. 21 srl v. Apple Inc. et al
31. PACid Group, LLC v. Apple Inc. et al
32. Accolade Systems LLC v. Micron Technology Inc et al
33. Affinity Labs of Texas, LLC v. Apple, Inc.
34. Clear With Computers, LLC v. Bassett Furniture Industries, Inc. et al
35. Motorola Inc v. Research In Motion Limited et al

Posted in Power of Patent. Tags: Apple, bankruptcy, chapter 11, economy downturn, facebook, Google, innovation, intellectual property, IP innovation, Jobs, Lawfirm, microsoft, North America, patent, patent attorney, patent infringement, Patent invalidation, Patent lawsuits, recession, revenue generation, USPTO.

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Finally the Bilski case has gone to US Supreme Court. “Not since 1981 has the Supreme Court undertaken to spell out the kinds of inventions that are eligible for patent rights — that is, the right to produce or use an invented device or process, or to license it to others for royalties. Much has changed since the Court’s decision in Diamond v. Diehr in 1981, not least the digital revolution.”

A study was conducted on the effect of Biliski in various technology patents by an IP, technology and market research company called Dolcera.
Detailed report and statistics have been published at Dolcera Public Reports

The below chart depicts the effect of Biliski on various technology domains.

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Red Hat Inc. and Novell Inc. are being sued by IP Innovation LLC. and Technology Licensing Corp. for patent infringement. The court filing claims that Novell and Red Hat infringed on the plaintiff’s patent for User Interface with Multiple Workspaces for Sharing Display System Objects as well as two other similar patents. This is the first patent infringement lawsuit involving Linux.

According to the lawsuit filed with the U.S. District Court for the Eastern District of Texas, Novell and Red Hat are accused of infringing on the patents by selling the Red Hat Linux system, the Novell SUSE Linux Enterprise Desktop, and the Novell SUSE Linux Enterprise Server. IP Innovation LLC. and Technology Licensing Corp. further further contend that the defendants “deliberately and willfully” infringed on the patents, stating that the defendants were previously notified of the infringement.

IP Innovation LLC. and Technology Licensing Corp. are seeking an injunction from the District Court plus damages including other relief that the court might find proper. Novell withheld comment until their attorneys could further review the court filing.
Red Hat Inc and Novell Inc are accused of violating three patents.

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Mumbai, May 18 The Council of Scientific and Industrial Research (CSIR) has received a United States patent on an innovative process to make sevelamer, a generic polymer that treats toxic excess of phosphate in the body caused by chronic renal failure.

The patent is a culmination of work done by CSIR’s constituent lab in Pune, the National Chemical Laboratory, on a mandate initially given by Mumbai-based drug company USV Ltd.

USV had acquired the patent rights from CSIR last year, following which it further undertook the prosecution of the application.

Dr Kulkarni’s team developed the alternative process that received the patent.

As per the agreement, USV had the first right to license the know-how and acquire the patent rights, and USV exercised this option.

USV had approached NCL in mid-2003 to develop an innovative process to manufacture the polymer. NCL developed the process and CSIR filed the patent application in India, and the US.

NCL’s scientists developed a cost-effective process to manufacture sevelamer, the phosphate-absorbing polymer. The process NCL reduces the manufacturing time and the process chemicals requirements and is easy to scale up. USV has made a one time payment, and no further milestone payments are involved, he said, citing confidentiality for not giving details.

This development is significant as a technologically novel process received a US patent and has been found commercially attractive by a pharma company.

The recent patent success comes against the backdrop of the Centre’s efforts to get more public-funded institutions to file patents and work with the industry to commercialise research efforts.

With 128 patents in 2006-2007, the CSIR accounts for about 47 per cent of the total US patents granted to Indians, excluding non-resident Indians and foreign assignees, said Mr R.K. Gupta, Head of CSIR’s IP Management Division.

Final patent

The final patent on the CSIR-developed innovative polymer will be issued by the US Patent Office in approximately four months, said Pharmaceutical Patent Attorneys, LLC, the New Jersey-based firm who prosecuted the patent for its Indian client.

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Here’s a cool use for a phone that has both cellular broadband and Wi-Fi: Turn it into a mobile Wi-Fi hotspot so your friends can surf the Internet on their laptops.

A couple startups have created and made available software like this in the last year. But a more established software maker said Wednesday that it has created a package for carriers to offer their customers.

TapRoot Systems Inc. of Research Triangle Park, N.C., said it was talking with carriers about providing their customers with the software, which would let up to five Wi-Fi users connect to a phone.

A possible free trial version would let only one Wi-Fi user connect to the phone at a time.

The software works on phones with Windows Mobile or Symbian S60 software. Windows phones are common in the U.S., while Symbian is championed by Nokia Corp. and more common in Europe. There already is an independent program called WMWifirouter that turns Windows phones into hotspots, and there’s one called JoikuSpot for Nokia phones.

Capacity is limited on third-generation cellular broadband networks, and carriers are somewhat restrictive of the applications they allow, for fear their networks will be overwhelmed.

TapRoot’s system attempts to assuage that fear by letting carriers control access through a server, said Chief Executive Bob Bicksler. The carriers could then charge extra for the service, he said.

Not many phones have both 3G and Wi-Fi. U.S. carriers have in some cases removed or disabled Wi-Fi antennas for the U.S. launches of some phones by overseas manufacturers, apparently because they fear customers would be less likely to pay for 3G. However, combined Wi-Fi and 3G phones are becoming more common.

Bicksler mentioned AT&T Inc.’s Tilt and 8525 models and Sprint Nextel Corp.’s Mogul by HTC as phones that would work as mobile hotspots.

Another way of using a 3G network to create a Wi-Fi hotspot is to buy a Wi-Fi router that accepts a cellular broadband card. Cisco Systems Inc. makes such a router for the Sprint network.

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Honeywell International has accused four Japanese firms and their U.S. subsidiaries of infringing its patents.
Honeywell accused the Japanese companies for infringing patents on automotive display and navigation systems.

• Alpine Electronics
• Denso Corporation
• Pioneer Corporation
• Kenwood Corporation

The four companies all have U.S. subsidiaries that are also named in Honeywell’s request for an investigation.

The commission has been a popular venue for patent infringement suits because, unlike other courts, it can bar products made with infringed technology from importation.

According to Honeywell Aerospace spokeswoman Cathy Gedvilas, “Honeywell continues to invest substantial resources in the design, development and manufacture of navigation systems and equipment . This action will protect against the unauthorized use of our patented technologies”.

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Apple Inc. is being sued by Klausner Technologies that has claimed that Apple iPhone has infringed on the Klausner patent for visual voice mail. Klausner is seeking $360 million in compensation and damages for its patent numbers US5572576 and US5283818 which basically describe a system that allows for the visual retrieval and sorting of voice mail by way of a display.

Patent #: US5572576
Title: Telephone answering device linking displayed data with recorded audio message
Assignee: Klausner Patent Technologies
Filind Date: March 15, 1994
Abstract: A telephone answering device (TAD) which includes a means of intelligently organizing voice messages, associated entered codes such as personal IDs and home telephone numbers, and information stored in the memory of the TAD. These codes or numbers are decoded by means of the caller entering DTMF signals into the telephone which are recognized, recorded and processed by the TAD. When processed with codes and personal information previously entered into the device’s memory, the TAD displays the identity of the callers for each message, thus providing a menu of choices, i.e., a list of callers. This enables the user to access messages in a selective manner based on the identity of the caller. The need to listen to the actual voice messages to determine the caller’s identity and the need to listen to the messages sequentially or chronologically is obviated, saving both time and effort. Additionally, because the voice message is also linked to pre-stored additional data in the data base, when hearing a message, one also can view relevant associated information, such as a fax number, etc., that might not have been left in the audio message but might be important. A remote access device is also provided that allows the user to retrieve and display the callers’ identities and select a message to be played back from a remote location.

Patent #: US5283818
Title: Telephone answering device linking displayed data with recorded audio message
Assignee: Klausner Patent Technologies
Filind Date: March 31, 1992
Abstract: A telephone answering device (TAD) which includes a means of intelligently organizing voice messages, associated entered codes such as personal IDs and home telephone numbers, and information stored in the memory of the TAD. These codes or numbers are decoded by means of the caller entering DTMF signals into the telephone which are recognized, recorded and processed by the TAD. When processed with codes and personal information previously entered into the device’s memory, the TAD displays the identity of the callers for each message, thus providing a menu of choices, i.e., a list of callers. This enables the user to access messages in a selective manner based on the identity of the caller. The need to listen to the actual voice messages to determine the caller’s identity and the need to listen to the messages sequentially or chronologically is obviated, saving both time and effort. Additionally, because the voice message is also linked to pre-stored additional data in the data base, when hearing a message, one also can view relevant associated information, such as a fax number, etc., that might not have been left in the audio message but might be important.

There are several other companies that have paid Klausner to license these technologies mentioned in these patents including AOL which is featuring the technology in its AOL Voicemail service. Vonage also pays for the use of this technology for its Voicemail Plus service. Thus far, Apple and AT&T have not made any comment on this issue.

Klausner is also filing against Comcast for their Digital Voice Mail, Cablevision for its Systems’ Optimum Voicemail, and Ebay’s Skype. The second suit filed in a different court on the same day seeks $300 in damages for patent infringement. Klausner Technologies is an avid patent seeker and was founded by Judah Klausner who invented and patented the PDA and electronic organizer. Klausner has been well known for its aggressive patent mongering.

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