Issue 05/68 | December 30, 2005
Local & International Patent Notes

Korea to Be ISA/IPEA for US-PCT Applicants

Starting January 1, 2006, the Korean Intellectual Property Office (KIPO) will be available as an international searching and examining authority for international applications filed with the USPTO under the Patent Cooperation Treaty (PCT). According to the USPTO website, "The agreement will allow applicants additional flexibility to choose a given international authority based on the technology disclosed in the international application, speed of services provided and cost of obtaining searches and examination of international applications."

An applicant designating KIPO as the International Searching Authority (ISA) will pay a search fee of $218 instead of $300 or $1000, as applicable if the USPTO is the ISA. An applicant designating KIPO as the International Preliminary Examining Authority (IPEA) will pay an international examination fee to KIPO equivalent of $218 instead of $600 or $750, as applicable if the USPTO is the IPEA. Applicants filing international applications with the USPTO may, generally, also elect to have them searched and/or examined at the European Patent Office.

Canadian Industrial Designs Now Online

On December 6, 2005, the Canadian Intellectual Property Office (CIPO) announced the launch of the new Canadian Industrial Designs Database. Canadian industrial designs are now available on the web.

The initial phase includes approximately 10 000 designs registered as of June 15, 2002. New registrations will be added on a weekly basis. CIPO is currently in the process of completing the electronic back capture of the designs registered prior to this date and they will be added in Spring 2006.

Questions on Multiple Priority Claims in the EPO

A novel theory of "exhaustion" of priority rights is found in an isolated European Technical Board of Appeal decision from April 2005 that denies priority to a second European application where a first European application claims priority to the same foreign parent application, even though both European applications are filed within one year of the foreign parent. According to the IPKat in July 2005:

The EPO Board of Appeal caused much consternation with its decision T0998/99 (OJ EPO 4/2005, 240), stating that "Article 87(1) EPC does not provide for the possibility of filing several applications in respect of the same subject matter and therefore of the same invention in one and the same country over the priority period on the basis of a single priority document" (headnote 1). Most observers thought that this concept of "exhaustion of priority" was against both the letter and the spirit of the priority provisions of the EPC and the Paris Convention.

Fortunately, a recent decision T 0015/01-3.3.4 (relating to EP 0587780), restores sanity and states that: "The board concludes that the priority system of the EPC allow patent applicants to claim and enjoy the same priority right in more than one European application. The doctrine of exhaustion of priority rights is to be rejected."

A referral to the Enlarged Board of Appeal was considered, but rejected for the rather odd reason that "the board is not aware that the doctrine of exhaustion of rights has ever been applied or explicitly addressed in the first-instance practice of the EPO, or, with the exception of the of decision T 998/99, in the case law of the boards of appeal".

Although the IPKat notes that future boards of appeal can choose which decision to follow, Dr. Holger Glas, Dr. Andreas Dilg, and Ignaz Gall, of Maiwald Patentanwalts GmbH (http://www.maiwald.de/), in Munich, Germany suggest in an APLF Update on December 19, 2005 that

"For the time being, to be on the safe side, special care should be taken when claiming priority in proceedings before the EPO. Smart filing strategies might include filing multiple priority-establishing applications or filing Divisional Applications. Moreover, T 998/99 might even be advantageous for the opponent in Opposition Proceedings to attack the effective date of an European Patent in dispute."

USPTO Seeks Comments on Eligible Subject Matter Guidelines

On December 20, 2005, the United States Patent and Trademark Office (USPTO) requested comments from the public regarding its interim examination guidelines in used by USPTO personnel to determine whether the claims in a patent application are directed to patent eligible subject matter. Comments should be sent by electronic mail message over the Internet addressed to AB98.Comments@uspto.gov. To be ensured of consideration, written comments must be received on or before June 30, 2006. No public hearing will be held.

According to the notice, the USPTO is particularly interested in comments addressing the following questions:

  1. Is the distinction between physical transformation and data transformation appropriate in the context of the Patent Subject Matter Eligibility Interim Guidelines? If not, please explain why and provide support for an alternative analysis. While the Patent Subject Matter Eligibility Interim Guidelines explain that physical transformation of an article or physical object to a different state or thing to another establishes that a claimed invention is eligible for patent protection, Annex III to the Patent Subject Matter Eligibility Interim Guidelines explains that identifying that a claim transforms data from one value to another is not by itself sufficient for establishing that the claim is eligible for patent protection. Therefore, claims that perform data transformation must still be examined for whether there is a practical application of an abstract idea that produces a useful, concrete, and tangible result.
  2. Is the USPTO interpretation of State Street Bank & Trust Co. v. Signature Financial Group Inc., 149 F. 3d 1368, 47 USPQ2d 1596 (Fed. Cir. 1998), as holding that if there is no physical transformation, a claimed invention must necessarily, either expressly or inherently, produce a useful, concrete, and tangible result (rather than just be "capable of" producing such a result) either too broad or too narrow? If so, please suggest an alternative interpretation and reasons therefor.
  3. As the courts have yet to define the terms "useful," "concrete," and "tangible" in the context of the practical application requirement, are the explanations provided in the Patent Subject Matter Eligibility Interim Guidelines sufficient? If not, please suggest alternative explanations.
  4. What role should preemption have in the determination of whether a claimed invention is directed to a practical application of a 35 U.S.C. 101 judicial exception?
  5. Annex IV to the Patent Subject Matter Eligibility Interim Guidelines explains why the USPTO considers claims to signals per se, whether functional descriptive material or nonfunctional descriptive material, to be nonstatutory subject matter. Does the USPTO analysis represent a reasonable extrapolation of relevant case law? If not, please explain why and provide support for an alternative analysis. If claims directed to a signal per se are determined to be statutory subject matter, what is the potential impact on internet service providers, satellites, wireless fidelity (WiFi), and other carriers of signals?

The USPTO also notes that the U.S. Supreme Court has granted certiorari in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., S.Ct. No. 04–607 (LabCorp). See 546 U.S. ll (Nov. 2, 2005). The USPTO expects that a decision in LabCorp will be rendered sometime before the end of June 2006. Since the Court's decision in LabCorp may impact the broader question of patent subject matter eligibility under 35 U.S.C. 101, the USPTO is extending the period for public comment on the USPTO's Patent Subject Matter Eligibility Interim Guidelines until June 30, 2006. The USPTO will publish a notice further extending the period for public comment on the USPTO's Patent Subject Matter Eligibility Interim Guidelines if necessary to permit the comments to take into account the Court's decision in LabCorp.

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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