14 April 2010

Patent Prosecution - A Report from the ABA IP Conference

My apologies for not providing a series of posts during the conference. Between jet lag, keeping my practice going and the hospitality suite, there was little time. But here is a report on the panel presentation in which I was privileged to participate.


Apart from me, the speakers were Gwylim Roberts from Kilburn & Strode, Deshan Li from Unitalen and Matthew Bryan from WIPO. Jay Erstling was the moderator.

Gwylim Roberts is a partner with Kilburn & Strode, a London-based firm of patent and trade mark attorneys. Gwylim is a visiting professorial fellow at Queen Mary College University of London and a visiting
research fellow at Bournemouth University. He leads the UK profession's liaison with both the UK Intellectual Property Office and European Patent Office, and is President of the British Group of UNION – a pan-European confederation of patent practitioners. He lectures regularly in the US and Europe, has authored numerous papers and is editor of the UK Profession's Patents Training Manual. He is the author of "A Practical Guide to Drafting Patents" published by Sweet & Maxwell. I have had the pleasure of working with his firm and have always been impressed with their professionalism, responsiveness and excellent value.

Deshan Li (PhD) is a Chinese patent attorney and a senior partner of Unitalen, one of China's largest patent firms. He has been actively engaged in patent theory and practice research and has published articles in influential IP magazines, such as the Chinese publication, Intellectual Property. He is a frequent speaker on Chinese patent law and practice in international conferences and seminars. He earned a Ph.D. in physics from Frankfurt University, Germany, and a LL.M. from Peking University.

Matthew Bryan serves as the Director of the Patent Cooperation Treaty (PCT) Legal Division, where he reports directly to the WIPO Deputy Director Genera0l for Patents. He is in charge of PCT-related teaching
and training, user relations, the PCT Infoline, the PCT portion of the WIPO website and the legal and informational texts. He often represents the PCT and WIPO at meetings of the American Intellectual
Property Law Association (AIPLA), the American Bar Association's Section of Intellectual Property Law (ABA-IPL), the Intellectual Property Owners Association (IPO), the Asian Patent Attorneys
Association (APAA), the Association of University Technology Managers (AUTM) and other international organizations. Before joining WIPO, Matthew served as a Law Clerk on the United States Court of Appeals
for the Federal Circuit to Judge Randall R. Rader and to Senior Judge Marion T. Bennett. He earned a B.A. from Brigham Young University and a J.D. from BYU's J. Reuben Clark Law School. He is a member of the
State Bar of California since 1990, and speaks English, Spanish and French.

Tying this group together like the proverbial golden thread was Jay Erstling, the moderator. Jay is a professor of law at William Mitchell College of Law and of counsel at Patterson, Thuente, Skaar & Christensen, in Minneapolis, Minnesota. He has served as the Director of the Office of the Patent Cooperation Treaty (PCT) and Director-Advisor at the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. His responsibilities included the administration and reform of the PCT legal framework and PCT policy,
the maintenance of effective working relations with all PCT member countries, and daily oversight of the PCT system. He was twice selected as a Fulbright Scholar (in Cyprus and Sri Lanka), was the recipient of an Indo-American Fellowship, and served as an intellectual property consultant in South Asia, the Middle East,
Western Africa, and the Caribbean for the United States Agency for International Development, the U.S. State Department, and The Asia Foundation. He earned both a J.D. and B.S. from Cornell University.
Jay has a passion for all things patent and often claims that he knows more about ex-US patent practice than he does about US practice. Personally, I suspect that he has a prodigious depth of patent knowledge in most patent jurisdictions.

The presentation began with a brief resume of all the speakers by Jay. Delivered with enthusiasm and clarity, the introduction reflected his experience as a lecturer and mentor.

I was the first speaker. We only had 15 minutes to deliver relevant content on a topic which is both wide ranging and substantial. Given that I chose the topic, I am allowed to criticise without fear of reprisal. My criticism of the topic is that it was too demanding from the perspective of content. Also, it didn't allow for sufficient interplay between the panel members. So it was four respective presentations, instead of a discussion. That said, we managed to stay on topic. Certainly, anyone listening would have benefitted from the
talks.

I started with a presentation that covered conforming amendments, modified examination, the innovation patent and some distinguishing features of our patent system when compared with that of the United
States. I spent some time on the innovation patent system. It's an excellent tool for early, tailored enforcement and is the main distinguishing feature of Australian patent practice, in my opinion.

Next up was Dr Li, who gave us all a clear explanation of the recent changes to Chinese patent practice. The changes are in effect from 18 January 2010. I won't describe them here for fear this post will get
unwieldy. Please let me know if you are considering Chinese patent protection so that I can refer you to Dr Li.

Following Dr Li, was Gwilym Roberts. His clear and lively presentation focussed on some recent changes to European practice. Gwilym emphasised the need to anticipate problems and issues in Europe. It
appears that the procedure has been compressed. So there may not be enough time during prosecution properly to address issues raised by the European examiner. Gwilym's presentation was a very useful
strategic guideline. If you are considering a European patent application and would like to be as prepared as possible, please let me know. I would be pleased to have Gwilym contact you.

Finally, Matthew delivered a crisp overview of PCT trends, PCT challenges and the future of the PCT. As far as the trends are concerned, he confirmed that the recession had resulted in an overall drop of 4.5% in 2009 PCT filings. The source of PCT applications reveals an interesting tale. It appears that the drop can be
attributed to western jurisdictions, such as US, Germany, Sweden, Canada and Israel. In contrast, China showed a growth of 29.7%, Korea a growth of 2.1% and Japan a growth of 3.6%. That indicates to me that
China is serious about IP. It also shows that Japan continues to regard IP registration as important, considering that country was hit hard by the recession. Sadly, for a country that regards itself as
"smart" we here in Australia lag behind places like Italy, Canada and Finland. Matthew went on to explain that there appears to be a definite trend towards increased worksharing between patent offices for prosecuting PCT applications. Challenges facing the PCT include remaining apolitical. Trust also needs to be built between patent offices to avoid duplication of work. The top 15 countries are responsible for 92.1% of PCT applications published in 2009. The top 32 countries are responsible for 96%. The remaining 4% of filings are
spread across 110 countries. It is thus difficult to motivate further countries to join the PCT.

There were about 100 attendees, which was more than last year for a similar presentation. Apparently, numbers were down generally, so that was a good turn out.

Perhaps I'm biassed, but I think that the presentations were well delivered and accepted by the audience. If any of my readers were there, I would welcome comments.

2 comments:

  1. Barrys description does not do the session justice. I was one of the 100 participants in the panel and as a patent practitioner, the session was a great peak into countries I file applciations in all the time. Each speaker provided a unique perspective into their countries patent procedures. Barry was born to speak. His presentation was both enjoyable and relatable and I highly recommend to all to purchase the audio/video. I have recommended to the ABA that more sessions on foreign practice must be offered.

    ReplyDelete
  2. Thanks very much for that, David. I really enjoyed myself and was privileged to be part of the panel.

    ReplyDelete