By Maria Belen Priore, Patent Dept.
On January 8th, the Brazilian PTO launched the first edition of the Manual of Industrial Designs to ensure greater quality, transparency and uniformity in the field of examinations of industrial designs, the principles of legality, impartiality, morality, publicity and efficiency, within others.
This new Manual not only consolidates the guidelines and procedures related to the examination of industrial design applications, but also provides instructions for the filing of design applications and following-up on processes, helping examiners, prosecutors and users in general.
This first edition of the Manual of Industrial Designs became official by Resolution No. 232/2019 dated January 7, 2019, and was published in the PTO´s Official Gazette Nº 2505, Section I – Press Releases, and will be in force as of 03/09/2019. The aforementioned resolution also revokes normative instructions No. 44/2015, 80/2017 and articles 2nd, 3rd and the sole paragraph of resolution No. 159/2016.
This manual gathers everything concerning the Industrial Designs, being easy to access (published on the Brazilian PTO website), with no more than 135 pages (currently, because will be subject to periodic updates in charge of the Standing Committee for the Improvement of Procedures and Examination Guidelines).
This useful tool for every IP operator was issued after a public consultation occurred between August 11th and September 29th 2017, in which the Brazilian PTO received about 208 contributions from 10 different participants which were discussed and answered by the Standing Committee for the Improvement of Procedures and Examination Guidelines.
The European Patent Office (EPO) held its first major conference on patenting Blockchain on 4 December 2018. The one-day event in The Hague explored the implications of blockchain for patent applications as the technology, which started in the financial sector, is spreading to all technical fields of industrial application.
In his welcome address EPO President Antonio Campinos mentioned that patent applications for blockchain are rising fast and such patents are examined by the EPO in accordance with well-established criteria developed on the basis of case law related to Computer-Implemented Inventions (CII).
The first keynote Speakers (Marieke Flament and Claire Wells) covered the blockchain basics, setting out the main principles, key players and areas of use for this new technology, and the first panel discussed the future impact of this rapidly developing field and its links to other unfolding digital technologies such as Artificial Intelligence (AI).
Koen Lievens, Director at the EPO, and Wang Xinyi, Examiner at the China National Intellectual Property Administration (CNIPA) presented the offices´ approaches to dealing with blockchain patent applications, whereas Nobuyuki Taniguchi (Nakamura & Partners) presented the evolution of Blockchain-related patents in Japan.
An analysis of the emerging patent landscape has revealed a steep increase in patent applications since 2015, a trend similar to the one seen in the case of related technical fields such as AI and self-driving vehicles.
Most of the patent filings have taken place in China (40%), China (20%) and Europe (8%).
The top applicants worldwide are the following: IBM, Alibaba, Coinplug, Boe Technology, Mastercard and Bank of America.
The top applicants in Europe are the following: Visa, Mastercard, Siemens, Accenture, Nokia, Nchain and Sony.
The main technology fields (according to the CPC classification scheme) are the following: Payment architectures, schemes or protocols; Cryptographic mechanisms or cryptographic arrangements for secret or secure communication; Network architectures or network communication protocols for network security; Security arrangements for protecting computers; Finance, insurance, tax strategies; Commerce, e.g. shopping or e-commerce and Digital computing or data processing equipment or methods.
Source: www.epo.orgRead More
by Marta García
New trade agreement – USMCA
On November 30, 2018, a new trade agreement called the United States-Mexico-Canada Agreement (USMCA) was signed by United States President Donald Trump, Mexican former President Enrique Peña Nieto, and Canadian Prime Minister Justin Trudeau, during the 2018 G20 Summit in Buenos Aires.
The agreement, which must still be ratified by each party, is also unofficially known as “NAFTA 2.0”, since it is intended to replace the North American Free Trade Agreement (NAFTA) currently in force.
The text of the USMCA, which was published on the Office of the United States Trade Representative website shortly after the formal agreement was announced on October 1, 2018, includes an extensive chapter on Intellectual Property covering standards concerning trademarks, geographical indications, patents and undisclosed tests, industrial designs, copyright and related rights, trade secrets, as well as a section regarding IPR enforcement.
Below is an analysis of some key provisions of the USMCA´s patents and data protection chapter, and their implication for the Mexican IP system after the agreement comes into force.
Key provisions of the USMCA
Non-confidentiality of patent files
Article 20.43 of the USMCA establishes that for published patent applications and granted patents, each party shall make available to the public: search and examination results, non-confidential communications from applicants, and patent and non-patent related literature citations submitted by applicants and relevant third parties.
Nonetheless, Mexico already complies with the above provision, since the new IP Law in force since August 2018 establishes that all patent files must be available for public inspection as soon as they are published. Before the enactment of the new IP law, all patent prosecution files were kept confidential until grant.
Currently, voluntary claim amendments can be filed at any time during patent prosecution, as long as they do not broaden the scope of the application as filed. However, granted patents may only be amended by the patent owner in the following circumstances: a) to correct obvious or form errors, and b) to limit the scope of the claims. Therefore, at the moment no claim amendments, other than those aimed at limiting the claims, are possible when the Mexican PTO (IMPI) finds patentable an invention as originally claimed and a notice of allowance is directly issued.
Article 20.42 of the USMCA establishes that each party shall provide a patent applicant with at least one opportunity to make amendments, corrections, and observations in connection with its application. Hence, the USMCA’s implementation will require that Mexico changes its provisions on claim amendments of granted patents.
Article 20.36 of the USMCA on patentable subject matter establishes that patents must be available for inventions claimed as at least one of the following: new uses of a known product, new methods of using a known product, or new processes of using a known product.
Although in practice Mexico already allows novel uses of known compounds, currently there are no legal provisions that specifically regulate these inventions, which will be likely to change as a result of the USMCA.
Patent term adjustment
The patent term extension provisions of the USMCA provide for an adjustment to a patent term due to: (i) unreasonable delays owing to the patent granting authority, and (ii) unreasonable curtailment of the patent term as a result of the regulatory or marketing approval process for pharmaceutical products.
Mexican law does not currently provide for patent term adjustment neither for unreasonable delays in the issuance of a patent by the IMPI nor for unreasonable delays during the marketing approval for pharma products by the regulatory authority (COFEPRIS). Therefore, amendments to the IP and Health laws will be required in order to implement the USMCA provisions regarding patent term adjustments.
At this time there is no indication of which duration the patent term extensions will have. However, regarding patent term adjustment for delays in the granting of a patent, it should be noted that currently the maximum processing time from patent filing to grant in Mexico is on average 5 years. Therefore, very few requests for patent term extension for delays in the granting of a patent are expected to be filed in Mexico.
Current data protection regime
Mexican law is silent with regard to data exclusivity. However, in 2012 COFEPRIS published an internal decree that provided a 5 year-term of data protection for new chemical entities only. Accordingly, Mexico is currently granting five-year protection periods for new chemicals. However, the legal value of the decree is uncertain.
Additionally, the internal guidelines do not apply to biological medicinal products and new indications.
Under the USMCA, Mexico has agreed to extend the term for data protection of new agricultural chemical products, new pharmaceutical products, new indications and biologics as follows:
Data protection exclusivity for new agricultural chemical products under the USMCA
The USMCA prohibits generic manufacturers from referencing undisclosed test or other data concerning safety and efficacy of “new agricultural chemical products” for at least ten years from the date marketing approval was first granted.
A “new agricultural chemical product” is defined in the text of the USMCA as one that “contains a chemical entity that has not been previously approved in the territory of the Party for use in an agricultural chemical product.”
Data protection exclusivity for biologics under the USMCA
The USMCA establishes that parties should not permit generic manufacturers referencing undisclosed test or other data concerning safety and efficacy of new pharmaceutical products that contain a “biologic” for at least ten years from the date marketing approval was first granted.
A biologic is defined in the text of the USMCA as a product that, at minimum, is “produced using biotechnology processes and that is, or, alternatively, contains, a virus, therapeutic serum, toxin, antitoxin, vaccine, blood, blood component or derivative, allergenic product, protein, or analogous product, for use in human beings for the prevention, treatment, or cure of a disease or condition.”
Data protection exclusivity for new and previously approved pharmaceutical products under the USMCA – Non-biologics
The USMCA prohibits generic manufacturers from referencing undisclosed test or other data concerning safety and efficacy of “new pharmaceutical products” for at least five years from the date marketing approval was first granted.
A “new pharmaceutical product” is defined in the text of the USMCA as “a pharmaceutical product that does not contain a chemical entity that has been previously approved in that Party.”
The USMCA also establishes at least three years of data protection for new clinical information submitted for a previously approved pharmaceutical product covering a new indication, formulation, or method of administration.
Conclusion of the USMCA
The USMCA has not yet come into force, and it will still have to be ratified by each party. From the date of entry into force of the USMCA, Mexico will have four and a half years to implement its obligations with respect to the patent term adjustment for unreasonable curtailment and five years to implement its obligations with respect to data protection.
Source: https://ustr.govRead More
Patent applications in SDV
On November 6th 2018, the European Patent Office (EPO) in cooperation with the European Council for Automotive Research and Development (EUCAR) released the study “Patents and self-driving vehicles”. The key findings of said study are summarized below:
The patent applications in SDV have been divided into two main technology sectors:
Automated vehicle platform, which encompasses technologies that are embodied in the vehicle itself. It includes inventions that enable vehicles to make autonomous decisions (Perception, analysis and decisions), inventions in the automated parts of the vehicle (Vehicle handling), and inventions in the underlying hardware and software (Computing).
Smart environment, which comprises technologies that enable SDVs to interact with each other and with their surroundings. It includes inventions in vehicle connectivity and related communication infrastructure (Communication) and inventions in traffic management, vehicle identification, automated parking and interfaces between vehicles and the electricity grid (Smart logistics).
The EPO´s study mentions that over the past decade, the EPO has received around 18,000 patent applications in SDV technologies, almost 4.000 of them in 2017 alone.
Annual patent applications in SDVs increased by 330% compared with 2011, a growth rate that is more than 20 times faster than that for patent applications in general at the EPO for the same period.
Perception, analysis and decision is the largest SDV technology field, while Communication and Computing technologies have grown the fastest since 2011.
Top 20 patent applicants
Patent applications in SDV involve both automotive and Communication & Computing (ICT) industries, being the top 20 applicants: Samsung, Intel, Qualcomm, LG, Bosch, Toyota, Nokia, Ericsson, Microsoft, Continental, Sony, Boeing, Volvo, Google, Panasonic, Huawei, Audi, Hitachi, Siemens and Honda.
Europe (EPC) and the USA have a strong lead in SDV innovation, with about 1.400 patent applications each in 2017.
European applicants stand out in the field of Vehicle handling, Smart logistics and Perception, analysis and decision. US applicants dominate in ICT.Read More
On 1 November 2018 the EPO issued the new CII Guidelines, in which all substantial changes relate mainly to sections discussing the First Hurdle (technical character), that is Parts F-IV and G-VII.
Moreover, the new EPO CII Guidelines include for the first time new sections on Artificial Intelligence (AI) and Machine Learning (ML), and on Simulation, design or modelling.
The main aspects of the 2018 EPO CII Guidelines are explained below:
Mathematical methods (G-II 3.3)
The section on mathematical methods has been completely revised, adding a distinction between contribution in producing a technical effect that serves a technical purpose, by its application to a field of technology and/or by being adapted to a specific technical implementation.
Concerning contribution by way of application to a particular field of technology, the following specific examples are given:
De-noising, detecting persons in a digital image, estimating the quality of a transmitted digital audio signal;
Mapping a speech input to a text output;
Error-correction coding of data for transmission over a noisy channel, compression of audio, image, video or sensor data;
Optimizing load distribution in a computer network;
Determining the energy expenditure of a subject by processing data obtained from physiological sensors;
Providing a genotype estimate based on an analysis of DNA samples, as well as providing a confidence interval for this estimate so as to quantify its reliability;
Providing a medical diagnosis by an automated system processing physiological measurements.
Concerning the contribution by way of specific technical implementation, a mathematical method also may contribute to the technical character of the invention independently of any technical application when the claim is directed to a specific technical implementation of the mathematical method and the mathematical method is particularly adapted for that implementation in that its design is motivated by technical considerations of the internal functioning of the computer.
Artificial Intelligence and Machine Learning (G-II 3.3.1)
The new CII Guidelines for the first time provide a section relating to AI and ML, which are first defined as computational models and algorithms for classification, clustering, regression and dimensionality reduction. They are considered per se to be of an abstract mathematical nature, irrespective of whether they can be “trained” based on (real) training data.
In order to overcome the first hurdle, a causal link to the technical purpose should be established, e.g. use of mathematical method in a heart monitoring apparatus for the purpose of identifying irregular heartbeats, classification of digital images, videos, audio or speech signals based on edges or pixel attributes, and avoid using expressions that may encompass cognitive aspects of data (e.g. textual content of a document).
Furthermore, the new EPO CII Guidelines now specify that steps of generating the training set and training the AI models also may contribute to the technical character of the invention if they support achieving a technical purpose.
Simulation, design or modelling (G-II 3.3.2)
Claims directed to methods of simulation, design or modelling can be considered technical under the same principles of the other computer-implemented inventions.
In particular, the computer-implemented simulation of the behavior of an adequately defined class of technical items, or specific technical processes, under technically relevant conditions qualifies as a technical purpose, as is the case of an electronic circuit subject to 1/f noise or of a specific industrial chemical process. This section of the new Guidelines makes it clear that lack of a final physical step of production of a product is not required for a simulation method to be patent-eligible.
This applies not only to simulation of behavior of a technical item but also in the context of computer-aided design of a specific technical object (product, system or process): determining a critical parameter such as a refractive index in an optical system or an operating parameter of a nuclear reactor constitute a technical contribution.
Schemes, rules and methods for performing mental acts, playing games or doing business (G-II 3.5)
It is explicitly defined, that if a method claim encompasses a purely mental/gaming/business realization of all method steps, it falls under the category of a non-invention and therefore is not patentable.
For example, when a simulation involves real world values obtained by a technical measurement, this is not patentable subject-matter, i.e., lacking technical character, unless:
A corresponding claim includes the step of carrying out the technical measurement, or
The use of other technical means (e.g. a computer, a measuring device etc.) or if it provides a physical entity as the resulting product, or
If it serves a technical purpose.
Steps involving non patentable subject matter can be included, however, they will be taken into account for assessing inventive step, only if, in the context of the invention, they contribute to producing a technical effect serving a technical purpose.
According to the new EPO CII Guidelines, examples of patentable subject-matter include:
When implementing a condition of matching random numbers for game paying, the use of a computer calculating a pseudo-random sequence or of mechanical means such as cubic dice or uniformly sectored reels;
A networked implementation of a game of chance like bingo, in which numbers physically drawn by an operator undergo a random mapping prior to transmission to remote players, since the scrambling of results has the technical effect of securing a data transmission; and
Interactive control of real-time manoeuvers in a game world, the display of which is subject to conflicting technical requirements.
On the contrary, as an example, computation which determine a game score or a skill rating for players, even if computationally complex, are usually considered non-technical.
Finally, concerning the Second Hurdle (inventive step assessment), a few examples are given for patentable subject-matter where, although a technical problem exists, it is not solved but circumvented:
A reduction of memory, network, or computational resources achieved by limiting the complexity of a game does not overcome a technical constraint by a technical solution;
An automated accounting method that avoids redundant bookkeeping does not solve a technical problem if such reduction of workload results from a reduction of the number of operations to be performed due to the business constraints.
Inventions realized in a distributed computing environment (F-IV 3.9.3)
This new section relates to CII realized in a distributed computing environment, in order to give guidance on unity requirements.
The new EPO CII Guidelines specify that it may be necessary to refer to the specific features of the different entities in the environment and to define how they interact to ensure the presence of all essential features, unless this is not essential to performing the invention. The different entities participating in the distributed system can be claimed without incurring a non-unity objection, however it may happen that not all claimed entities are new and inventive. This is the case when for example an entity encodes information in a more efficient way, but an information-receiving entity decodes such encoded information in a conventional way: the information-receiving entity is normally neither new nor inventive.
Source: www.epo.orgRead More
On 30 October 2018, the Brazilian National Institute of Industrial Property (INPI) in order to reduce its current backlog published Rule 227/2018, regulating for the analysis of patents using the results of searches in other national or regional patent offices.
The Rule is applicable to patent applications which:
1. have not already been submitted to technical examination of the INPI;
2. have not applied to any other form of priority examination by the INPI;
3. have not received any pre-grant opposition;
4. have a counterpart application with prior art searches realized by national or regional patent offices in other countries.
Once the above conditions are fulfilled, the INPI will publish an opinion (under code 06.20) setting out prior art documents cited by foreign patent offices and inviting applicant to submit a new set of claims and/or arguments as to the patentability of the claimed invention. Thereafter, the applicant will have 60 days from the date of publication to answer such queries.
The new Rule is based on the findings of an existing pilot program introduced in January 2018, with the objective of evaluating the possible simplification and streamlining of technical procedures for examination of patent applications by using the work already done by other patent offices in the world. Such strategy is in line with the INPI Action Plan of 2018, which seeks to reduce the backlog of patents in the INPI (currently there are approximately 200,000 patent applications pending examination).
Source: INPI BrazilRead More
On October 26, 2018, the Uruguayan PTO published Official Notice 5/2018 which establishes a maximum number of two office actions issued during the substantive examination of patent applications and utility models.
This Official Notice, which will enter into force on November 1, 2018, revokes previous Notice 11/2015, which stated that the Patent Office could issue a maximum of three office actions during the examination of patent, utility models and industrial design applications.
Regarding the terms to file a response to the office actions issued during the examination of patent and utility model applications, Notice 5/2018 further establishes that:
– The term to respond to an office action issued during substantive examination will be of 45 days, which can be extended once for an additional 45-day term.
– If after the reply to the office action or within the deadline to answer it, new elements arose, which could affect the patentability, the examiner may issue a further single office action granting a term of 30 days to respond, extendable once for an additional 30-day term. In these cases, the examiner must expressly indicate the new elements causing the issuance of a further office action.
Source: http://www.miem.gub.uyRead More
The Open Invention Network (OIN) is a community committed to safeguarding Linux as well as other open source software programs against patent risk. Since it was first founded in 2005, the OIN consortium has grown to a community of around 2,700 members from a vast array of industries. The singular mission of OIN is to provide a patent non-aggression zone around Linux, a family of open-source operating system software built around what is known as the Linux kernel.
OIN aims to build a voluntary system of patent cross-licenses between member companies that encompass Linux System technologies. In addition, OIN has also actively acquired patents to help defend the community and offers education as well as advice about the convergence of open source and intellectual property.
Currently, the organization offers a license platform including individual developers and startups as well as some of the largest patent holders and technology companies in the world, including Google, IBM, NEC, Philips, RedHat, Sony, SUSE and Toyota.
Importantly, Microsoft announced on October 10, 2018 that it is joining the Open Invention Network (OIN) bringing more than 60,000 issued patents to the network. This act will help make the license network even stronger for the benefit of the open source community. Joining OIN reflects Microsoft’s patent practice evolving in lock-step with the company’s views on Linux and open source.
OIN is not the only patent licensing consortium that exists to give its members protection against infringement lawsuits, LOT Network is other example of this organizational model. LOT is a non-profit with member companies such as Tesla, Alibaba, eBay, Amazon, Uber, RedHat, Netflix, Dropbox, Cisco and Alcatel-Lucent. Started in 2014, it currently has about 190 members.
Among the key technologies of this century, nanotechnology raises particularly high expectations in a wide range of areas affecting daily life. Nanotechnology is a science, which operates at an extremely small scale: between 1 and 100 nanometers (1 to 100 billionths of a meter). In fact, entities with a controlled geometrical size of at least one functional component below 100 nanometres in one or more dimensions is susceptible of making physical, chemical or biological effects in an unexpected way. At this scale interesting and potentially promising phenomena such as statistical and quantum mechanical effects become evident. Therefore, it is easy to see how manipulating matter at the atomic level could potentially lead to enormous developments.
Nanotechnology can occur in almost any area of science and engineering: it is just as relevant to biotechnologists and physicists as it is to electrical and mechanical engineers or materials scientists. The interdisciplinary nature of the field means that anyone interested in literature on nanotechnology, especially existing patent documents, struggles to retrieve it from the databases available.
For example, according to StatNano (*), a total number of 20187 patents have been published in United States Patents and Trademark Office (USPTO) in 2017, among which more than half belongs to the United States. South Korea, Japan, China, and Taiwan are the next countries in this ranking. A number of 4019 nanotechnology patents have been published in European Patents Office (EPO) in 2017.
For this reason, it is interesting to see what is happening in Latin American countries in nanotech matters. According from data obtained in LATIPAT following the criteria of International Standard Organization (ISO/TS 18110) [i.e. a patent is related to nanotechnology when it has at least one claim about nanotechnology or it has a code related to nanotechnology according to IPC], a number of 3631 nanotechnology patents have been published in Latin American countries. From this number of nanotechnology patents, only Brazil has a number of 1877 patent applications (i.e. about 50% of the total applications in the region) followed by Mexico with 1220 patent applications. Other relevant countries of the region showed lower penetration in connections with this technology, for example, Argentina showed a number of 274, while Colombia showed a number of 87 patent applications.
The figure shows the applications published in 2017 contrasted to those published in 2016 in relevant countries of the area.
From these results, it is possible to see how Argentina, Brazil, and Mexico showed a declination in the published applications in the main countries of the region, while only Chile and Peru showed a significant increase in the published patent applications. Additionally, regarding nanobiotechnology, it is stressed that about 80% of the overall nanobiotechnology patents are from the medicinal preparation area followed by a significant number in case of diagnostic and surgical applications.
Source: (*) http://statnano.com/news/62082Read More
By Moeller IP Advisors
Dear Clients and Associates,
The Venezuelan Association of Industrial Property Agents (COVAPI) has issued a statement related to the suspension of services of the Autonomous Services of Intellectual Property (SAPI), who since August 28, 2018 has decided to temporarily and unilaterally suspend the provision of their usual services.
Below the text of the statement:
TO OUR ASSOCIATES, COLLEAGUES AND OTHER USERS OF THE INTELLECTUAL PROPERTY AUTONOMOUS SERVICE (SAPI)
The Venezuelan Industrial Property Agents’ Association (COVAPI) hereby informs its members, colleagues and general public that the Intellectual Property Autonomous Service (SAPI), as of August 28, 2018, has suspended to render services, motivated by certain “internal affairs”, pursuant to various official notifications issued by the entity.
This suspension of services prevents the submittal of any trademark, patent and/or copyright application, notwithstanding the fact that there are three (3) IP Bulletins currently in force which generate several recourses that must be actioned by the owners of these intangibles and who are unable to do so, thereby negating their right of defense and request for protection of their intellectual rights.
COVAPI has already sent a communication to the competent authorities expressing its concern upon the climate of uncertainty and lack of judicial safeguard generated by this situation and has requested SAPI to adopt the necessary measures to reactivate its services in order to guarantee its users due protection and enforcement of their rights and interests.
We remain, Very truly yours,
The Board of Directors