The Evolving Effect of Working Requirements in Foreign Jurisdictions

By Mandy K. Jenkins

The patent rules of many foreign jurisdictions contain working requirements. A working requirement is the requirement that, after a certain number of years, the patented invention be worked on a commercial scale in the country. The effect of these requirements has evolved in the last few years in many countries due to amendments to their patent laws.

Among the jurisdictions that have working requirements are India, China, Canada, and Australia. Generally, information must be submitted each year regarding the working of the invention in the country. The patent holder must disclose whether the invention is being worked in that country. If the invention is being worked, information such as whether the invention is actually worked within the country or imported, the quantity and value of the invention, and whether any licenses have been granted must be provided. Failure to submit the required information can result in a monetary fine and loss of patent protection. Continue reading

Leveling the IP Field For Minorities

Why a Game Driven by Creativity is Worth Playing

By Celina M. Orr

Although minorities have grown to recognize the rewards of the legal profession,
intellectual property law continues to be under-represented. Intellectual property (patents, trademarks, copyrights, and trade secrets) plays an important role in an increasingly diverse range of areas, from literature and the arts to genetic engineering. Yet there is a relatively small pool of diverse attorneys in the practice of intellectual property (IP) law.

At least in part, this is due to the technical qualifications (a degree in science or engineering) that one must have in order to sit for the patent bar exam. The small number of minorities with such a background that go into law school contributes to the small pool from which employers can diversify their firms or companies. Further, because of the variety of careers that the practice of law offers, many qualified potential minority candidates may never be exposed to the IP field. Finally, even as the number of minority candidates steadily rises, another obstacle minorities face is the limited number of mentors to which we can relate and vice versa. One of the ways to surmount all of these obstacles is to educate young minorities, law students, and attorneys about the great rewards and opportunities that a career in IP has to offer. Continue reading

Strengthening Your Patent Portfolio Through Reexamination

By Zach W. Hilton

In recent years, the United States Patent and Trademark Office (“PTO”) has been plagued with a substantial backlog of pending patent applications awaiting examination. The PTO reports that it now takes a little over two years on average to provide an applicant with a first office action. As a result, the PTO has been under increased pressure to accelerate the examination process.

One means by which the PTO attempts to decrease average application pendency is by increasing the productivity of patent examiners. Guidelines promulgated by the PTO to govern examiner productivity provide that an examiner should allot no more than 16-36 hours for the entire examination of an application, depending on the examiner’s experience level and the complexity of the technology. While the majority of examiners do an outstanding job considering the time constraints under which they operate, examiners simply do not have the time to perform a comprehensive search of the prior art (patents, pending applications, printed publications) before making a determination as to patentability. Further, patent applicants are often themselves unaware of material prior art that may have a bearing on the patentability of the invention. Continue reading