Thailand Accedes to PCT

Thailand’s Deputy Minister of Commerce, Mr. Alondkorn Ponlaboot, on September 24, 2009 deposited his country’s instrument of accession to the Patent Cooperation Treaty (PCT) with WIPO Director General Francis Gurry. Thailand is the 142nd contracting state of this multilateral pact that facilitates the filing of patents in multiple countries. The treaty will enter into force for Thailand on December 24, 2009.

The accession by Thailand means that in any international application filed on or after December 24, 2009, Thailand (country code: TH) will automatically be designated, and as it will be bound by Chapter II of the Treaty, will automatically be elected in any demand for international preliminary examination filed in respect of an international application filed on or after December 24, 2009. Also, as of that date, nationals and residents of Thailand will themselves be able to file PCT applications.

In a meeting with Mr. Ponlaboot, Mr. Gurry welcomed Thailand’s accession to the PCT which he said was “an extremely important step” that helps make the treaty a “more global and attractive system.”

China accounted for 43.1% of worldwide ID applications

At 15.3%, the growth rate of industrial design applications (some 621,000) in 2007 outpaced growth rates recorded for other IP rights. Since 2005, industrial design applications worldwide have experienced double-digit growth thanks largely to increased activity in China which accounted for 43.1% of worldwide applications.

In 2007, the share of total industrial design registrations by non-residents amounted to just 19.8%, which is below the equivalent shares for patents and trademarks. Industrial design protection is sought less frequently in foreign markets, because the products in question are geared mainly toward domestic commercialization.

Of the 2.7 million industrial design rights in force in 2007, residents of France accounted for the largest number (406,225). More than 250,000 such rights were also in force in China, Germany and Japan, respectively. -WIPO

China received over one-fifth of all trademark applications filed in 2007

In 2007, some 3.3 million trademark applications were filed worldwide reflecting a 1.6% increase over 2006. Preliminary data available for 2008, however, point to a possible decrease in trademark applications.

China received over one-fifth of all trademark applications filed in 2007 and the USA received nearly one-tenth of such applications, followed by Japan and the ROKorea.

Global trademark registrations rose in 2007 to approximately 2.2 million, representing a 6% growth rate. Increased registration activity in Brazil is largely responsible for the stronger growth in 2007 compared to the previous year.

Residents of China and the USA each accounted for around 11% of global trademark registrations in 2007. However, only a small proportion of trademarks registered by residents of China are protected in other jurisdictions, whereas about 43% of trademarks registered by US residents are protected abroad. Non-resident applicants accounted for some 35% of trademarks registered worldwide.

In 2007, around 16.4 million trademarks were in force worldwide with Japan and the USA together accounting for around one-fifth of these, followed by France and Germany, each having around 1 million trademarks in force. Approximately 125,000 of the trademarks in force in 2007 were first registered prior to 1960, reflecting their sustained commercial value. -WIPO

China replaced the EPO as the fourth largest office in terms of issuing patent grants

The USPTO, which has issued the highest number of patents since 1998, was overtaken in 2007 by the patent office of Japan. The patent office of China replaced the EPO as the fourth largest office in terms of issuing grants. The five largest patent offices (the patent offices of Japan, the USA, the Republic of Korea, China and the EPO) accounted for 74.4% of total patent grants.

Some 6.3 million patents were in force in 2007, with residents of Japan and the USA owning approximately 47% of this total.

In 2007, at least 4.2 million patent applications were pending around the world. The USPTO accounted for around 28% of this backlog, followed by Japan, the EPO and the ROK.

In 2008, approximately 163,600 Patent Cooperation Treaty (PCT) applications were filed, representing a 2.3% increase on 2007 figures. Applicants from the USA accounted for around 32.7% of all PCT filings. The PCT is an international treaty administered by WIPO, which makes it possible to file patent applications in a large number of countries by filing a single PCT application. Growth rates for PCT applications have decreased since 2005.

Utility models are an important alternative to patents in certain jurisdictions, typically entailing a less stringent inventive-step requirement. China received and granted the majority of utility model applications in 2007. Germany, Japan, the ROK and the Russian Federation also had a notable level of utility model activity. -WIPO

Should 'Penang' be exclusively limited to the State Government?

The Star reported that the Penang state government has laid claim to the word 'Penang'. It is reported that Chief Minister Lim wants to avoid confusion that events carrying the Penang prefix is organized by the state government. The state wants every event which carries the 'Penang' prefix to be registered with the state government.

Private entities use the prefix Penang to indicate that it has a Penang origin. Events using the prefix Penang indicates that the event is being held in Penang. These are measures which indirectly boost 'Penang' as a brand.

Requiring the permission to use the prefix 'Penang' will limit the exposure and success of Penang brand.

Instead, the state should educate the public the use of the term 'Penang state government' and Penang state emblem to state supported events. Those who are found to abuse the term 'Penang state government' and Penang state emblem can be prosecuted by the state.

Automakers try to energize electric-car business

The race is on among the world's auto companies to make electric cars go farther on a single charge, bring the price down to compete with gas-powered vehicles, and give drivers more places to recharge them than just the family garage.

Electric is the big buzz at the 63rd Frankfurt Auto Show this week, and nearly every major automaker has at least one on display. Renault introduced no fewer than four electric models, while Tesla, the only company producing and selling purely electric cars, handed over the keys to its 700th all-electric vehicle, a blue Roadster Sport, to a German buyer at the show.

If the models unveiled Tuesday are any indication, the notion of electric cars as small, stunted boxes with little range is about to be junked.

"People have realized that ... electric vehicles don't have to be golf carts," said Diarmuid O'Connell, vice president of business development for Tesla Motors Inc. "They don't have to be anemic little putt-putts."

The company's sleek, two-seat Roadster - which in the U.S. sells for $101,500 (euro69,500) - has a range of 244 miles (393 kilometers) on one charge. Its planned Model S, which will seat seven and has a 300-mile (483-kilometer) range, will go for $49,900.

Others automakers, including BMW, General Motors and Daimler, are also developing electric-powered vehicles, including hybrid cars that boast a small gas or diesel engine backed up with an electrical motor, and say the prices will drop as bulky batteries become smaller, faster to charge and easier to replace.

Daimler said it will put its first electricity generating fuel-cell car on the road by the end of this year, the B-Class F-Cell. It will also develop a high-performance electric sports car, its Mercedes-Benz SLS AMG.

Volkswagen AG will put its new E-Up! electric compact into production in 2013. VW did not disclose how much it will cost or when it might be available in the U.S. It said the battery will give drivers a range of around 80 miles, or about 130 kilometers.

Analysts expect global production of purely electric cars to expand rapidly in the coming years. IHS Global Insight forecast that it will grow from nearly 9,500 this year to more than 58,000 in 2011.

Electric cars generally run between 40 and 120 miles (60 to 200 kilometers) on a single charge, while taking anywhere from two to seven hours to fully recharge.

Analysts have long contended that a roadblock to the deployment of electric cars has been the lack infrastructure to ensure they can be charged, whether at home, at the office or at stations in the city or along a highway. Building that infrastructure could cost billions and billions of dollars.

Europe is likely to get charging networks faster than the U.S. because of its higher gasoline prices, greater population density and compact size compared with the United States.

In the U.S., Japan's Nissan Motor Co. has taken the lead, forming partnerships to bring electric vehicles and charging stations to Seattle, Tennessee, Oregon and elsewhere. For example, Arizona's Electric Transportation Engineering Corp. recently struck a $100 million deal to build charging stations for Nissan's planned Leaf electric car.

Elsewhere around the world, Renault Nissan has teamed up with Palo Alto, Calif.-based Better Place, which is building a network of charging stations and stands in Israel and Denmark and plans to do the same in Australia. Drivers will be able to plug their cars in or swap out their depleted batteries for freshly charged ones.

Better Place said the networks could operate like cell phone service, with customers buying a certain number of miles in advance or getting an unlimited amount for a set fee with a contract.

To help bring Germany up to speed, its government plans to spend some euro500 million ($730 million) on a plan that aims to put 1 million electric cars on the road by 2020. The figure includes euro170 million for battery research.

Analysts say it will take at least a decade to see if electric cars can keep pace with, or surpass, gas-powered automobiles. The massive, sensitive, costly and fast-depleting batteries that take the place of internal combustion engines are expensive to produce, as well.

"The industry needs to continue to overcome the obstacles of extended range, price and impact on the grid if we're going to be able to deliver a better experience than what consumers currently get," said Shai Agassi, founder and CEO of Better Place. -StarBiz

High Level of PCT Fees

Respondents of PCT survey, complained of the high level of fees charged to small and medium enterprise. Some of the respondents prefer a differentiated fee structure, similar to small-entity fee advocated by USPTO.

Currently, individual inventors of third world country, such as Malaysia enjoy a 90% fee reduction for PCT filling fee. Americans and Europeans which participated in the survey did not enjoy the fee reduction. The respondents wished that small and medium enterprise can enjoy some form of fee reductions.

The most frequent complain identified in the survey highlights the timeliness delivery of search and examination report. Some comments called for fee refunds when reports are sent late.

The respondents would also like to see more reliance and acceptance of PCT search report and examination results by more national Offices.

The survey was conducted online by WIPO. The report can be accessed here.

McDonald's loses trademark fight against M'sian McCurry

US fast food giant McDonald’s lost an eight-year trademark battle to prevent local restaurant McCurry from using the ‘Mc’ prefix in a precedent-setting judgment by Malaysia’s highest court.

The Federal Court ruled Tuesday that McDonald’s cannot appeal against another court’s verdict that had allowed McCurry to use ‘Mc’ in its name. The owner says McCurry, which serves Indian food, is an abbreviation for Malaysian Chicken Curry.

The ruling by a three-member panel of the Federal Court ends all legal avenues for McDonald’s to protect its name from what it said was a trademark infringement.

McDonald’s will have to pay RM10,000 to McCurry, a popular eatery in Jalan Ipoh on the edge of Kuala Lumpur’s downtown. McDonald’s lawyers refused to comment, except to say the company will abide by the judgment.

McCurry lawyer Sri Devi Nair said the ruling means McDonald’s does not have a monopoly on the prefix ‘Mc,’ and that other restaurants could also use it as long as they distinguish their food from McDonald’s.

“This is a precedent for everyone to follow,” he said. The Appeal Court said McCurry’s signboard has white and grey letters against a red background with a picture of a smiling chicken giving a double thumbs-up, in contrast to McDonald’s red and yellow “M” logo. McCurry also serves only Indian food, not competing with McDonald’s Western menu, the court said.

McDonald’s began operations in Malaysia in 1982 and has 137 outlets in the country. -- AP

Kodak: An Invented Term

The term Kodak is an invented term; the best arrangement of alphabets for a trademark. Invented term has the strongest chance for being registered due to its distinctiveness. Remember that trademark is suppose to help consumers to associate a brand with its product origin.

On this day, September 4, 1888, George Eastman applied for the registration of Kodak, prior to the founding of Kodak Company in 1892. The letter "K" had been a favorite alphabet of George Eastman. Together with his mother, he devised the name Kodak with an anagram set. He used three principal concepts to create the name:

1) It must be short
2) It could not be mispronounced
3) It could not resemble anything else or be associated with anything other than itself.

The 'Kodak' trademark is a successful brand because it is short and simple. It uses only two syllables to pronounce. Consumers would have low chances of mispronouncing or misspelling the term. The third principle resonates with trademark laws; that a mark should be distinctive.

Arguments Against Pre-Grant Publication

Some opponents to pre-grant publication have argued that any disclosure of a patent application prior to the grant of the patent is unfair. Specifically, it has been argued that pre-grant publication unfairly destroys the secrecy of an invention and therefore deprives the inventor of his/her trade secret rights should the application fail to issue to patent. The publication of a patent application is tantamount to the publication by a government of the confidential information of the patent applicant. While the patent applicant agrees to this when an application is filed, the patent applicant is provide with the choice of filing for patent protection and agreeing to pre-grant publication or not filing a patent application and risk loss of control of a new technology which can not be maintained confidential on a long term basis. The thoughts of the patent law revision committee in the Netherlands in the 1950’s balanced this by suggesting that publication occur after the search is received. Once the search was considered, a patent applicant would have time to determine if the patent process should be continued or abandoned (in which case a patent application could be withdrawn from publication).

It has been argued that the 18 month time period is a disadvantage to small inventors because they often need a longer secrecy period for "consolidation of the invention idea and the completion of its possible applications". For example, early publication of an application can allow "patent flooding" by competitors, especially large corporations. Patent flooding is a practice where competitors attempt to limit the scope of a patent application by filing several subsequent applications "around" the claims of the original. As a result of pre-grant publication, small entities may not be able to protect themselves from "secondary products" created by large competitors from the teaching in a published application of a small entity. Thus a large competitor may be able to work off of the research and development of a small company and be first to launch new products.

Other arguments advance in opposition to 18 month pre-grant publication include claims that submarine patents are no longer a significant problem in modern patent systems, and that international harmonization merely for its own sake is not necessarily a good thing. - FICPI newsletter

Arguments Favoring Pre-Grant Publication

A major advantage of pre-grant publication is that it reduces uncertainties involved in product or process clearance searches. If a patent application is not published until it issues to patent, then a company that proposes to introduce a new product or commence using a new process will only be able to evaluate potential infringement issues based on issued patents. Pending patent applications would not be available to be considered. Further, as the pendency period for patent applications is currently increasing in many countries, then the period of uncertainty would be increasing without pre-grant publication. Pre-grant publication shortens this period of uncertainty.

It has also been argued that pre-grant publication may stimulate ideas and promote innovation, as future inventors may be inspired by or motivated by the disclosures of the patent applications that become publicly available. For example, patents and patent applications can be valuable technical documentation that can be used to assist in the development of new technologies by documenting process that work or new apparatus that may be used.

Further, it has been argued that disclosure of pre-grant applications could reduce inefficiencies caused by duplicate inventions. A company may view the patent applications of its competitors and alter its research and development activities to lines of inquiry that are not being pursued by its competitors. This can result in the avoidance of two companies developing similar technologies and the consequential infringement suits that may arise and cause a delay in new products or processes being commercially adopted.

On a similar point, it has also been argued that the early disclosure of advances, which occur due to pre-grant publication, will stimulate new ideas and promote invention in promising fields of research. Early publication will provide a record of promising areas of research and result in additional research being undertaken in such promising areas.

Proponents of the adoption of pre-grant publication as part of the laws of the United States have also argued that pre-grant publication is a necessary step toward the international harmonization of patent laws. Further, it has been argued that harmonization may lower trade barriers and may be particularly valuable to United States companies that would otherwise face substantial costs dealing with several different types of application processes.

Another argument advanced in favor of pre-grant publication of patent applications by the United States is the elimination of so-called "submarine patents". A submarine patent can be understood as a patent application that takes advantage of pre-grant secrecy (particularly in the U.S.) by maintaining broad claims in an emerging technology area in a pending application for a long period of time. When the particular technology at issue becomes economically significant, the submarine patent "surfaces" and is used to hold "new technologies as economic hostage". Mandatory publication of pre-grant applications can eliminate the threat of submarine patents and increase certainty in the marketplace. - FICPI newsletter

Origin of 18 Month Pre-grant Publication Period

The first reference to an 18 month time period has been traced to a 1956 preliminary report by a patent law revision committee in the Netherlands. This report suggested that patent applications should be laid open to the public within 8 months after the initial searching had been completed. As the initial searching was expected to be completed at 18 months from filing, publication should have occurred at 26 (18+8) months from filing. The patent law committee also suggested that pre-grant publication practices of the Scandinavian countries and the Federal Republic of Germany be taken into consideration when deciding on the appropriate publication time period.

By the early 1960s, portions of the Dutch proposal appear to have been referenced by patent law review committees in the Scandinavia countries which make reference to an 18 month pre-grant publication period in the Netherlands (as opposed to the 18+8 month publication period that was actually proposed). Contemporaneous patent law reform discussions in Germany described the 18 month time period as an element of the "Swedish proposal". Subsequent Dutch examinations of Scandinavian and German domestic patent laws would then reveal what appeared to be a regional consensus to adopt an 18 month publication period.

Following these discussions, the Netherlands was the first country to formally adopt an 18 month mandatory publication period in 1964, but it would not be the last. The Netherlands actions were quickly followed, and 18 month mandatory publication periods were instituted by Denmark, Finland, Norway, Sweden and Germany in 1968 and by France in 1969. Therefore, by the end of 1969, an 18 month pre-grant publication period was the consensus standard of these seven European nations.

The international publication provision of the Patent Cooperation Treaty (PCT), Article 21, was also drafted in the late 1960s. The preliminary publication provision contained in the 1968 draft made no reference to an 18 month publication period; however, the 18 month mandatory publication period appears in the 1969 draft version. No information has been located as to why the 18 month term was incorporated into the 1969 draft. The 1969 version of Article 21 was adopted at the Washington Conference 1970 and therefore incorporated into the published version of the PCT.

As a result of its inclusion in the PCT, subsequent attempts by states to harmonize their domestic patent laws with international standards have resulted in the domestic adoption of the 18 month mandatory publication period. - FICPI newsletter