This case study looks at how how I used the IPE process to obtain a clear written opinion and the PCT PPH to obtain patent protection in many countries around the world for valuable intellectual property relating to dynamic implant simulation technology.
When obtaining patent protection in countries around the world, one usually files an initial application (called the basic application) and then subsequently files each foreign application on the basis of the basic application, claiming the earlier filing date of the basic application.
However, in doing so, one may encounter the same examination objections from each examiner in each country, fighting the battle on many fronts, so to speak.
To avoid this, we recommend applicants use the PCT application process, colloquially referred to as the international patent application. The PCT application process is a single application that then splits apart into each country of interest down the track, usually at the 30 or 31 month deadline, referred to as entering the national phase.
During the PCT application process, there is a centralised examination which, if resulting in a good result (a clear written opinion), can be used to persuade each examiner in each subsequent national phase country to accept the application.
The Centralised examination of the PCT application can avoid having to respond to multiple similar examination reports in each country down the track, saving time and money
In this way, cost can be saved in not having to respond to the same examination objections in each country.
Furthermore, the recently introduced PCT Patent Prosecution Highway (PCT PPH) allows for expedited examination in each country on the basis of a favourable written opinion, potentially saving years before a patent is granted.
The PCT Patent Prosecution Highway (PCT PPH) is used to expedite examination in each country.
The Simulation Patent
The present patent of this case study relates to a computer implemented method, computing device and computer readable storage medium for providing alignment information data for the alignment of an orthopaedic implant for a joint of a patient.
In plain terms, the technology of this patent allows for the alignment of implants in accordance with patients specified desired posting plant activities. For example, if a patient wishes to play golf, or tennis, the dynamic simulation takes this into account and generates optimised alignment data to allow for optimal performance.
A copy of the published patent specification can be found here.
The First Written Opinion
This patent application started off at the filing of the provisional patent application, followed by the filing of the PCT application 12 months later.
Shortly after filing the PCT application, the first written opinion issued, during which the examiner asserted that the examiner was of the opinion that the main claim was obvious in light of a number of prior art citations:
As such, in order to rectify this, I recommend to the applicant that we file a demand for international preliminary examination so as to obtain a clear written opinion.
International Preliminary Examination
During international preliminary examination, one can make arguments and amendments to the claims in order to convince the examiner that the claimed invention is novel and inventive. If the examiner agrees, the examiner will issue a clear written opinion.
International preliminary examination is used to obtain a clear written opinion.
In the present case, I prepared both amendments and arguments which are published here.
Specifically, an extract of the arguments are shown as follows:
And an extract of the claim amendments are shown as follows:
Second Written Opinion
Having considered the above arguments and amendments, the examiner issued a clear written opinion stating that all of the present claims were both novel and inventive:
Having a clear written opinion is advantageous because it persuades each examiner on each subsequent country to accept the patent application.
A clear written opinion can persuade each national phase examiner to accept the application
Entering each National Phase
Thereafter, the applicant entered the national phase in various countries around the world including the US.
Now, in practice, examiners often times refer to each others work and as such, if an examiner raises an objection in one country, so too do other examiners in the other countries.
As such, it is advantageous to obtain acceptance in the United States and Europe because, generally, examination and these regions is most stringent. If one can obtain acceptance in these jurisdictions, the other countries can be easily persuaded to similarly accept the application.
Examination in the United States and Europe is the most stringent.
PCT Patent Prosecution Highway
As such, our strategy was to obtain acceptance in the US first, so that we could then easily obtain acceptance in the other countries also.
As such, for the US, we files the US application in August 2013, and subsequently requested expedited examination under the PCT PPH.
Usually, examination and the US can take several years, but using the PCT PPH, in this case, we were able to obtain acceptance some 11 months later.
In summary, using the International Preliminary Examination process (IPE) to obtain a clear written opinion can be invaluable in saving both time and money and not having to make the same or similar arguments to each examiner in each country around the world.
Furthermore, using the PCT Patent Prosecution Highway, one can expedite examination in each country, by several years if necessary.