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Issue 05/45 | September 15, 2005
60% Reversal Rate for USPTO Ex Parte Appeals, plus other IP news

60% Reversal Rate for USPTO Ex Parte Appeals

According to Professor Hal Wegner, "Statistics taken from the Official Gazette (on line) that were provided by Sean Passino show that nearly sixty (60) percent of ex parte patent appeals that reach a decision involve a reversal of at least one ground."

"The following overall statistics are taken from the Official Gazette," writes the Good Professor, "except that the various types of remands and dismissals are lumped into one category, and the percentages for actual decisions are calculated by deduction of the remands and dismissals:"

Disposition, % of Dispositions*, [% decided cases]
AFFIRMED, 36. 6%, [40 % decided]
AFFIRMED-IN-PART, 12.6 %, [14 % decided]
REVERSED, 40.9 %, [45 % decided]
REVERSALS, 53.5 %, [59 % decided] (INC. PARTIAL)
REMANDS; DISMISSALS, 9.9 %
TOTAL, 100.0%

* Decisions to date of reporting for fiscal year 2005

WIPO Sees Silver Lining in Harmonization Failure

Failure to agree on a proposal to harmonize national patent laws by World Intellectual Property Organization members "is not necessarily the end of the world for WIPO," Francis Gurry, WIPO deputy director general, reportedly said in a press briefing at WIPO headquarters on September 7, 2005. Although the trilateral countries contribute significantly to WIPO's funding, a lack of harmonization would not have much impact on the organization's revenues, Mr. Gurry said.

According to William new writing in the September 7, 2005 issue of "I/P Watch," WIPO has been under pressure to promote a "trilateral" harmonization proposal by the European Union, Japan, and the United States, as the United States and Japan have signaled a willingness to take the harmonization effort outside WIPO. Still, differences persist between the three I/P power centers. For instance, on prior art, the United States does not recognize prior oral disclosures, while the European Patent Convention does, plus the two sides have different approaches to the treatment of applications that were previously filed but have not been published, according to an official. On the grace period, the United States offers 12 months while the European Patent Convention does not the same kind of grace period.

Mr. Gurry surmised that the real problem may be "legislation fatigue" after a decade that has seen "an orgy of policy issues" related to intellectual property rights in different international bodies, such as WIPO and the World Trade Organization, and at the regional and national levels. This is "not necessarily a bad thing," Mr. Gurry said, because it could shift the policy focus to a concrete debate about rights. "I would say it's stress caused by success, not stress caused by failure," he said.

The increased attention to intellectual property issues has led to a two-sided policy debate: rights holders targeting piracy and technology, and consumers seeking greater flexibility from strict measures. But those perspectives may converge once the "clouds of ideology" are cleared away, Mr. Gurry argued, as those who do not want encroachment on the public domain may recognize that accomplishing this begins with a better system for intellectual property protection.

English Translations of I/P Laws

As part its activities to assist developing countries primarily in Asia and the Pacific Rim improve their industrial property systems, the Japanese Patent Office has site provide the texts (both in English and Japanese) of the industrial property laws and regulations in effect in various industrialized and developing countries. According to the JPO website:

We hope that the governments of developing countries use this site to refer to the legal systems of other countries in order to establish, revise, or contribute to their own industrial property laws. At the same time, we hope that those who apply for the acquisition of industrial property rights in other countries profit from the information contained in this site. Please note that the translations of the texts and of the other information contained in this site are not official, and examining the original texts of the laws of the countries concerned is advised.

If you are interested in discussing any of the above notices or staying current with the latest USPTO happenings, contact William F. Heinze (bill.heinze@tkhr.com) at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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