Now I will review some basic differences between U.S. patent prosecution procedures and international procedures. In the interest of brevity, I will review prosecution in the European Patent Office (EPO) and in the Japanese Patent Office. These two systems, along with the U.S. patent system, are generally considered the most developed.
The EPO
The major difference between U.S. patent prosecution and EPO prosecution is that the task of searching and examination are separate in Europe. A different examination group performs each task.
A search specialist will perform the search, and the search report will be published. Examination will not begin until the search report is published and the examination fee is paid. This generally results in a lower term of protection in Europe.
The EPO also provides a post-grant opposition proceeding.
Interestingly, the U.S. has recently adopted some features of the EPO system. The U.S. now charges a separate search fee and has adopted an adversarial re-examination proceeding, which is similar to a post-grant opposition proceeding.
Japan
Japanese patent prosecution is basically a five-step process. The first step is to prepare and file the application. The application may be filed in English but must eventually be translated into Japanese.
The next step is a non-substantive examination to determine whether the applicant has met the required formalities. If the applicant has failed to do so, it will be provided with the opportunity to cure the defects if that is possible.
Next, the application will be published. After publication, the applicant will have to decide whether to seek substantive examination. An applicant may wait up to seven years. Also, a third party may request examination.
An applicant can also accelerate the examination process by submitting a search report from a foreign or regional patent office.
Finally, if the applicant meets the requirements for the patent, the patent will issue.
A couple of other key points should also be mentioned. Japan has recently added a post-grant opposition proceeding. Also, a Japanese applicant should try to reduce translation costs by significantly cutting down the background section of its application.
Patent Prosecution in Regional/National Patent Offices
Thomas Joseph is a patent attorney in Pittsburgh, Pa. He maintains a solo practice in all areas of intellectual-property law. He has been practicing since 2001. Before starting his solo practice, Joseph was the General Counsel of Grant Street Group, a financial software firm. At Grant Street Group, he managed the company’s patent litigation against its primary competitors in the online-auction markets for tax certificates, foreclosures, tax deeds and municipal bonds. Joseph received a Bachelor of Science in Metallurgical Engineering and Materials Science from Carnegie Mellon University, a Master of Science in Materials Science and Engineering from the University of Florida and a Juris Doctorate from George Washington University.
You can contact him at www.joseph-iplaw.com.
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