Simplified Patent Process Flowchart
Since clients frequently want to know the process of getting a patent, we have made a simplified flowchart of the basic steps.
To be clear, this simple flowchart does NOT purport to cover every possible scenario; there are other possible complexities, and an application can have several “final” office actions. It should only serve as a general idea of the basic process for obtaining a US patent. PCT and other foreign patents are different.
We are officially moved into our new offices. We are now located at 19900 MacArthur Blvd. Suite 810, Irvine CA 92612, a few miles south of the old office building.
Here are a few pictures of the new place.
Fish IP Law Is Moving!
Fish IP Law is moving to a new location this weekend. We should be completely moved in by Wed. Dec. 14. The new offices will be located at 19900 MacArthur Blvd. Suite 810, Irvine, CA 92612.
Update on the European Unitary Patent – Coming April 1, 2023
The new European Unitary Patent (UP) system is now coming into effect on April 1, 2023 for 17 EU member states (Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden), while other EU countries are expected to join at a later date.
In our previous article, we highlighted some benefits of the new UP system, among which there is the creation of the Unitary Patent Court (UPC), which will have jurisdiction over the infringement and validity of UP patents and over all signing member states. The UPC will also have jurisdiction over existing European Patents, but the holders of such patents will have the option to “opt out” of the UPC.
Should owners of existing European Patent opt in or opt out of the UPC?
We think that the UPC jurisdiction will be highly advantageous, considering that, first of all, it will be cheaper to litigate in and it will prevent forum shopping among member states. Also, a UPC decision, valid and enforceable in all signing member states, will prevent diverging decisions and lack of legal certainty. One foreseeable and important disadvantage, however, is that a patent deemed invalid by a UPC decision will also be automatically invalidated in all signing member states.
In any case, the UP system will undoubtedly be worth it for those seeking protection in numerous member states, as the cost of filing through the UP system is scheduled to be about the same as filing in five individual states.
Read more at Unitary Patent Guide – FAQ
The European Unitary Patent – Coming Soon
A new European Unitary Patent (UP) system is expected to come into effect in the second half of 2022, making it possible to get patent protection in up to 25 EU Member States with one single application.
Under the current system, once granted by the European Patent Office (EPO), European patents must be validated, maintained, enforced or revoked in each member state individually. Requirements usually vary between countries, which makes the process complicated and costly.
The UP seems to have several important benefits:
- A simplified prosecution, with no extra requirements (such as translations) and fees.
- One renewal system and all the administration post grant handled centrally through the EPO.
- A Unitary Patent Court (UPC) dealing with infringement and validity of UP patents and European patents, and having jurisdiction over all signing member states (see here for the list).
- Harmonization of substantive law, which should make patent prosecution in Europe much easier to navigate and hopefully prevent inconsistent decisions.
- A transitional period of seven years with the option of opting out of the UPC jurisdiction for classic European patents, in favor of litigation before national courts.
At Fish IP Law, we remember countless occasions in which the current system has caused delays, expenses and, put quite frankly, headaches. For example, recording the transfer of a granted patent requires recordation in each member state in which the registration was validated. Thus, a simple recordation can involve communicating with several foreign associates, preparing and executing different forms and documents and spending a considerate amount of money.
The expectations for the new simplified UP system are high and we hope they will be met with a positive result.
Read more at Unitary Patent Guide – FAQ
The Latest Case in Enforcement of Design Patents
In 2021, Wepay Global Payments LLC obtained a design patent (US Pat. No. D930702) for “a display screen portion with animated graphical user interface,” as shown in the pictures below.
The broken lines, as well as the process in which one figure transitions into another, are not part of the claimed design. It is therefore difficult to determine what this design patent is actually claiming. This, however, has not stopped Wepay from trying to enforce the patent.
Wepay has filed 11 infringement suits against PNC, Apple, Tesla, Amazon, Bank of America, PayPal and other well-known companies. Wepay alleges infringement of the design covered by the ‘702 patent, which includes an icon with three squares that simulate a QR code, a screen where the user can choose the recipient of the money, and a display screen with a zero value, where the user can input the amount.
While on one hand a Texas court denied PayPal’s motion to dismiss, on the other a Pennsylvania court agreed with PNC in finding the two apps dissimilar, the only similarity between the two being limited to basic geometric shapes, with differences notable enough for an ordinary observer to distinguish them. In particular, the court pointed out that any similarity between the two designs appears like a QR code, which has been invented before the ‘702 patent.
Given the various lawsuits filed by Wepay, it is expected that the Pennsylvania decision will be appealed. It will be interesting to monitor the process of the ongoing cases, as they will likely provide some insight on the application of the test for design patent infringement.
Dashed Lines Broaden the Scope of a Design Patent, But this is Ridiculous
A Tale of Two Motions: A Closer Look at Motions to Dismiss in Design Patent Cases