By INPI Argentina
DECTO-2019-403-APN-PTE – Decree Nº 260/1996 Amendment.
City of Buenos Aires, 6/5/2019
BY VIRTUE OF File Nº EX-2018-52897206-APN-DO#INPI of Law Nº 27,444 and Decree Nº 260 dated 20 March, 1996, and
That by Decree N° 260/96 the Ordered Text of the Law of Patents of Invention and Utility Models N° 24,481 was approved, with the amendments of Law N° 24,572, as Annex I.
That, likewise, through the above mentioned decree the Regulation of Law Nº 24,481 was approved, with the amendments introduced by Law Nº 24,572, as Annex II.
That, by Law Nº 27,444 of Simplification and Debureaucratization for the Productive Development of Nation, the amendments to the above mentioned rules were introduced.
That in order to guarantee the meeting with the objectives, it is necessary to fit the existing legal framework to the new approaches and requirements, in order to reduce the burdens on the applicants, to shorten the proceeding terms, to urge the debureaucratization in proceedings and the adoption of new management electronic tools.
That in that order, it is proposed to design a creative and innovating proceeding for the protection by the institute of the utility model, emphasizing the celerity thereof in light of the importance of the protection of innovation for entrepreneurs as well as for Micro, Small and Medium Companies.
That through the present decree, a higher quality of service supply is assured, by establishing transparent and simple proceedings, facilitating the access of public in general to the registration of intangibles, in order to perform remote proceedings before the NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY (INSTITUTO NACIONAL DE LA PROPIEDAD INDUSTRIAL (INPI)), an independent organism within the area of the MINISTRY OF PRODUCTION AND WORK.
That within this framework, it is applicable to amend Annex II of Decree Nº 260 dated 20 March, 1996.
The GENERAL DIRECTION OF LEGAL AFFAIRS of the MINISTRY OF PRODUCTION AND WORK has taken the intervention of its competence.
That the present decree is issued in the exercise of granted responsibilities to the NATIONAL EXECUTIVE POWER by article 99, item 2 of NATIONAL CONSTITUTION.
THE PRESIDENT OF THE ARGENTINEAN NATION
ARTICLE 1°.- To substitute article 12 of Annex II of Decree Nº 260 dated March 20, 1996, by the following:
“ARTICLE 12.- In order to be granted a patent, the applicant must complete, within the terms specified for each case in the Law or in this Regulation, the following information and documentation:
- a) A patent application which should include:
1) An affidavit through which a patent of invention is formally applied for;
2) Complete name of the applicant or the applicants;
3) CUIT, CUIL, CDI and nationality of applicant(s), or registration data when the case is of a legal person. In the case of a human person, the data for the identification of the spouse, when applicable;
4) Real and electronic address of the applicant/s;
5) Complete name of the inventor or the inventors, as applicable;
6) Real address of the inventor or the inventors, as applicable;
7) Title of the invention;
8) Number of patent (or patent application) for which the filed application is additional (if applicable);
9) Number of patent application for which the filed application is divisional (if applicable);
10) When the submission is performed under Law N° 17,011 (PARIS CONVENTION), data of the priority or priorities claimed in patent application: (Country, number and date of filing of foreign application or applications). In the event the applicant does not have the number of foreign priority or priorities by the moment of national application, they may be stated at any moment within THREE (3) months from the filing of national application.
Within the same term, the Application Authority may request the translation into the national language in electronic or digital format when the priority document/s are in another language;
11) Complete name and address of the institution depositing the microorganism, date of deposit and registration number assigned to the microorganism by the applicant institution, when patent application refers to a microorganism;
12) Complete name of the person or the industrial property agent authorized to proceed with patent application;
13) Identity document number of the authorized person or license number of the authorized industrial property agent or general attorney to represent the applicant;
- b) A technical description of the invention, headed by the title of the invention, in agreement with the one appearing in the application, which should include:
1) A description of technical field to which the invention belongs;
2) A description of the prior art in this matter, known by the inventor, and preferably stating the literature documents;
3) A detailed and complete description of the invention, highlighting the advantages over the known prior art, understandable to a person skilled in the art;
4) A brief description of figures included in drawings, if any.
- c) One or more claims;
- d) Technical drawings needed for the comprehension of the invention referred to in the specification;
- e) A summary of the description of the invention;
- f) Deposit certificate for the microorganism issued by the holder institution, when applicable;
- g) When a priority is claimed, the assignment document should be included along with their translation, if applicable, in electronic or digital format.”
ARTICLE 2°.- The following should be incorporated as text of article 14 of Annex II of Decree Nº 260 dated March 20, 1996:
“ARTICLE 14.- The priority right claimed at the application moment will serve as an affidavit. When requested by the NATIONAL ADMINISTRATION OF PATENTS at the substantial examination stage, the applicant will have a THREE (3)-month term to include, in electronic or digital format, the priority document or documents and the assignment documents. The Enforcement Authority may require the translation/s of the priority document/s invoked in the application any time they are not in the national language, within THREE (3) months from the date the application was filed.
The non-meeting with the requirements stated in the present article will consider the invoked priority right as cancelled.”
ARTICLE 3°.- To substitute article 19 of Annex II of Decree Nº 260 dated March 20, 1996, by the following:
“ARTICLE 19.- The applicant may submit complements, corrections and amendments, up to THIRTY (30) running days as from the date of patent application, any time this does not imply a an extension of the original application.”
ARTICLE 4°.- To substitute article 24 of Annex II of Decree Nº 260 dated March 20, 1996, by the following:
“ARTICLE 24.- After NINETY (90) running days from the patent application, the Commissioner of Patents will order the performance of a preliminary examination within a term of TWENTY (20) running days.
The application will be definitely denied if, within the term of THIRTY (30) running days counted from the notification, the applicant does not solve the comments stated by the NATIONAL ADMINISTRATION OF PATENTS in its preliminary examination. In case no response is filed within the stated term, the application will be considered abandoned.”
ARTICLE 5°.- To substitute article 27 of Annex II of Decree Nº 260 dated March 20, 1996, by the following:
“ARTICLE 27.- I.- To perform the substantial examination of the application, the following conditions should be met:
- a) The preliminary examination should be approved,
- b) The application is published in the patent bulletin,
- c) The term established in the last paragraph of article 28 of Law N° 24,481 (o. t. 1996), as well as its amendments, is met for the submission of comments from third parties; and
- d) That the substantial examination fee is paid.
II.- The substantial examination will include the following steps:
- a) Seek for antecedents. The examiner will seek to identify, as his/her judgment makes it possible or reasonable, the documents he/she considers necessary to determine if the invention is new or if it implies inventive activity. His/her seek will include all technical areas that may contain elements corresponding to the invention, and the following documentation should be checked:
1) National patent documents (patents and utility models granted or under proceeding);
2) Published patent application or patents from other countries;
3) Technical literature different from the one stated in prior items which would be pertinent for analysis.
- b) Examination. The examiner will investigate, whenever necessary and taking into account the search for antecedents, if the application totally satisfies the requirements of the Law and this Regulation.
III.- If necessary, the examiner may require:
- a) Within the term of THIRTY (30) running days from the requirement notification, a copy of the scientific documentation he considers pertinent and/or a copy of the substantial examination performed to the same invention by foreign patent offices.
- b) Specific reports related with the subject matter of the invention to investigators working at Universities or Scientific or Technological Investigation Institutes.”
ARTICLE 6°.- To substitute article 29 of Annex II of Decree Nº 260 dated March 20, 1996, by the following:
“ARTICLE 29.- When the formulated objections are not satisfactorily solved by the applicant within a term of THIRTY (30) running days, the examiner, after a founded report, will be able to suggest the NATIONAL ADMINISTRATION OF PATENTS the denial of the application. If no response is submitted by the applicant within the stated term, the patent will be denied immediately.”
ARTICLE 7°.- To substitute article 30 of Annex II of Decree Nº 260 dated March 20, 1996, by the following:
“ARTICLE 30.- If, as a result of the substantial examination, the examiner determines that the invention meets the legal and regulatory requirements to be granted a patent and, consequently, the issued comments have been satisfactorily solved, he/she will issue a report within the term of TEN (10) days a report to the Commissioner of Patents with his/her advice, who will issue a sentence within THIRTY (30) subsequent days.
Once the resolution granting or denying the granting of the letters patent is sentenced, the applicant should be duly notified.
If the resolution is negative, there will be a THIRTY (30)-day term for the submission of the resource foreseen in article 72 of Law N° 24,481 (o. t. 1996) and amendments.
The Enforcement Authority will arrange the Electronic Registry of granted Patents.”
ARTICLE 8°.- To substitute article 32 of Annex II of Decree Nº 260 dated March 20, 1996, by the following:
“ARTICLE 32.- The publication of the granting of a patent of invention and the utility model will include the following information:
- a) The number of the granted patent or utility model;
- b) The class or classes in which the patent or the utility model is included;
- c) The first and last name or the corporate name of the applicant and, if it is the case, of the inventor, as well as their domicile;
- d) The title of the granted patent or utility model which will include the specification, claims and drawings if applicable;
- e) The date for the granting of the application; and
- f) The expiration date”
ARTICLE 9°.- To substitute article 37 of Annex II of Decree Nº 260 dated March 20, 1996, by the following:
“ARTICLE 37.- Then an application of a patent of invention is assigned, the requirements established by the Enforcement Authority should be met.
The holder of a patent will, as from the granting date, be able to request the NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY to publish it as a Patent Opened to Voluntary Licensing.”
ARTICLE 10.- To substitute article 51 of Annex II of Decree Nº 260 dated March 20, 1996, by the following:
“ARTICLE 51.- The application to an obligatory license for an addition patent granted by the NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY, by founded resolution, with previous technical or economical certification of the upgrading of the invention. The resolutions sentenced within the framework of this article will be susceptible of the resources foreseen in the last paragraph of article 42 of this Regulation.”
ARTICLE 11.- To substitute article 55 of Annex II of Decree Nº 260 dated March 20, 1996, by the following:
“ARTICLE 55.- It will be considered that the invention novelty has not been broken when the applicant has disclosed the invention object of the utility model abroad within TWELVE (12) months prior to the submission of the corresponding application in ARGENTINA. The “industrial character” will be understood as “industrial application” pursuant to article 4°, item e) of Patent Law.
ARTICLE 12.- Incorporate the following as the text of article 56 of Annex II of Decree Nº 260 dated March 20, 1996:
“ARTICLE 56.- The enforcement Authority will be able to solve the utility model application, after THIRTY (30) running days from the filing date without accompanying the document stated in article 56 of Law N° 24,481 (o. t. 1996) and amendments.”
ARTICLE 13.- Incorporate the following as the text of article 57 of Annex II of Decree Nº 260 dated March 20, 1996:
“ARTICLE 57.- When de application is performed under Law N° 17,011 (PARIS CONVENTION), the applicant should include, within the term of THREE (3) months from the filing of the application, and in electronic or digital format, the priority document and the assignment document, if applicable, along with their translations in the national language. In case these requirements are not met in the stated term, the priority right will be declined.
The Enforcement Authority will be in charge of establishing the proceeding and the conditions under which the meeting with requirements contemplated in articles 53 and 55 of Law N° 24,481 (o. t. 1996) and amendments will be performed.”
ARTICLE 14.- To substitute article 72 of Annex II of Decree Nº 260 dated March 20, 1996, by the following:
“ARTICLE 72.- The submission of an appeal as established in article 72 of Law N° 24,481 (o. t. 1996) and amendments, will not grant the qualification for other administrative or judicial resources that may be pertinent by the application of the rules of Law or of Law N° 19,549, its amendments and the Administrative Proceeding Regulation, Decree 1759/72 – O. T. 2017.”
ARTICLE 15.- To substitute article 94 of Annex II of Decree Nº 260 dated March 20, 1996, by the following:
“ARTICLE 94.- The NATIONAL ADMINISTRATION OF PATENTS will be in charge of:
- a) The management, study and resolution of the applications for the granting of patents and utility models.
- b) Knowing about nullity proceedings for applications and cancellation of granted patents and utility models.
- c) Issue certificates and authorized copies of documents contained in files under its jurisdiction.
- d) Issue reports and draft statistics on the functioning, activities and performance of the office.
- e) Notify about its resolution and proceeding acts through the means determined by the Enforcement Authority.
- f) Act along with the DIRECTION OF LEGAL AFFAIRS of the NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY, for the appropriate application of international covenants on this matter.”
ARTICLE 16.- To substitute article 98 of Annex II of Decree Nº 260 dated March 20, 1996, by the:
“ARTICLE 98.- The authorization for the elaboration and marketing of pharmaceutical products should be required before the Governmental Secretary of Health of the MINISTRY OF HEALTH AND SOCIAL DEVELOPMENT, and regarding agrochemical products, before the Governmental Secretary of Agricultural Industry of the MINISTRY OF PRODUCTION AND WORK.”
ARTICLE 17.- The present decree will be in force after SIXTY (60) running days from publication in the Official Bulletin.
ARTICLE 18.- Be it communicated, published, submitted before the NATIONAL DIRECTION OF OFFICIAL REGISTRY and filed. MACRI – Marcos Peña – Dante Sica
- 06/06/2019 N° 40234/19 v. 6/6/2019
Application date 6/6/2019
Source: www.inpi.gob.arRead More
The Argentine INPI has published on 29 April 2019 Resolution 112/2019 with the objective to accelerate substantive examination of Argentine first filing patent applications.
The text of said resolution is the following:
SEEN the file EX -2019-16551501- -APN-DOINPI, of the Law of Patents of Invention and Utility Models N° 24,481 (t. o. 1996), as amended by laws Nos. 24,572, 25,859 and 27,444, and by the Regulatory Decree N° 260 dated March 20, 1996, Annex II; and
That, today, Argentina is undergoing a transformation and modernization process which aims to an economy growth based on the incorporation of local and world value chains, regarding innovation as the main axis of the productive development.
That, in this frame, the protection of innovations through the system of patents of invention and utility models fulfills a significant role in the competitiveness of firms, especially our PYMES (Small and Medium Sized Companies, from the acronym in Spanish), which invest in innovation and request to protect cash advances and inventions to be afterwards apply to an industrial development.
That this INSTITUTE is adopting several measures, starting with the reform to the proceedings of Patent Law, so that the applicants are granted all the corresponding registration with higher celerity, efficiency and quality and especially within the field of patents of inventions and utility models, being aware that the simplification of processes enhances competitiveness and has a strong impact in the saving of fees and costs to the applicant.
That, within the frame of the proposed actions, the creation of a program of Priority Patent Examination (PEP) is relevant, when the first regular application of patent is performed in Argentina.
That the Priority Patent Examination (PEP) will result in a proceeding rule to early access to a substantial examination, subject to the meeting with certain conditions, but that this does not imply any change to substantial rules of current ruling on this matter.
That the NATIONAL PATENT ADMINISTRATION and the DIRECTION OF LEGAL AFFAIRS have intervened, as applicable.
That this document is issued pursuant to the authority conferred by Article 92 item k) of Law N° 24,481, as amended by Law N° 27,444.
For this reason,
THE PRESIDENT OF THE NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY DECIDES:
ARTICLE 1°.- To create, within the frame of the National Patent Administration (ANP) the program of Priority Patent Examination (PEP).
ARTICLE 2°.- The program will be applicable to those patent application that meet the following conditions:
a) the first regular filing of patent of invention application has been performed in Argentina;
b) the application is published in the patent bulletin of this Institute;
c) the third party objection period is expired,
d) the substantial examination fee has been paid;
e) the corresponding substantial examination has not been performed;
f) no other accelerated proceeding has been required for the same application.
ARTICLE 3°.- The applicant who wants to apply to the PEP should complete the form attached as annex IF N° IF- 2019-39703985-APN-INPI#MPYT to this resolution and at the same time the following should be submitted:
a) a national and international search report issued by the Direction of Technological Information and Documentation of INPI;
b) an affidavit of not having filed the invention object of the PEP program in another patent office before;
c) in the case the applicant is a small and medium sized firm, the proof certificate therefor; and
d) the payment of the fee for the application of the present priority examination.
ARTICLE 4°.- After the requirements of the previous articles are met, the patent office will decide on suitability within SIXTY (60) running dates, as from the request date.
ARTICLE 5°.- The present program will extend for a term of three (3) years, from the enforcement of this resolution, to be extended for equal and successive periods.
ARTICLE 6°.- The present resolution will be in force after THIRTY (30) days from the date it is published in the Official Bulletin.
ARTÍCULO 7°.- Be this registered, notified and sent to the National Direction of Official Registration for publishing in the Official Bulletin for the term of (1) day, and after being met, be it published in the Patent Bulletin, with a copy in the notification board, on the web of INPI and then be it filed.
Source: www.boletinoficial.gov.arRead More
The European Patent Office (EPO), the European Committee of Standardization (CEN) and the European Committee for Electrotechnical Standardization (CENELEC) have signed recently a memorandum of understanding (MoU) to enhance the support they provide to industry and stakeholders in Europe and beyond in the field of standard-essential patents.
This is the first MoU between the organizations who will now work together to extend knowledge about the relationship between standardization and patents.
The purpose of this collaboration is to support inventors, innovators, researchers and industry on standard-essential patents (SEPs) in different areas of technology by promoting the dissemination of technical standards including relevant patented technologies. The agreement complements the established co-operation in this field between the EPO, the European Telecommunications Standards Institute (ETSI) and the European Commission.
“This agreement will help us to provide inventors and innovating businesses with information about the use of standards and patents in their field of activity,” said EPO President António Campinos. “Co-operation with standardization organizations is essential for tackling the challenges arising from the relationship between standards and patents. It will help ensure that the patent system continues to support a competitive innovation environment for businesses by delivering greater transparency on standard essential patents, as well as high patent quality.”
CEN and CENELEC Director General Elena Santiago Cid added: “CEN and CENELEC actively support the European innovation community and aim to efficiently integrate it in the European standardization system. With this objective, in 2018 we presented our Innovation Plan, which addresses the need to offer fast-track processes to bring research results to the market. The ability to reach the ambitions set out in the Plan will be enhanced by the collaboration with EPO. Together, we can support the European economy to be more competitive in the global knowledge-based economy”.
In view of the growing use of Information and Communications Technology (ICT)-related technologies in the more traditional technical fields, the ICT standards, as well as the patents considered essential for their implementation, are becoming increasingly important in this context.
Source: www.epo.orgRead More
By Marta Garcia
Since October 2014, the Chilean National Institute of Industrial Property (INAPI) has been working as a competent International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for patent applications filed under the Patent Cooperation Treaty (PCT).
Additionally, since January 1, 2018, INAPI can also issue international search reports and international preliminary patentability reports both in Spanish and English.
The following 12 Latin American and Caribbean countries have designated the INAPI as PCT ISA/IPEA: Chile, Colombia, Costa Rica, Cuba, Ecuador, El Salvador, Guatemala, Mexico, Panama, Peru, Dominican Republic and Trinidad and Tobago.
During 2018, 380 applicants — half of which were non-Chilean applicants — designated the INAPI as ISA. This shows an increase of 45% over 2017. Almost half of the patent applications designating INAPI as ISA since 2014 have been in the mechanical field.
In its role as ISA/IPEA, INAPI performed 304 international search reports and written opinions in 2018.
In its role as PCT Receiving Office (RO), during 2018 INAPI received 202 applications, 43% more than in 2017.
Currently, there are 22 Patent Offices worldwide working as PCT ISA/IPEA. In Latin America, the Chilean INAPI and the Brazilian National Institute of Industrial Property (INPI), are the two only Patent Offices to have been designated as PCT ISA/IPEA.
Source: https://www.inapi.clRead More
The European Patent Office (EPO) recently published its Annual Report 2018.
The main statistics and trends are highlighted below.
European patent applications continued to grow in 2018, reaching 174 317 applications, that is +4.6% with respect to last year.
Large enterprises filed 71% of the last year´s patent applications, SMEs, individual inventors: 20% and universities and public research organizations: 9%.
127 625 patents were granted last year (+20.8% with respect to 2017), 45% of them were granted to EPO member states, US: 24%, Japan: 17%, Korea: 5% and China: 4%.
The opposition rate in 2018 was 3.2%; the decisions in opposition cases were as follows: patent revoked: 27%, patent maintained in amended form: 42% and patent maintained as granted: 31%.
The top 10 countries with the most European patent applications in 2018 were the following:
- US 43 612 (25%)
- Germany 26 734 (15%)
- Japan 22 615 (13%)
- France 10 317 (6%)
- China 9 401 (5%)
- Switzerland 7 927 (5%)
- Korea 7 296 (4%)
- Netherlands 7 140 (4%)
- Great Britain 5 736 (3%)
- Italy 4 399 (3%)
The top 20 applicants in 2018 were the following:
- Siemens 2493
- Huawei 2485
- Samsung 2449
- LG 2376
- United Technologies 1983
- Philips 1617
- Qualcomm 1593
- Ericsson 1472
- General Electric 1307
- Bosch 1286
- Sony 1278
- BASF 1256
- Intel 1057
- Johnson & Johnson 982
- Microsoft 975
- Canon 816
- Panasonic 815
- Valeo 784
- Alphabet 779
The top 10 fields of technology in 2018 were the following:
- Medical technology 13 795
- Digital communication 11 940
- Computer technology 11 718
- Electrical machinery, apparatus, energy 10 722
- Transport 9 039
- Measurement 8 744
- Pharmaceuticals 7 441
- Biotechnology 6 742
- Other special machines 6 379
- Organic chemistry 6 233
Source: http://www.epo.orgRead More
Brazilian Official Gazette no. 2511 – Important Communication regarding Patent pre-grant Prosecution Guidelines
By Belen Priore, Patents Paralegal
On February 19, the Brazilian PTO issued Official Gazette number 2511, which contains an important communication: Creation of new codes whose lack of compliance could end with a shelved application.
Those new codes are as follow:
– 11.18 –Application to be considered as definitively shelved due to non-compliance related to Article 229-C of the LPI: In case of not obtaining the consent of ANVISA referring to the provisions of article 229-C of the law 9279 (requirement for granting patents of pharmaceutical products and processes) the patent will be definitively shelved.
– 6.6.2 – Formal requirement –Brazilian genetic heritage access: Request for the applicant to inform if there was access to the national (Brazilian) genetic heritage or associated traditional knowledge, according to art. 38 (I) of Law 13.123/2015. In order to comply adequately with this formal requirement (either positive or negative access), the applicant is ought to generate a Collection Union Guide (GRU) for replying such requirement:
– For a response with positive access content, the GRU needs to be issued under code 264.
– For a Declaration of Negative Access, the GRU needs to be issued under code 273.
This 6.6.2 code of formal requirement will not be issued automatically by the INPI, conversely, only if the INPI understands that there is a possibility that the patent has been obtained through access to the Brazilian genetic heritage, then the applicant will be asked to comply with this requirement.
This will be regardless of whether the patent application has previously received a requirement of this nature (under codes 6.6 or 6.6.1) and even in the following situations:
- The INPI can ask applicants to meet this requirement again, even to those who already responded that there was access to genetic heritage to build the patent, but this access is still in process of regularization before the “CGEN” (Genetic Heritage Management Council of Brazil).
- It can be also asked if the applicant already informed that there was access to the genetic heritage when submitting the application, however it did not include the registration number or authorization of genetic access obtained before the CGEN at the moment of submitting the application.
- It is possible that the code 6.6.2 is issued in applications that were submitted on paper and in which there was no information, at the time of submission, whether or not there was access to the genetic patrimony.
The non-manifestation of the applicant within a 60(sixty) days term counted from the publication of the code in the official gazette, shall have as a result the application shelved, in accordance with Art. 34 of the Brazilian patent law no. 9279.
– 6.6.3 – Formal requirement – sequence listing: The submission of sequence listing (of nucleotides and/or amino acids) through electronic media by complying with Resolution 187/2017, has now to be accompanied with a payment generated by Collection Union Guide (GRU) under code 207.
The non-manifestation of the applicant within 60 (sixty) days from the publication of the code in the official gazette, will have as a result the application shelved, in accordance with Art. 34 of the Brazilian patent law no. 9279.
Source: http://www.inpi.gov.br/Read More
New Referral to EPO’s Enlarged Board of Appeal to Decide on the Patentability of Computer Simulations
On 28 February 2019, in its decision T0489/14 (Title of the invention: Simulation of the movement of an autonomous entity through an environment, Applicant: Connor, James Douglas) the EPO’s Technical Board of Appeal (TBA) 3.5.07 (Chairman: R. Moufang) referred three questions relating to computer simulations to the EPO’s Enlarged Board of Appeal (EBA).
The case concerns a simulation run on a computer, and the questions relate to the extent to which such a simulation can be considered to be based on technical principles.
The following questions were referred to the Enlarged Board of Appeal for decision:
- In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such?
- If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?
- What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?
The invention disclosed in European patent application No. 03793825.5 (IPC: G06F17/50) relates to a computer-implemented method, computer program and apparatus for simulating the movement of a pedestrian crowd through an environment.
The main purpose of the simulation is its use in a process for designing a venue such as a railway station or a stadium. The application is based on the insight that human interaction can be expressed and simulated in the same way as interactions of physical objects.
Claim 1 of the patent application according to the main request of the applicant reads as follows:
“A computer-implemented method of modelling pedestrian crowd movement in an environment, the method comprising:
simulating movement of a plurality of pedestrians through the environment, wherein simulating movement of each pedestrian comprises:
providing a provisional path (9) through a model of the environment from a current location (6) to an intended destination (7);
providing a profile for said pedestrian;
determining a preferred step (112′), to a preferred position (123′), towards said intended destination based upon said profile and said provisional path, wherein determining said preferred step comprises determining a dissatisfaction function expressing a cost of taking a step comprising a sum of an inconvenience function expressing a cost of deviating from a given direction and a frustration function expressing a cost of deviating from a given speed;
defining a neighbourhood (29) around said preferred position (123′);
identifying obstructions in said neighbourhood, said obstructions including other pedestrians (21) and fixed obstacles (25);
determining a personal space (24) around said pedestrian;
determining whether said preferred step (112′) is feasible by considering whether obstructions (21, 25) infringe said personal space over the course of the preferred step (112′).”
The Technical Board of Appeal 3.5.07 is of the view that the claimed invention lacks inventive step over a general purpose computer on the following grounds (section 11 of the decision):
“In the Board’s view, a technical effect requires, at a minimum, a direct link with physical reality, such as a change in or a measurement of a physical entity. Such a link is not present where, for example, the parabolic trajectory followed by a hypothetical object under the influence of gravity is calculated. Nor can the Board detect such a direct link in the process of calculating the trajectories of hypothetical pedestrians as they move through a modelled environment, which is what is claimed here. In fact, the environment being modelled may not exist and may never exist. And the simulation could be run to support purely theoretical scientific investigations, or it could be used to simulate the movement of pedestrians through the virtual world of a video game.”
In the proceedings before the TBA, the applicant has cited the earlier decision T1227/05 (Circuit Simulation/Infineon Technologies”), relating to a computer-implemented method for the numerical simulation of an electronic circuit. T1227/05 states: “An electronic circuit having input channels, noise input channels and output channels, the behavior of which is described by a system of differential equations is a sufficiently determined class of technical subjects, the simulation of which can be a functional technical feature.”
In other words, if the system or method to be simulated is sufficiently technical, then the simulation method itself is also a technical method and for the assessment of inventive step has to be compared with prior art simulation methods, not with the functioning of a general purpose computer.
The TBA consequently held that if the board were “to follow decision T1227/05, it would have to acknowledge that some or all of the steps of the simulation method of claim 1 contribute to a technical effect of the invention and could thus not be ignored when assessing inventive step” and that it “would hence be necessary to compare the invention with prior art other than a general-purpose computer.”
The TBA, however, still found that it “would tend to consider the subject matter of claim 1 of the main request to lack inventive step over a general-purpose computer” since the claimed method would “assist the engineer only in the cognitive process of verifying the design of the circuit or environment, i.e. of studying the behavior of the virtual circuit or environment designed.” And, “the cognitive process of theoretically verifying its design appears to be fundamentally non- technical.”
The TBA therefore referred the case to the EBA for reconciling its own view (citing a number of other earlier decisions as support) with the inconsistent view of T1227/05.
The alleged inconsistency in the law that is the basis for the present referral relates to the fact that in decision T1227/05, the Technical Board of Appeal considered that the disclosed simulation method was part of a fabrication process (making an electrical circuit), and as such the invention could not “be denied a technical effect merely on the ground that it does not yet incorporate the physical end product”. In the present case TBA 3.5.07 agrees that this earlier case is analogous, but raises concerns that the earlier case is effectively not reliable given the general legal background. Unlike electrical circuits simulations, which are based entirely on the laws of physics, simulation of a pedestrian crowd movement is only partly based on such laws, even if it may be simulated numerically. This referral seeks therefore clarity on whether the earlier case should be followed.
The outcome of the referral has implications far beyond computer simulations, but to Computer-Implemented Inventions in general, for example also to inventions related to Artificial Intelligence (AI) or Machine Learning (ML) to model systems and processes without necessarily controlling or interacting with physical means.
Source: www.epo.orgRead More
The European Patent Office (EPO) and the Licensing Executives Society International (LESI) have signed on 8 February 2019 a Memorandum of Understanding on bilateral co-operation to help innovators make better use of the European patent system. The agreement was signed by EPO President António Campinos and LESI President François Painchaud on the occasion of LESI’s recent Winter Planning Meeting in Miami, Florida.
This enhanced co-operation will enable the EPO and LESI to extend the reach of joint activities for stakeholders in the innovation ecosystem, especially small and medium-sized enterprises, industry representatives, technology transfer experts, publicly funded research organizations, IP advisors, innovation centers, user associations, IP offices and government policy makers.
The Memorandum of Understanding between both partners will remain in effect for a period of five years and extends the successful history of co-operation between the EPO and LESI.
“The main goal of our agreement is to enable current and future innovators to make better use of the patent system by overcoming barriers such as lack of knowledge about IP and commercialization options,” commented EPO President António Campinos. “This will help innovators see the business opportunities that IP can create.”
The co-operation aims to enhance the visibility of intellectual property and its protection, transfer and commercialization, foster networking among interested parties, lower the entry barriers for participants from emerging countries, and create favourable conditions, where applicable, for the protection, transfer and best use of technology.
EPO and USPTO agree to formalize bilateral co-operation framework
During his mission to the United States President Campinos also met with Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO), and they agreed that their offices would investigate possible new measures for further enhancing bilateral co-operation.
Both Heads of Office addressed topics of mutual interest, such as the respective strategic plans of their offices and the rising importance of artificial intelligence, both in the patent granting process and as the subject-matter of patent applications. Their talks also covered ongoing activities in the Trilateral co-operation between the EPO, Japan Patent Office, and USPTO as well as the co-operation within the IP5 (the five largest intellectual property offices in the world), and the close co-operation in classification via the Cooperative Patent Classification.
Meeting US partners and stakeholders
During the visit, President Campinos also engaged with many key US partners and stakeholders, including the Association of Corporate Patent Counsel (ACPC) and the American Intellectual Property Law Association (AIPLA). In these meetings the EPO President provided insights into the Office’s strategic plan and vision for the coming years, and invited patent system users to contribute to the EPO’s corresponding public consultation.
Source: http://www.epo.orgRead More
The World Intellectual Property Organization (WIPO) published recently its first report in a new flagship series: WIPO Technology Trends, this first edition features Artificial Intelligence (AI) as the theme.
If you need help with Artificial Intelligence or intellectual property protection, we can help you.
Insights and trends in Artificial Intelligence
The main insights and trends in Artificial Intelligence techniques and application fields, and patenting activity are summarized below.
AI-related inventions are booming, shifting from theory to commercial application:
Since AI emerged in the 1950s, innovators and researchers have filed nearly 340.000 patent applications and published over 1.6 million scientific publications.
Notably, AI-related patenting is growing rapidly: over half of the identified inventions have been published since 2013.
Some areas of Artificial Intelligence are growing more quickly than others:
Machine learning techniques
Machine learning is the dominant AI technique disclosed in patents and is included in more than one-third of all identified inventions (134.777 patent documents).
The machine learning techniques revolutionizing AI are deep learning and neural networks, and these are the fastest growing AI techniques in terms of patent filings.
Among AI functional applications, computer vision, which includes image recognition, is the most popular, followed by AI for robotics and control methods.
Many Artificial Intelligence patents include inventions that can be applied in different industries:
AI-related patents not only disclose AI techniques and applications, they often also refer to an application field or industry. Twenty application fields were identified in the report, these include in order of magnitude: Telecommunications, Transportation, Life and Medical sciences, Human-Computer Interaction, Banking, Security, Agriculture and Networks (including social networks, smart cities and the Internet of Things).
Companies dominate patent activity
Companies, in particular those from Japan, USA and China, dominated patenting activity:
Companies represent 26 out of the top 30 AI patent applicants, while only four are universities or public research organizations.
IBM has the largest portfolio of AI patent applications with 8.290 inventions, followed by Microsoft with 5.930, Toshiba (5.223), Samsung (5.102), NEC (4.406), Fujitsu (4.245), Hitachi (4.180), Panasonic (4.175), Canon (3.940), Alphabet (3.800), Siemens (3.550), Sony (3.500), Toyota (2.850) and NTT (2.730).
Geographical distribution of patent filings
Most filings are made at the U.S. Patent and Trademark Office (USPTO) (150.000 patent applications) and Chinese patent office (137.000), followed by Japan (85.000), the European Patent Office (EPO) (54.000), Korea (37.000), Germany (26.000), Canada (13.000) and Australia (12.500).
Cooperation in AI research is limited, but so is conflict:
In many cases, organizations that cooperated in research are credited as co-assignees on patent applications. However, none of the top 20 applicants share ownership of more than 1% of its AI portfolio with other applicants.
Overall, the amount of litigation identified in the report is relatively low (less than 1% of patents being litigated), which may be due to the fact that products have now yet come to the market and infringement may be difficult to prove.
Source: www.wipo.intRead More
by Marta García
On October 2, 2018, a new draft law was sent to the Chilean Congress to update the Law No. 19,039 on Industrial Property, the Law No. 20,254, which establishes the National Institute of Industrial Property and the Criminal Procedure Code.
The main changes introduced by the draft law regarding patents and industrial designs are the following:
- Provisional patents
The draft law includes the possibility of applying for provisional patent applications, which will provide applicants with a term of 12 months to proceed with the filing of the corresponding definitive application.
- Fees for additional pages
The draft law establishes that any patent application exceeding 50 pages must pay, together with the filing fee, an additional fee of 1 Monthly Tax Unit – which at the end of 2018 was equivalent to approximately 71.5 USD – for every 20 additional pages or fractions of pages.
- Limitation of supplementary protection
According to Article 53 BIS of Law 19,039, any patent (in any technical field) can be eligible for supplementary protection, provided that:
– the grant of the patent exceeded five years from filing or three years from the request for examination, whichever occurs after; or
– the grant of the marketing authorization exceeded one year since the request was filed.
It is also established that the supplementary protection must be requested within six months after patent grant or after marketing authorization grant, as long as there has been an unjustified administrative delay.
The current legislation states that only the period proven as unjustified will be granted and does not establish a maximum extension that can be granted.
The draft law establishes a reduction from the current six months to 60 days from patent grant or from marketing authorization grant to request the supplementary protection.
Moreover, the draft law limits the supplementary protection that can be granted to a maximum term of five years.
- Exceptions to patent rights
A series of exceptions or limitations to the rights granted by a patent to its owner are introduced by the draft law to Article 49 of IP Law No. 19,039, stating that the rights conferred by a patent will not be extended to:
- a) Acts performed privately and without commercial reasons.
- b) Acts performed exclusively for experimental reasons relative to the object of the patent.
- c) Preparation of medicines under medical prescription for individual cases.
- d) Use on foreign vessels of means which are the object of the patent, when they temporarily or accidentally enter into Chilean territorial waters, except that said means are used exclusively for the needs of the vessel.
- e) Use of means that are the object of the patent in the construction or functioning of foreign air or land vehicles or of the accessories of said vehicles, when they temporarily or accidentally enter into Chilean territorial waters.
- Patent usurpation
According to IP Law 19,039, if a patent has been registered by a person who does not have the right to do so, the only remedy available for the legitimate owners of said invention is to request the revocation of said patent. Therefore, the legitimate owners of the invention do not currently have the option to recover their patent right.
In order to overcome said deficiency, the draft law proposes to establish a “patent usurpation act,” according to which the legitimate owner of a patent will have the right to request the transfer of the patent and the corresponding damages, when said patent has been registered by a person who does not have the right to do so.
- Expedited procedure
The current registration process for industrial designs in Chile requires substantial examination and takes about one year, which is an excessively long term due to the dynamic nature of the design industry.
In order to accelerate registration, the draft law introduces an “expedited procedure”, which must be explicitly requested by the applicant, and which does not involve a novelty assessment. Moreover, the current non-expedited procedure involving a novelty assessment may still be used by the applicants.
In the new expedited procedure, if no formal objections are raised, the applicant will be granted a “certificate of deposit”. The substantive examination can still be requested at a later stage by either the certificate owner or a third party.
- Extension of term of protection
The current IP law establishes a maximum term of protection for industrial designs of 10 years, which cannot be extended.
The draft law proposes a protection period of five years, which can be extended for two additional periods of five years, until a maximum of 15 years.
It is also established that the owners of designs granted before the entry into force of the new law, which are still within the validity term of 10 years, my request an extension of validity for up to an additional term of five years.
According to the current IP Law 19,039, maintenance fees for patents, utility models and industrial designs must be paid for periods of 5 or 10 years. This means that patent and design owners have to pay a fee covering a long period of time, during which they might lose interest in the corresponding right.
In order to improve the above situation, the draft law introduces the option of paying annual maintenance fees for patent and industrial designs.
Source: https://www.camara.clRead More