EPO: Unjustified Threats Bill; What is it?

Author: Hazel Ford Ph.D., Paul Roscoe
Editor: Adriana L. Burgy

Provisions exist in the United Kingdom to prevent unjustified threats of legal action relating to infringement of patents, designs and trademarks. The provisions were originally conceived with the intention of stopping the holder of an IP right from damaging a person’s business by threatening their customers or distributors with an infringement action of the IP right. The current provisions, however, are inconsistent across different forms of intellectual property and are worded such that an innocuous communication from an IP rights holder may be interpreted as an actionable threat. This results in an increased risk of litigation proceedings between the parties. This is contrary to the overriding principle enshrined in the UK’s Civil Procedure Rules, which encourage pre-action correspondence and negotiation in order to ensure that disputes are dealt with at proportionate cost.

The UK’s government issued a draft Bill setting out proposals to address some of these issues. The Intellectual Property (Unjustified Threats) Bill 2016 would update legislation relating to unjustified threats to provide greater consistency and clarity.

For example, the Bill proposes positive definitions for “permitted communications” to provide a safe harbor to allow rights holders to communicate with potential infringers, without running the risk of a threats action. In this way, parties should find it easier to comply with the Civil Procedure Rules by exchanging information prior to the start of any litigation.

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Prosecution First Blog Pointer

If there is a material error made by the USPTO in publishing a patent application, one has two months from the publication date to request republication without a fee. If the applicant is willing to provide an EFS copy and pay the $430 republication fee, there is no time limit to request republication.

DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.

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USPTO Seeks Your Input on the Future of IDS Practice

Author: Michelle Pacholec Ph.D.
Editor: Stephanie M. Sanders

During the USPTO’s September 13th Patent Quality Chat, the Office provided additional details regarding its announcement that it is seeking to implement a program that will alleviate applicants’ burden in bringing references cited in related applications to the attention of the Office. As we previously reported, the USPTO is exploring how to best utilize available electronic resources to automatically provide examiners with access to information (e.g., prior art, search reports, etc.) from related applications with the aim of increasing patent examination quality and efficiency. Related applications might include, for example, domestic child or parent applications and foreign counterparts.

In particular, the USPTO highlighted the potential use of Global Dossier, which currently permits the sharing of filewrapper information across the world’s five largest patent offices (USPTO, JPO, EPO, SIPO, and KPO) to the public and to examiners in each office. The Office suggested, for example, that search and examination information created by a foreign office could automatically be imported into a pending related U.S. application, giving Examiners early and immediate access to potentially relevant prior art. Although this initiative is still in the exploratory phase, if implemented, such a program could represent a significant reduction in applicant burden and expense. When asked whether this proposed system could extend to domestic applications being prosecuted in parallel by the same applicant, though the applications are not within the same family, the USPTO stated that was also a topic for consideration.

The USPTO also stated that it is considering removing the listing of “References Cited” from the front page of patents. This information can easily be accessed electronically, noted Deputy Commissioners Powell and Bahr, and removing it, perhaps along with other front page information, would streamline the issuance process.

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Should the Extended Missing Parts Pilot Program be Extended Indefinitely?

Author: Shing-Yi (Cindy) Cheng Ph.D.
Editor: Stephanie M. Sanders

In its September 6th Federal Register Notice, the USPTO has requested public comment on whether it should make the Extended Missing Parts Pilot Program permanent. The USPTO implemented the Extended Missing Parts Pilot Program on December 8, 2010. Under the pilot program, an applicant can request a 12-month time period to pay certain government fees when filing a nonprovisional patent application. These fees are the

  • search fee,
  • examination fee,
  • any excess claims fees, and
  • the surcharge (for the late submission of the search fee and the examination fee).

To qualify for participation in the program, the following conditions must be satisfied:

  • the applicant must submit a certification and request to participate in the Extended Missing Parts Pilot Program with the nonprovisional application on filing using form PTO/AIA/421,
  • the application must be an original (i.e., not a Reissue) nonprovisional utility or plant application filed within the duration of the pilot program;
  • the nonprovisional application must directly and properly claim the benefit of a prior provisional application filed within the previous 12 months, and the specific reference to the provisional application must be in an ADS; and
  • the applicant must not have filed a nonpublication request.

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Provisional applications are not eligible for publication.

DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.

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