WASHINGTON – The United States Patent and Trademark Office (USPTO) announced in a press release revised guidance for subject matter eligibility under 35 U.S.C. § 101. The USPTO also announced guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions. The documents take effect Monday, January 7, 2019. “These guidance documents aim to improve the clarity, consistency, and predictability of actions across the USPTO,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu. “The USPTO will provide training to examiners and administrative patent judges on both documents to ensure that guidance is being properly administered.” The “2019 Revised Patent Subject Matter Eligibility Guidance” makes two primary changes to how patent examiners apply the first step of the US Supreme Court’s Alice/Mayo test, which determines whether a claim is “directed to” a judicial exception. • First, in accordance with judicial precedent and in an effort to improve certainty and reliability, the revised guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes certain groupings of subject matter: mathematical concepts, certain methods of organizing human activity, and mental processes. • Second, the revised guidance includes a two-prong inquiry for whether a claim is “directed to” a judicial exception. In the first prong, examiners will evaluate whether the claim recites a judicial exception and if so, proceed to the second prong. In the second prong, examiners evaluate whether the claim recites additional elements that integrate the identified judicial exception into a practical application. If a claim both recites a judicial exception and fails to integrate that exception into a practical application, then the claim is “directed to” a judicial exception. In such a case, further analysis pursuant to the second step of the Alice/Mayo test is required. The “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112” guidance emphasizes various issues with regard to § 112 analysis, specifically as it relates to computer-implemented inventions. The guidance describes proper application of means-plus-function principles under § 112(f), definiteness under § 112(b), and written description and enablement under § 112(a). These guidance documents have been issued concurrently to ensure consistent, predictable, and correct application of these principles across the agency. The USPTO is seeking public comment on all the issues addressed by the two guidance documents. Additionally, we invite the public to submit suggestions to address future guidance supplements as part of their comments. Please submit written comments on these issues to Eligibility2019@uspto.gov(link sends e-mail) on or before March 8, 2019.
LOS ANGELES – Analysis Group, the independent examiner performing the second Security and Stability Advisory Committee (SSAC2) Review, has published its final report according to ICANN. The final report includes an assessment of the SSAC, and 22 findings and 30 recommendations for improving its operations. The findings and recommendations broadly fall under the following topic areas: The effectiveness of the SSAC, and the timing with which the SSAC's advice is provided and acted upon. The relationship and interconnectedness between the SSAC and both other Supporting Organizations and Advisory Committees and the broader ICANN community, including on issues of transparency. The existing membership and structure of the SSAC. The implementation state of the SSAC's prior review. Analysis Group considered public comments on the draft final report, as well as comments from the public webinar and any other relevant feedback it received throughout the course of the review for inclusion in the final report. Next Steps In the coming months, the SSAC Review Work Party (RWP) will prepare a feasibility assessment and initial implementation plan (FAIIP) based on the final report. This document will include an analysis of recommendations in the final report for usability and prioritization, provisional budget implications, anticipated resources, and a proposed implementation timeline. Analysis Group and the RWP will then present the final report and the FAIIP to the ICANN Board's Organizational Effectiveness Committee (OEC). Following the presentation, the OEC will make a recommendation to the Board on next steps, including implementation of recommendations. Background An independent review of the SSAC is mandated by ICANN's Bylaws and is part of ICANN's commitment to its own evolution, improvement, accountability and transparency. Analysis Group was selected to perform the review and began its work in February 2018. The purpose of the SSAC Review, according to the Bylaws, is to determine "(i) whether [the SSAC] has a continuing purpose in the ICANN structure, (ii) if so, whether any change in structure or operations is desirable to improve its effectiveness and (iii) whether is accountable to its constituencies, stakeholder groups, organizations and other stakeholders." The review also includes an assessment of the implementation state of the SSAC's prior review.
LOS ANGELES – The Internet Corporation for Assigned Names and Numbers (ICANN) announced that it has launched the application round for those interested in participating at the ICANN65 Meeting in Marrakech through the NextGen Program. According to ICANN, the Meeting will take place June 24 - 27, 2019. The application round will remain opened until January 11, 2019. Successful candidates will be announced on the ICANN website on February 8, 2019.
Special to AG-IP News Agency AMMAN - HE Dr. Talal Abu-Ghazaleh chaired the meeting of Board of Directors and extraordinary General Assembly of the Arab Intellectual Property Mediation and Arbitration Society (AIPMAS). Dr. Abu-Ghazaleh welcomed members of the Board of Directors who represent a number of institutions in the Arab countries, stressing the importance of maximizing the value of trademarks. Furthermore, Dr. Abu-Ghazaleh called on the Society to expand the provision of training courses that it provides for various institutions in the Arab countries, underlining the possibility of contracting with training or educational institutions to hold training courses for school and university students to enhance awareness about intellectual property, in view of its importance mainly with the increasing number of inventions and innovations in the Knowledge Age. In addition, Dr. Abu-Ghazaleh urged the Society to collaborate with the 'Famous Arab Trademarks Network' and the Web Development and Design Department at Talal Abu-Ghazaleh Organization to join forces in building a database of famous Arabic trademarks, and to prepare a questionnaire tailored to all sectors of the community in order to collect their opinions and information about the most famous Arab trademarks. Dr. Abu-Ghazaleh launched the “Famous Arab Trademarks Network” initiative, assigning Mr. Mu'tasem Dmour as head of this initiative whose mission and vision are directed to enhancing the value of Arab trademarks and highlighting their importance in the world. During the meeting, Ms. Majd Khaddash, manager of the Society, briefed the attendees on the activities conducted by the Society for the year 2017-2018, including cooperation with a number of government entities and organizations such as Sudan Customs, Saudi Telecom Company (STC), the National Agricultural Research Center as well as the International Group Consultation Academy. Meanwhile, the Society’s agenda was approved by the attendees, in addition to reviewing the audit report prepared by the auditor (AlFaysal Audit Group) for the fiscal year ending on 31/12/2017 and making the decision of reappointing the same auditor for next year. It’s worth mentioning that the Arab Intellectual Property Mediation and Arbitration Society, established in 1987, aims at enhancing the intellectual property system in Jordan, enhancing skills and building capabilities and knowledge of those working in this field, in addition to highlighting the efforts conducted by the Mediation and Arbitration Center, affiliate to the Society, which works on resolving intellectual property disputes by international arbitrators in accordance with international laws and regulations.
NEW YORK, NY - The International Trademark Association (INTA) Board of Directors recently approved a resolution adopting general guidelines on a range of issues related to the examination of applications for industrial designs. According to INTA, the Guidelines for Examination of Industrial Designs are intended to serve as a reference document for Industrial Property Offices and are meant to reflect various international systems in an effort to harmonize design law practice. “These new guidelines will allow INTA to comment on the administration of designs by Industrial Property Offices and to assist Offices to set up and implement their practices and procedures,” said INTA President Tish Berard. “INTA has been focusing on design rights themselves, independent of their impact on trademark law and practice. The examination guidelines are instrumental for the Association to continue advocating for the protection of this intellectual property right.” The guidelines are divided into sections, including filings, requirements, and elements of design applications, the examination procedure, and post-registration acts. The Designs Committee’s Design Law and Practice Subcommittee drafted the guidelines, building on the work carried out by the Committee during the previous term. Subcommittee Member Michael Hawkins, of Noerr Alicante IP, S.L, Alicante, Spain, presented them to the Board for approval at its November 2018 meeting. In drafting the guidelines, subcommittee members researched and reviewed global trends in design examination, and incorporated best practices and input based on the expertise of INTA’s members. “Fostering harmonization and convergence of practices is at the heart of INTA’s mission. Written in a jurisdictional neutral way, the Guidelines for Examination of Industrial Designs will work as a tool in the implementation of that harmonization goal, allowing the Association to continue contributing to a more consistent and certain legal environment,” said Robert Katz, of Banner & Witcoff, Ltd., Washington D.C., and Chair of the Designs Committee. In 2016, INTA added design rights to its mission to support trademarks and related intellectual property, and established the Designs Committee to develop INTA’s design rights policy. In November 2017, the INTA Board approved a resolution to adopt the Model Design Law Guidelines which provide a set of standards for design laws to enable the Association to comment on proposals by jurisdictions looking to implement a design law for the first time or to amend existing design laws. The Designs Committee and the Association have used the Model Design Law Guidelines in responding to a number of consultations relating to design laws worldwide. According to the World Intellectual Property Organization’s annual World Intellectual Property Indicators report released this month, in 2017, an estimated 945,100 industrial design applications containing 1.24 million designs were filed worldwide, and the total number of industrial design regulations in force worldwide grew by five percent to 3.75 million. INTA’s Guidelines for Examination of Industrial Designs as well as the Model Design Law Guidelines can be found at www.inta.org/modelguidelines.
They were elected by the Administrative Council of the European Patent Organisation in October 2018 for a five-year term.
Special to AG-IP News Agency PARIS/AMMAN - The Board of Directors of IPEMED, the Mediterranean World Economic Foresight Institute, held its meeting on the 29th of November 2018 in Paris in the presence of the newly elected board members, Talal Abu-Ghazaleh and Elizabeth Guigou. The board meeting approved the budget for 2019 and the action plan including inter-French-Arab economic cooperation. The major decision of the board was the endorsement of establishment of the foundation « La Vertical-AME » an organisation to boost the integration of the Africa Mediterranean Europe Axis. The name of the foundation was chosen as the signal of the interaction between the three regions through a straight vertical line extending from South Africa to Finland. A meeting dedicated to « La Verticale- AME » approved the choice of Brussels as the legal domicile of the foundation. The Launch meeting will be held in Brussels at a future date to be coordinated with the European Union after completion of the legal establishment formalities. The invitees will be from the three regions equally and the Founders meeting will then elect its governance board and its executive directors.
Special to AG-IP News Agency AMMAN – Talal Abu-Ghazaleh Legal (TAG-Legal) contributed to the World Bank Group’s Doing Business 2019 Report, as one of its international partners for the 12th consecutive year. The World Bank published the report at the end of October 2018, documenting 314 business reforms in 128 economies. Deema Abu-Zulekha, Quality Control Manager at TAG-Legal, explained that the company contributed to the report by issuing an average of 2-3 questionnaires distributed to its offices in 18 countries around the globe. She added that the questionnaires, comprising most Arab countries and many Asian and African countries, were compiled by 27 legal advisors from the company. Throughout measurement, analysis, and comparison of all government procedures, the report discloses the results by using 10 indicators related to business, including ease of doing business, obtaining construction licenses, electricity network and credit, in addition to enforcing contracts and protecting investors, focusing on the comparison between legal and organizational procedures, and the reform steps set in legislations for improving the investment environment in each economy. According to the report, the UAE topped the Arab countries in terms of ease of doing business, standing in 11th position globally.
LOS ANGELES – The Internet Corporation for Assigned Names and Numbers (ICANN) announced in a press release that it launched the application round for those interested in participating at the ICANN65 Meeting in Marrakech through the NextGen Program. The Meeting will take place June 24-27, 2019. The application round will remain opened until January 11, 2019. Successful candidates will be announced on the ICANN website on February 8, 2019.
Filed by the European Atomic Energy Community, the application related to a "thermal heat pump". The corresponding European patent, EP 000 000 1, was granted on 7 January 1981.
LOS ANGELES - ICANN announced in a press release the opening of the nomination period for ICANN's Multi-stakeholder Ethos Award. Launched in 2014 at ICANN50 in London, the Multi-stakeholder Ethos Award recognizes ICANN participants who have deeply invested in consensus-based solutions, acknowledging the importance of ICANN's multi-stakeholder model of Internet governance, and contributed in a substantive way to the higher interests of ICANN's organization and its community. The ideal recipient(s) will have served in roles in multiple ICANN working groups or committees and collaborated with more than one Supporting Organization and/or Advisory Committee in a significant capacity. Candidates for the award will demonstrate at least five years of participation in the ICANN Community. Candidates will be evaluated by a panel of community members appointed by the Chairs of each Supporting Organizations and Advisory Committees using a merit-based point system evaluated against three criteria: 1. Demonstrated ability to work across community lines with both familiar and unfamiliar ICANN Stakeholders with the aim of consensus building and collaboration that substantiate ICANN's multi-stakeholder model; 2. Facilitator of dialogue and open discussion in a fair and collegial manner, through the spirit of collaboration as shown through empathy and demonstrating a sincere desire to engage with people from other backgrounds, cultures, and interests; and 3. Demonstrated additional devotional factors exhibited by time spent supporting ICANN's multi-stakeholder model and its overall effectiveness through volunteer service via working groups or committees
LOS ANGELES - The Technical Study Group on Access to Non-Public Registration Data (TSG-RD) began its work. The group is made up of 10 invited members with expertise in the Registration Data Access Protocol (RDAP), distributed authentication/authorization technologies, systems architecture, design-thinking and other relevant topics. The group is coordinated by Ram Mohan, the CTO of Afilias and the former Security and Stability Advisory Committee liaison to the ICANN Board of Directors. The group will explore technical solutions for providing third parties access to non-public data via RDAP, according to ICANN. The particular technical implementation approach the group will study was described during a data protection/privacy update webinar held 8 October. That possible approach would place ICANN in the position of determining whether a third-party's query for non-public registration data ought to be approved to proceed. If approved, ICANN would ask the appropriate registry or registrar to provide the requested data to ICANN, which in turn would provide it to the third party. If ICANN does not approve the request, the query would be denied. This group's work will not interfere with community efforts to develop an RDAP profile prior to deployment of the protocol. In addition, this effort does not replace the community's policy development process. ICANN is exploring this approach to determine whether it would diminish the legal liability of contracted parties, who would provide access to non-public registration data. The TSG-RD's discussions anticipate discussing the following key issues: assessment of available tools and protocols; authentication/authorization; data transport/storage and audit; access control protocol; performance requirements; transparency and assignment of responsibility; error conditions; costs; maintenance and evolution; and governance. The group will be supported with technical input from John Crain, ICANN Chief Security, Stability and Resiliency Officer, and Francisco Arias, Senior Director of Technical Services for the Global Domains Divisions (GDD). The invited members of the TSG-RD are: • Benedict Addis • Gavin Brown • Jorge Cano • Steve Crocker • Scott Hollenbeck • Jody Kolker • Murray Kucherawy • Andy Newton • Tomofumi Okubo
The Administrative Council of the European Patent Organisation today elected Josef Kratochvíl (CZ) as its Chairman. Mr Kratochvíl succeeds Christoph Ernst (DE) who, in October, was appointed Vice-President for Directorate General Legal and International Affairs of the European Patent Office.
The EPO has been honoured with the Corporate Art Award at an event held on 28 November in the European Parliament in Brussels in the context of the European Year of Cultural Heritage.
The EPO has held its first major conference on patenting blockchain. Attended by over 300 participants, the one-day event in The Hague yesterday explored the implications of blockchain for patent applicants and other stakeholders as the technology is applied to an ever-increasing variety of technical fields.
World Intellectual Property Indicators: Filings for Patents, Trademarks, Industrial Designs Reach New Records on Strength in China
Worldwide demand for intellectual property (IP) tools reached record heights in 2017, with China driving the growth in filings for patents, trademarks, industrial designs and other IP rights that are at the heart of the global economy.
A delegation from the European Patent Office led by EPO President António Campinos participated to the 100th anniversary of the establishment of the Patent Office of the Republic of Poland organised in Warsaw this week.
Send us your feedback: online consultation on increased flexibility in the timing of the examination process
The EPO has launched an online user consultation on the need for more flexibility in the timing of the examination process by giving applicants the possibility of postponing the examination of European patent applications.
WIPO Conference on the Global Digital Content Market Opens in New Delhi, India – Exploring the Impact of Digital Transformation in Asia-Pacific Region, Balancing Interests of Creators and Consumers
WIPO Director General Francis Gurry and Secretary to the Government of India, Department of Industrial Policy and Promotion, Mr. Ramesh Abhishek today opened the 2018 WIPO Conference on the Global Digital Content Market, which is focused on promoting balance between creators and consumers of digital media in an increasingly worldwide economy for cultural products.
More than 400 patent professionals from 40 countries gathered at the EPO's 28th annual Patent Information Conference on Monday in Brussels to discuss the latest tools and trends in searching and using information found in patents.