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Patents

The value of the decision-maker feature

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For illustrative purposes, consider one prominent British patent firm (the firm’s name is omitted for privacy purposes).

Overall, the considered representatives received 8,852 and sent 927 cases between 2015 and 2020. These numbers include both cases where applicants and the focal firm were in charge of the international patent application flow decision.

International case exchange: cases sent/received

As a side note, in Patent-Pilot’s definition, cases are not similar to filings, and the number of cases can be lower than the number of filings. In essence, a case is all applications within the same patent family represented by the same agent.

If we analyze the important partners and the number of sent and received cases without implementing the decision-maker filter, the picture looks somewhat unbalanced. The respective firm appeared to be reluctant to send work back to the majority of its international partners.

One way to find a partner for mutually beneficial exchange is to look at the overall volume of filings that this candidate sent to or received from other IP law firms.

However, the overall volume itself is a misleading indicator.

Indeed, the Patent-Pilot algorithm predicts that in 29% of all sent cases, the firm’s clients were presumed decision-makers and in 74% – for received ones. In 71%, the firm itself determined the subsequent foreign representatives, and only in 26% – it was in charge of the decision from where and from whom to receive the filings.

Therefore, there is a clear need to filter out patent filings for which the clients’ preferences defined IP law firms in the foreign jurisdiction and use the decision-maker filter. Now the picture looks somewhat different. The focal IP law firm was in charge of 665 sent cases and only 2,303 received cases. These numbers represent the actual share of the volume that the considered firm can potentially send to the foreign partners.

International case exchange: cases sent/received with decision-maker filter

Further, once not bound by the applicants’ choice of the subsequent foreign representatives, the patent firm tended to establish relatively balanced relations with its partners. Please note that the list of partners displayed on the left-hand side of the graph also slightly changed.

As evident from the discussion above, to discern the actual international filing strategy and estimate the number of filings sent and received by a potential foreign partner, it is essential to disregard cases for which clients’ preferences predetermined the international case exchange. It is, therefore, crucial to understand who was the decision-maker behind the case flow.

Decision-maker information is not available anywhere in the raw patent data. In this regard, Patent-Pilot’s algorithm and decision-maker feature are of a high value for the IP law firms as it allows to see the behavior and find the right partner IP law firms.

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Source: https://www.patent-pilot.com/en/2021/06/07/9675/

Patents

Rank: The largest US IP law firms for PCT filings 2020

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On the contrary, OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, while being the second-largest firm in the US, held only position number 43 in the PCT rank. The reason is that the representative has a strong international business orientation. To illustrate, OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP prosecuted cases for well-established Japanese clients, namely Toshiba, Toyota, and Mitsubishi.

Along the same lines, SUGHRUE MION, PLLC – the 3rd largest IP law firm – also prioritized the international applicants such as Samsung, Toyota, Fujifilm, and NEC and was even not among the 50 firms outlined in the list above.

Conversely, WILSON SONSINI GOODRICH & ROSATI – 22nd in the country – represented a substantial amount of PCTs and got to the 5th position in the rank of the most prominent American firms filing for PCTs 2020. The review of the firm’s portfolio showed its high focus on domestic clients.

Overall, the United States is an active innovator and an attractive spot for incoming foreign patent applications. This gives American representatives freedom to decide which business development approach to prioritize. Therefore, the number of represented PCTs is not associated with the firm’s prominence but rather with internal strategic considerations or historical dynamics. This differentiates the US from most of the European top PCT representatives, for which the prominence of the firm is associated with the volume of prosecuted PCT filings (except for Germany). For more details, read the article about the top 50 European IP law firms filing for PCT in 2020.

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Source: https://www.patent-pilot.com/en/2021/06/22/rank-the-largest-us-ip-law-firms-for-pct-filings-2020/

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Patents

15000+ patents granted so far, over 36000+ patent applications examined

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15000+ patents granted so far, over 36000+ patent applications examined

Weekly Patent News - Patent and industrial design statistics

This week’s Patent and Design data has been compiled from the Official journal of patents and designs, published by the patent office on the 18th of June 2021. These statistics are presented to you by the Patent attorneys and experts of BananaIP Counsels, India’s leading Intellectual Property Firm.

INDIAN PATENT STATISTICS

A total of 667 patent applications have been published in the 25th issue of the Patent Journal, 2021. Out of the 667 applications published in the journal, 162 applications account for early publications while 505 applications account for ordinary publications or publications occurring after the 18 – month period. A total of 469 applications have been granted last week as compared to 544 grants in the week preceding the last thereby marking a decrease of about 13.79%

Early Publications

City Previous Week This Week Percentage of change
Delhi 17 51 200% increase
Mumbai 22 30 36.36% increase
Chennai 14 68 385.71% increase
Kolkata 1 13 1200% increase
Total 54 162 200% increase

Ordinary Publications

City Previous Week This Week Percentage of change
Delhi 57 83 45.61% increase
Mumbai 39 109 179.49% increase
Chennai 50 296 492% increase
Kolkata 51 17 66.67% decrease
Total 197 505 156.35% increase

TOTAL PUBLICATIONS (Previous Week): 251

TOTAL PUBLICATIONS (This Week): 667

Percentage difference: 165.74% increase

FIRST EXAMINATION REPORT (FER) STATISTICS

A total of 963 FER’s were issued last week. Applicants and their agents can check if any of their patent applications have been examined by referring to the journal available here.

City No. of FER Issued
Delhi 446
Mumbai 161
Chennai 282
Kolkata 74
Total 963

Publications under Grant

City Previous Week This Week Percentage of change
Delhi 188 158 15.96% decrease
Mumbai 76 89 17.12% increase
Chennai 191 167 12.57% decrease
Kolkata 89 55 38.2% decrease
Total 544 469 13.79% decrease

Number of Applications published based on ‘Applicant City’

Of the total 667 patent applications published in the journal last week, Delhi, Mumbai, Chennai, Bangalore, Hyderabad and Kolkata have contributed a total of 148 applications. The total applications from each of the previously mentioned cities are as follows – 13 applications from Delhi, 24 applications from Mumbai, 50 applications from Pune, 26 applications from Bangalore, 19 applications from Chennai, 11 applications from Hyderabad and 5 applications from Kolkata.

List of Cities 1st of January till date 11th June 2021 to 18th June 2021
Delhi 407 13
Mumbai 476 24
Pune 404 50
Bangalore 552 26
Chennai 707 19
Hyderabad 364 11
Kolkata 144 5

PATENT STATISTICS SUMMARY (1ST OF JANUARY TILL DATE)

Total early publications 5,047
Total ordinary publications 16,805
Total applications published 21,852
Total grants in Delhi 5,425
Total grants in Mumbai 2,278
Total grants in Chennai 5,207
Total grants in Kolkata 2,261
Total Grants 15,171
Total applications examined 36,556

INDIAN INDUSTRIAL DESIGN STATISTICS

The design office has registered a total of 108 designs this week. The total designs registered from the 1st of January 2021 till date now adds to a total of 4,503 applications.

  • Total designs registered in the previous Week: 104
  • Total designs registered this Week: 108

Total designs registered from the 1st of January 2021 till date: 4,503

Data compiled by Jaya Pandey


About BIP’s Patent Attorneys

The patent news bulletin is brought to you by the patent division of BananaIP Counsels, a top patent and IP firm in India. Led by Senior Partners, Somashekar Ramakrishna, Nitin Nair and Vinita Radhakrishnan, BIP’s Patent Attorneys are among the leading patent practitioners in the country. They work with clients such as Mahindra and Mahindra, Samsung, HCL, Eureka Forbes, to name a few. The patent attorneys at BIP have strong technical and legal expertise in areas such as IT/Software, Artificial Intelligence (AI), Machine Learning, Data Analytics, Electronics and Telecommunication, Mechanical, Automotive, Green Energy, Traditional Medicine and Bio/Pharma domains. The firm is a first choice for clients looking for support in patent filing, prosecution, management and strategy in India, and across the world.

This weekly patent news bulletin is a part of their pro bono work, and is aimed at spreading patent awareness. You are free to share the news with appropriate attribution and back link to the source.

If you have any questions, or need any clarifications, please feel free to write to [email protected]

Disclaimer: Kindly note that the news bulletin has been put together from different sources, primary and secondary, and BananaIP’s reporters may not have verified all the news published in the bulletin. You may write to [email protected] for corrections and take down.

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Source: https://www.bananaip.com/ip-news-center/15000-patents-granted-so-far-over-36000-patent-applications-examined/

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Patents

Success for Womble Bond Dickinson and Geofabrics over railway track beds

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The UK Court of Appeal has dismissed the appeal against a first-instance judgment put forward by geotextile manufacturer Fiberweb. In the original case, which concerns EP 24 30 238, patent owner Geofabrics contended that Fiberweb had infringed EP 238, with the latter party counterclaiming for invalidity. The High Court corroborated this claim.

Geotextiles prevent erosion

The patent covers ‘track bed liner and related methods.’ Geofabrics manufactures Tracktex, a geotextile fabric for lining railway tracks. The technology is also in place to prevent pumping erosion, which is when heavy loads – such as heavy vehicle wheels – force pore water from the underlying soil, such as clay.

The pore water in the eroded material also contains fine particles of clay and silt. Removal of the clay and silt via the pore water over time can cause track bed erosion and track settling.

During the first hearing, the claimant contended that EP 238 provides the basis for this technology. However, the defendant refuted this, relying on two pieces of prior art, ‘Gore’ and ‘Hoare.’

Permission to appeal granted

In the first instance, Geofabrics alleged that Fiberweb’s Hydrotex 2.0, a track bed liner used by UK railway infrastructure provider Network Rail in the laying of railway tracks across the UK, infringed EP 238.

In March 2020, the first instance court under presiding deputy judge David Stone concurred with the allegation of infringement. The court also found the patent valid, dismissing Fiberweb’s counterclaim for invaldity based on lack of novelty, obviousness and insufficiency.

Fiberweb appealed the judgment. Lord Justice Christopher Floyd, who has since retired, granted the party permission to appeal on two grounds. Firstly, Floyd judges that first instance presiding deputy judge David Stone had wrongly found that Fiberweb’s Hydrotex 2.0 fell within the scope of patent claim one.

Secondly, Floyd found that Stone was wrong to conclude that claim one did not lack novelty over International Patent Application no. WO 95/04190. However, in another point of order, Floyd rejected Fiberweb’s alternative contention that patent claim one was obvious over the Hoare prior art. Richard Arnold acted as the patent-specialist presiding judge in the second instance.

Hydrotex infringes Geofabrics

Now the second instance Court of Appeal has upheld the first instance decision, that the Hydrotex product infringes EP 238. The court dismissed claims of patent invalidity for novelty on the basis of Hoare, the first prior art.

The court upheld the decision that Hoare did not provide enough information for a skilled person to perform the invention, as well as corroborating the High Court’s rejection of the attack of obviousness.

According to JUVE Patent information, so far no information is forthcoming about whether Fiberweb will appeal to the Supreme Court. However, the parties will attend a hearing on damages in 2022.

James Love, Geofabrics

James Love

Womble and Withers

Womble Bond Dickinson partner James Love has worked for Geofabrics since 2010. The client moved over with Love from his previous IP boutique practice, James Love Legal, after it combined with Womble Bond Dickinson in 2019.

In the early stages of proceedings, Robert Orr from UK patent attorney firm Urquhart-Dykes & Lord was involved for Geofabrics.

However, the mixed technical patent attorney and litigation skills of the lead Womble Bond Dickinson lawyers meant extensive support was not necessary for the entire case.

Dave Croston, partner at the Leamington Spa office of Withers & Rogers, led the case for Fiberweb. The firm has a long-running relationship with the parent company, Berry Global.

Dave Croston, Geofabrics

Dave Croston

For Geofabrics
Hogarth Chambers (London): Michael Hicks
Womble Bond Dickinson (Leeds): James Love (partner); associates: Tim Barber, Will Hall, Olivia Graham

For Fiberweb
3 New Square (London): Geoffrey Pritchard, Justin Turner
Withers & Rogers (Leamington Spa): Dave Croston (partner, patent attorney); associate: Alexandra Orrin

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Source: https://www.juve-patent.com/news-and-stories/cases/success-for-womble-bond-dickinson-and-geofabrics-over-railway-track-beds/

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Patents

Patent attorney firm HGF opens first office in France

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Vivien Verbrugge (44) is the new addition, set to build HGF’s new French patent practice. In 2003, he began his career at Optogone, a spin-off of the French higher education and research institution École nationale supérieure des télécommunications de Bretagne (ENST), in alliance with France Telecom.

He then joined patent attorney firm Vidon, who at the time worked with Optogone. Here, he qualified as European patent attorney.

Vivien Verbrugge, HGF

Vivien Verbrugge

In 2007, Verbrugge moved in-house, becoming head of patent at Japanese glass specialist AGC Glass. Here, he was responsible for the design and implementation of IP procedures, as well as IPR portfolios and monitoring cross-border litigation.

He qualified as French patent attorney and did a master in law. In 2013, Verbrugge became Group Technology Counsel at Illionois Tool Works (ITW), a client of HGF.

Now Verbrugge is part of HGF’s new French offering, which begins in the northwest of France in Rennes, Brittany. The new office should improve the firm’s pan-European positioning, and expand its mixed litigation and prosecution offering.

Patrick Cordelier, who joins HGF from his post as in-house patent attorney at Sercel, will assist Verbrugge.

HGF expands in Europe

HGF is best known in the UK, with 13 offices across the region. According to the EPO register, companies such as Intel and Samsung Electronics count on its patent attorneys for filing and prosecution. HGF also acted as straw man in the EPO opposition against the Sigma Aldrich CRISPR patent in 2020.

With the new office in Rennes, HGF now has 22 offices in seven European countries. In addition to the UK, Ireland and France, HGF has a presence in Switzerland, Austria, Germany, and the Netherlands.

Across Europe, 100 patent attorneys now work for HGF. Of these, 36 are partners. Additionally, ten litigators work in patent litigation, five of whom are partners.

The firm regularly litigates for its prosecution clients. This is in EPO oppositions, as well as infringement and nullity suits before civil courts.

For example, in Germany, Munich patent attorney and HGF partner Bernhard Ganahl represented Emporia Telecom as a plaintiff in a nullity suit against Seoul Semiconductor at the Federal Patent Court in a dispute concerning LED technology. The client also relies on the firm for filing and prosecution.

Focus on France

For HGF, France – which is gaining in importance in patent law – is important for its pan-European positioning.

Paul Sanderson, CEO of HGF, says, “HGF has always understood the importance of France for our plans of growth in Europe. A strategic decision was made based on the firm’s successes in Germany, the Netherlands, Switzerland and Ireland to open an office in Rennes, France.”

Recently, the French patent market has seen some movement, especially among patent attorneys.

Three French IP firms recently merged to form the new Santarelli Group, while Paris-based IP service provider Questel has taken over NovumIP. Litigation firm Bardehle Pagenberg recently bolstered its Paris office with two patent attorneys.

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Source: https://www.juve-patent.com/news-and-stories/people-and-business/patent-attorney-firm-hgf-opens-first-office-in-france/

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