IP5 offices CS&E pilot project: 500 PCT applications over the next 2 years will receive within 9 months an International Search Report jointly prepared by the five largest IP offices (CN, US, EP, JP, KR)

The world´s five biggest IP offices (collectively named IP5) started on July 1, 2018 a Collaborative Search and Examination (CS&E) pilot project to allow applicants of PCT applications upon request to receive an early search report including a provisional written opinion on patentability drawn up jointly by examiners of the Chinese, US, Japanese, Korean and European patent offices. This allows applicants to get an early assessment of the chances of success of a patent application based on a broader perspective of different prior art databases, search strategies, languages, and examiner expertise.

The applicant-driven procedure (see official illustration) starts with a request filed by the applicant with the Receiving Office, which will be transmitted to the International Bureau (IB) and the competent International Searching Authority (ISA), which has to be one of the IP5 offices.

IP5 pilot

The competent ISA will then assesses whether the requirements (see below) are met and will notify the applicant and the IB whether or not it accepts the request for participation in the pilot. The competent ISA (now main ISA) then carries out a search, prepares a search report and a provisional opinion on patentability. These are made available to the “peer” examiners at the other four IP offices through a safe ePCT-based platform. The peer examiners will provide the main examiner with their contributions, taking into consideration the provisional international search report and written opinion of the main ISA. The final international search report and written opinion will be established by the main examiner after consideration of the contributions from the peer examiners, which is in turn submitted to the applicant or its representative, if possible, within the time limit under Rule 42.1 PCT, i.e. within nine months from the earliest priority date of the PCT application.

Each of the participating offices will admit about 100 PCT applications to the pilot throughout a two-year period starting on July 1, 2018 such that in total 500 PCT applications will be participating. A common set of quality and operational standards will be applied by all collaborating offices. The CS&E pilot project is scheduled to continue until June 1, 2021 and will then be jointly assessed by the participating offices.

During the pilot phase the cost of the jointly prepared search report and written opinion is that of a normal PCT chapter I search at the competent ISA. The applicant thus gets the additional search and examination results from the other four offices for free. If the CS&E will be implemented as a regular product, however, higher fees are to be expected.

The requirements for participating at the CS&E pilot project are the following:

  • The request for participation in the pilot must be submitted using the standard form and filed together with the international application at the Receiving Office or the IB.
  • Until languages other than English are accepted into the pilot, the participation form and the international application must be filed in English.
  • One applicant cannot file more than 10 requests for participation in the pilot at a same main ISA.

If the pilot turns out to be successful, the collaborative work of peer examiners of the IP5 offices could bring a huge benefit for patent applicants. It may also allow a glimpse at a future international patent system harvesting international cooperation and standardization to avoid duplicated work and bringing faster, more cost-effective procedures for the applicants. Earlier knowledge about the patentability of an application also brings benefits to the industry as a whole and contributes to make the patenting process itself more transparent and efficient.

twitter: @patentlyGerman

 

CRISPR EP patent update: 7 oppositions filed against Berkeley CRISPR EP patent

The patent dispute relating to the revolutionary CRISPR-Cas9 gene-editing technology between the Broad Institute (jointly operated by Harvard and MIT) on the one side and UC Berkeley on the other side is is heating up in Europe.

On January 17, the Broad Institue lost its first granted CRISPR EP patent in first instance opposition hearings. An appeal against this decision has immediately been filed on January 18 by the patent proprietor.

On the other hand, the University of Berkeley (together with the University of Vienna and Emmanuelle Charpentier) filed it´s first patent relating to CRISPR technology even before the Broad Institute already on March 15, 2013 claiming the earliest priority on May 25, 2012. The resullting patent EP 2 800 811 was granted with main patent claim 1 as follows:

1. A method of modifying a target DNA, the method comprising contacting the target DNA with a complex comprising:

(a) a Cas9 polypeptide and
(b) a single-molecule DNA-targeting RNA comprising:

(i) a DNA-targeting segment comprising a nucleotide sequence that is complementary to a sequence in the target DNA, and

(ii) a protein-binding segment that interacts with said Cas9 polypeptide, wherein
the protein-binding segment comprises two complementary stretches of nucleotides that
hybridize to form a double stranded RNA (dsRNA) duplex,

wherein said two complementary stretches of nucleotides are covalently linked
by intervening nucleotides,
wherein said contacting is in vitro or in a cell ex vivo; and
wherein said modifying is cleavage of the target DNA.

A restriction to either eukaryotic or procaryotic cells (which played a major role in the parallel US interference proceedings) seems not to be present. The contacting of the target DNA to be modyfied by the method according to the claim, however, has to take place in vitro or in a cell ex vivo. 

The mention of grant of the patent was published on May 10, 2017.

Within the 9-month opposition term ending February 10, 2018 seven parties have filed an oppositions, namely:

Opponent 1: DF-MP Dörries Franck-Molnia & Pohlman
Opponent 2: Onno Griebling
Opponent 3: TL Brand & Co. Ltd.
Opponent 4: HGF Limited
Opponent 5: Jones Day
Opponent 6: Allergan Pharmaceutical International Ltd.
Opponent 7: Elkington & Fife LLP.

Of these opponents only one, Allergan Pharmaceutical International Ltd., is clearly identifiable, the other six oppositions are filed by IP firms acting as so-called “strawmen” for opponents which do not want to be identified. This practice explicitly allowed by the EPO is common in the pharmaceutical industry in Europe.

All opposition grounds are raised, namely lack of novelty and lack of inventive step, lack of enabling disclosure of the patented technical teaching, and extension beyond the content of the original application (added matter). Despite the huge amount of documents filed, a first instance decision in these opposition proceedings can be expected in approximately 18 months.

 

Disclaimer: Neither I myself nor the patent firm Betten & Resch, of which I am a partner, are representing clients involved in any patent cases relating to CRISPR-cas9 technology.

Twitter: @patentlyGerman

Blockchain patent activity increases – but granted patents are still rare in this field

Since late 2015 a considerable media hype could be observed around cryptocurrencies and blockchain technology, or, more generalized, distributed ledger technology. Is this hype reflected by a corresponding rapidly rising number of patent applications ?

The following diagram shows the number of US-, EP- and PCT patent applications (source: Derwent Innovation patent database) since 2011 as well as granted US and EP patents containing the expressions “blockchain” or “bitcoin” or “distributed ledger” in the title, the abstract, or the claims. The x-axis represents the year of the first filing date (priority date) of a patent family; applications filed both e.g. in the US and in Europe are thus counted only once.

Blockchain patents Feb 2018

The diagram shows a siginificant increase of the patent activity from 20 patent applications in 2013 to 324 patent applications in 2016, but not a hype. One must keep in mind, however, that patent applications are in general published only 18 months after the earliest filing date. The development in the last 18 months is thus not visible in this diagram. Moreover, many blockchain projects are open source and do not seek patent protection.

The number of patent grants (which are publidhed without delay) shows only very modest numbers. In 2017, 21 US patents and 1 EP patent relating to blockchain technology have been granted.

The top 10 patent applicants (assignees) are shown in the following diagram:

 

Blockchain patent applicants Feb 2018

US applicants dominate, lead by Mastercard with 44 applications, bearing in mind that Chinese national applications are not included. The most important applicants from Europe are Nchain, the vehicle of “would-be Satoshi Nakamoto” Craig Wright and British Telecom, owning the single granted European patent relating to blockchain technology.