Post Grant Research Articles

РЕФОРМА ПАТЕНТНОГО ЗАКОНОДАВСТВА (2020): ОСНОВНІ НОВАЦІЇ ЩОДО ВИНАХОДІВ (КОРИСНИХ МОДЕЛЕЙ)

The article considers the main innovations of current legislation concerning inventions and utility models. The conditions for granting legal protection of an invention (utility model), the procedure for filing and considering an application for an invention and a utility model, the application of «pre grant opposition» and «post grant opposition» procedures, and ways to protect patent rights are studied and analyzed. The author proves the importance of creating a national patent office (NIPO) in Ukraine. The article substantiates the need to adopt a separate law on NIPO instead of duplicating the rules on the legal status of NIPO, its structure, competence, etc. in several legislative acts. The author determines that the law eliminated the inaccuracy in the definition of a patent that certifies intellectual property rights to an invention and utility model, rather than ownership of them. This is fully consistent with the application of the theory of exclusive rights in the legislation of Ukraine on intellectual property. The article states that the law provides for only two types of patents (excluding secret and official inventions, utility models): a patent for an invention granted for 20 years based on the results of a qualifying examination, and a patent for a utility model granted for 10 years based on the results of a formal examination. The author notes that this patent by its legal nature remains declaratory, and it is granted under the responsibility of the applicant. The researcher proves the importance of legislative innovations, which eliminated the possibility of granting so-called «evergreen patents» (by improving the content of the inventive step as a condition of patentability). The article substantiates the need for a legislative solution to the issue of ownership of property patent rights to an official invention (utility model). The author notes that the reform of patent legislation (2020) bypassed the improvement of legal regulation on the use of inventions (utility models) taking into account digitalization (in particular, the legal regime «computer implemented inventions» is not defined). The researcher proves that the publication of information about the application for the invention is important, because from that moment the application becomes public, and an indefinite number of people have the opportunity to read its contents, and may see the technical essence of the invention. The author justifies the need to transfer the authority to decide on the issuance of compulsory licenses to the National Intellectual Property Office (or a specialized court after its creation). The article finds that instead of invalidating a patent for an invention (utility model), it was introduced that the rights to an invention (utility model) might be recognized as invalid, which is not currently accepted by case law. The article proves that an important innovation of the patent law reform (2020) is the introduction of a procedure for declaring inventions (utility model) invalid out of court («post-grant opposition») in order to curb the practice of patenting by unscrupulous applicants of well-known technical solutions.

UTILITY MODEL PROTECTION - TRENDS IN THE EUROPEAN UNION AND CHALLENGES FOR UKRAINE

The issue of utility model (UM) protection in Ukraine in1993–2020 and the practice of the EU Member–States is considered. It is noted theproblem of UM trolling and exceeding the number of applications in Ukraine for UM in comparison with inventions. It is associated with the expansion in 2003 of the UM object in addition to the device also to a process, substance, microorganism strain, plant or animal cells culture and limiting the criterion of patentability only to the requirementnovelty and industrial applicability.It is concluded that the adoption of the Law of 21.07.2020 № 816-IX is an important step to limit patent trolling. The Law provides for exclusion from the protection of the substance and the introduction of post grant opposition in the Appellate Chamber.However the Law does not solve the problem of patent trolling at the customs border and did not exclude process from the protection. Also there will still be the problem at the courts as well Appellate Chamber to declare a utility model invalid if the UM is a new but obvious technical solution due to the lack of inventive step requirement or lower requirements for inventive step.The peculiarities of the protection of the utility model in the 15 old EU member states and the United Kingdom are analyzed. It is shown the tendency to increase level of protection of UM in the EU. In 6 EU countries there is no UM protection. In 5 there is an inventive step requirement. In 2 countries protection is possible only for three-dimensional objects (Italy, Greece). In 2 countries (Finland, Spain) - lower requirements for the inventive step.The directions of change of UM legislation in Ukraine are substantiated, including: Option 1: cancellation of protection of UM taking into account experience of Luxembourg, Sweden, Great Britain, Belgium, the Netherlands.Option 2: introduction of protection only for three-dimensional UM (protection is not provided to the method, substances, biotechnological inventions). Establishment of the criterion of inventive step the same as for inventions. Determination of mandatory examination of compliancewith the criteria of patentability (novelty, inventive step, industrial applicability) before the enforcement of UM in the courts, customs, Antimonopoly Committee.Option 3. Definition of protection of utility model as a form of protection of the invention with similar requirements as in option 2.

279 Costs of Burn Wound Care in a Resource-poor Setting

A collaboration between a high income (HIC) and a low income (LIC) country medical centers with grant funding over three years resulted in the establishment of a pediatric burn unit. Burn wound care prior to the three-year grant period was the open desiccation method, incurring little to no cost. Wound care was transitioned to the closed method with burn ointment, cream, and bandages through the grant funding. In the post grant period following the loss of funding, the burn center must attempt to cost share with the hospital and families for the funds necessary to maintain the practice change. This has proven challenging in a LIC setting. Sustainable development of burn care in a LIC requires a more cost-effective alternative to the open method. Throughout the three-year grant period, a financial spreadsheet was maintained on a Google platform with all costs, including funds required for dressing supplies. Following the grant period, a cost analysis was conducted by the team working in the new burn center to assess the funds necessary to maintain the standard of care established during the grant period. During the three-year granting period $16,993.64 was spent on wound care supplies for 673 children treated, $25.25 per child. Evaluation in the post grant period with concerted efforts to cut cost while maintaining the standard of care resulted in an expected need of $21.76 per child. The average census of 20 children equates to an estimated $5,222.43 annually to provide wound care for an expected 240 children. In contrast, the open method required only a reusable cage and common clean cloth from the family. A pediatric burn center was organized in a low resource setting. As part of the process topical wound care cost were raised from essentially free to more than $25.25 per child. This financial challenge has proven difficult to maintain and it may be inevitable that the open desiccation method of wound care returns for some children. More research is needed on cost-effective alternatives for wound care in LIC’s that have the benefits of the closed method and multiday dressings (MDD) used in HIC. MDD and adherent “skin” like dressings should be considered despite the increased cost as they may allow outpatient management, reducing the global economic burden on the family and society. The best economic solution for wound care in the LIC needs to be characterized and become a priority for national ministries of health and The World Health Organization if progress is to be made on burn wound care in the poorest parts of our world. Directly Applicable.

How Cuozzo will impact the interplay between post grant proceedings and Hatch-Waxman litigation.

How Cuozzo will impact the interplay between post grant proceedings and Hatch-Waxman litigation.

Using the patent term changes in assessing the evolution of patent valuation from filing to maturity

Purpose The authors argue that the patent term change introduced in Trade Related Aspects of Intellectual Property Rights (TRIPS) in the USA inadvertently offered a metric of self-valuation of patents at the time of filing, affirming the ability of Drugs and Chemical patents to offer greater R&D incentives than other technology fields. As renewals also offer a metric of self-valuation, the authors find that upon renewal Computer patents are found to offer greater R&D incentives than Drugs and Chemicals. The purpose of this paper is to inquire as to why Computer patents are considered as more valuable in the post grant period, even though they were not considered as valuable upon filing. The authors advance the idea that patents can increase in value if encompassed in a patent portfolio. Design/methodology/approach The authors employ the introduction of the TRIPS agreement in the USA. In order to facilitate the move to TRIPS, the USPTO (unexpectedly) allowed applicants who filed prior to June 8, 1995 a patent length that was equal to the maximum of two regimes. Therefore, applicants that filed before the deadline were given a possible small extension of their patent’s time length. The authors use this change and renewal data to infer firms’ self-valuation of patents. For this reason, the authors acquire information for all utility patents that were filed around June 8, 1995 data project. Findings The authors offer an additional explanation that is related to the increasingly commonplace build up of patent portfolios: patents can increase in value if encompassed in a portfolio. Such portfolios are bundles of patents whose means to an end lays in their strength in numbers. As Lanjouw and Schankerman (2004) note, when a patent is added to a portfolio the cost of defending a technology against infringement allegations decreases. To rephrase, a patent is regarded as the additional foot-soldier who aids the firm, arm-in-arm, in defending its technological territory and in fulfilling its strategic goal. Originality/value The originality stemming from the paper is that policy makers that aim to tackle patent proliferation should not focus their attention to individual patents. Instead, they should target policies toward patent portfolios, because they provide the means of endowing patents with the extra weight that makes filing and renewing irrelevant patents worthwhile.

Lost in translation? – A review of the post–grant requirements for translation of patent specifications in Europe

This article considers the various mechanisms by which granted patent rights, and their supporting disclosures, have been made available in local languages throughout Europe over the past several decades. It considers the legal background to the development of different translation requirements at different points in time, and how this has affected the burden upon the patent owner in maintaining their patent rights in force. It highlights the sources for obtaining translated documents, and how this process will change again if the EU's Regulations on granting unitary effect commence operation later this decade.

Reconsidering Realization-Based Accounting for Equity Compensation

The U.S. equity compensation landscape continues to evolve. Recent innovations have improved the linkage between pay and firm-specific performance, but have added complexity. Against that backdrop, this Article urges reconsideration of the accounting rules for equity pay. Under current rules, most equity pay awards are expensed based on grant date valuation with no updating for changes in value post grant. This Article advocates the adoption of a mark-to-market or realization-based approach under which the expense recorded for all equity pay awards would ultimately be trued to the value received by employees. Increasingly, equity pay awards are more analogous to commissions than to arm’s length investments, and the tighter link between pay and firm-specific performance suggests that including post-grant changes in equity pay award values in compensation expense tends to improve accuracy, not just add noise. In addition, increased complexity leads to greater ex ante valuation uncertainty and gaming opportunities, suggesting de-emphasizing reliance on ex ante measurement to the extent possible. Realization-based accounting also produces book/tax conformity for equity pay, which further combats gaming, and it levels the accounting playing field for equity instruments, minimizing accounting-induced distortions in pay design. The Article also argues that concerns that realization-based accounting will add an unacceptable level of uncertainty or volatility into compensation expense can be mitigated.

Patent Office Contested Proceedings and the Duty of Candor

The implementation of post-grant trial proceedings in the U.S. Patent and Trademark Office is one of the most significant aspects of the Leahy-Smith America Invents Act. Practitioners have a great deal of new subject matter to master, including the governing statutes and rules, and instructive Patent Trial and Appeal Board decisions. All of this new law is superimposed, however, on an existing legal landscape relating to the practitioner’s duty of candor and potential consequences for candor violations. Furthermore, the new law creates additional candor and disclosure obligations specifically applicable in post-grant contested proceedings.This paper discusses the “old” and “new” candor obligations of practitioners – their sources, their reach and applicability, and the potential consequences for their breach – in the context of the representation of clients in the new USPTO post grant contested proceedings. It identifies several examples of statements and conduct in post-grant proceedings that may particularly implicate the practitioner’s duties of candor and/or disclosure and, accordingly, warrant heightened care on the part of practitioners (registered and unregistered) and parties who participate in the new proceedings.

Relevance of Pre Grant Opposition in Indian Law

The opposition procedure in patent law is an important part of the system that enables parties to challenge the grant of a patent. As of now, patent applications are opposed prior to and subsequent to grant and procedure for the same is known as pre grant opposition and post grant opposition respectively. Member Countries of TRIPS, sooner or later, have adopted post grant unified system of opposition procedure as pre grant opposition leads to undue delay in grant of patent and has hit the main rationale behind incentive based patent system. The procedure during post grant procedure in various countries has been discussed at length to analyse similarities and differences. The paper underlines the position of Indian Pharmaceutical Industry in world market and economic growth rate maintained thereof. Time has come that India needs to adopt between the two, to ensure steady prosecution process and encourage research and development.

Person Interested Under Indian Patent Law

According to Section 2(t) of the Indian Patent Act, person interested includes a person engaged in, or in promoting, research in the same field as that to which the invention relates. The definition of person interested is inclusive and thus it was observed in Lord Watson in Dilworth v. Commissioner of Stamps that the word include is very generally used in interpretation clauses in order to enlarge the meaning of words or phrases occurring in the body of the statute; and when it is so used these words or phrases must be construed as comprehending, not only such things as they signify according to their natural import, but also those things which the interpretation clause declares that they shall include. According to the judgment, the word include is susceptible of another construction, which may become imperative, if the context of the Act is sufficient to show that it was not merely employed for the purpose of adding to the natural significance of the words or expressions defined. It may be equivalent to mean and include, and in that case it may afford an exhaustive explanation of the meaning which, must invariably be attached to these words or expressions.Person interested has to play wider role under Indian Patent law during post grant opposition and revocation of a patent application where it says that at any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent, any person interested may give notice of opposition to the Controller in the prescribed manner on prescribed grounds. Similarly a patent granted may, be revoked on a petition of any person interested by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the prescribed grounds under Section 64(1).

Pre Grant Oppositions and Refusal of Grant

The opposition procedure in patent law is an important part of the system that enables parties to challenge the grant of a patent. In India, patent applications are opposed prior to and subsequent to grant and procedure for the same is known as pre grant opposition and post grant opposition respectively. Under the provisions of the Section 25(1) of the Act any person can file a pre grant opposition by way of representation either within 6 months from the date of publication under the provisions of the Section 11 A of the Act or before the date of grant of patent whichever expires later. The grounds of pre grant opposition as provided under Section 25(1) are: wrongful obtaining, anticipation by prior publication, anticipation by prior date, Invention publicly known or publicly used in India, lack of inventive step or obviousness, not patentable under the Act, insufficient disclosure, suppression of information about foreign filing, non filing of application within 12 months from the date of first application in case of convention application, non-disclosure of biological material and anticipation having regard to traditional knowledge. The paper attempts to explore the most common grounds of opposition which led to rejection of patent applications by the patent office in the year 2011.

Relevance of Indian Pre-Grant Opposition

The opposition procedure in patent law is an important part of the system that enables parties to challenge the grant of a patent. As of now, patent applications are opposed prior to and subsequent to grant and procedure for the same is known as pre grant opposition and post grant opposition respectively. Member Countries of TRIPS, sooner or later, have adopted post grant unified system of opposition procedure as pre grant opposition leads to undue delay in grant of patent and has hit the main rationale behind incentive based patent system. In India, where a patent application is allowed to oppose at two stages i.e. post-grant opposition and pre-grant opposition, the position needs to be reviewed.

Software Patents: Need for Abolishing the Patent Cover

The paper begins with a review of the legal rationale for non-protection of software by patents. This is followed by the analysis of the question whether problems may come up if software patents are categorically discriminated from patents in other fields of technology. Special emphasis is made on the post grant review under the new “America Invents Act” and whether it presents a problem against non-recognition of software patents. The paper critically analyses the landmark case laws against software patents, patentability and other scholarly writings with similar analysis and discussions and conclude with the strong observations that software patents produce more problems than they solve.

Extent of Use of TKDL in Patent Offices: Trends and Concerns

India being rich in biodiversity has a varied species of plants and our ancestors also had marvellous knowledge of the uses of these plants, many of which have a great medicinal value. The traditional knowledge regarding many of these has been documented by our ancestors but in languages like Sanskrit, Urdu, Tamil etc. In this era of research, development, invention and competition, there were several instances where patents were claimed by foreign companies on medicines and drugs which were actually based on the traditional Indian systems of medicine. The post grant opposition of such patents proved to be time consuming as well as expensive and was also surrounded by uncertainty of outcome. It was in this background that the need was felt to have a database such as TKDL which unhindered by the barrier of language would enable an effective prior art search to be carried out. Today, with TKDL which enables India to prevent the grant of a wrongful patent at almost zero cost that too in just a few weeks time, India by and large is believed to be the only country to have such a cost effective and time efficient mechanism in place to protect its traditional knowledge. With the unique TKRC-IPC concordance, the TKDL has found wide acceptance in the international community and has given impressive results in the first few years. However, the key question is whether the measures for protection of traditional knowledge can stop with this. An attempt has also been made to look into some other issues such as whether TKDL in fact makes traditional knowledge more vulnerable to unjust exploitation and whether TKDL should go beyond the defensive mode of protection and venture into the task of affording positive protection to traditional knowledge.

Comparative Study of Pre Grant and Post Grant Patent Opposition in India

Patents are provided as economic incentives for research and development and to facilitate and encourage disclosure of innovations so as to make it available in public domain. Laws providing for pre grant and post grant of patent are essential to prevent wrongful grant of patent. However, this has lead to undue delay in grant of patent, which has hit the main rationale behind incentive based patent system. There is a need to maintain the balance between the two, to ensure steady prosecution process and encourage research and development. It has always been possible to oppose grant of patent before it is actually granted. Under the Patent Amendment Ordinance 2004, it was decided to modify the provisions relating to the opposition procedure to streamline the system by having both pre-grant and post-grant opposition in the patent office.

The Sustainability of Systems of Care for Children’s Mental Health: Lessons Learned

The federal Comprehensive Community Mental Health Services for Children and Their Families Program was initiated in 1992 to provide grants to states, communities, territories, and Indian tribes to develop systems of care to serve children and adolescents with or at risk for emotional disorders and their families. As part of the national evaluation of this program, a study was undertaken to assess the ability of funded sites to sustain their systems of care beyond the federal grant period. The study involved a web survey and telephone interviews with local and state respondents to examine the extent to which key components of systems of care were maintained during the period in which federal funds were phasing out and during the post grant period. Study results demonstrate positive and negative changes that occurred in the communities which are included in the sample, with respect to maintaining the availability of each service included in the broad service array, the implementation of system of care principles, the system of care infrastructure, and the achievement of system of care goals. In addition, results identify factors that contribute to or impede the ability to sustain systems of care, and the effectiveness of various strategies for sustainability. Study findings offer guidance not only to federally funded system of care communities but also to non-funded communities engaged in system of care development to enhance their ability to sustain systems of care for this population over time. Findings will also assist federal, state, and local policymakers, technical assistance providers, family members, advocates, and other key stakeholders to more effectively support the development of viable, sustainable systems of care.