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The Role of LPO in Navigating the Patent Reform Storm
New US patent law, enacted under the America Invents Act, is changing the process for patent filing, prosecution and litigation. Across the Atlantic, the European Patent Organisation (EPO) remains engaged in its own process of reform aimed at creating a single patent valid throughout the EU, while lowering costs and simplifying the administrative procedures. The Legal Process Outsourcing (LPO) industry can play a key role in helping law firms and in-house counsel navigate these unchartered waters and build a strategic intellectual property program to thrive in a competitive global market.
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Given the exponential growth in the global IP outsourcing industry, the Global Outsourcing Association for Lawyers (GOAL) is holding an international conference to address IP outsourcing issues amidst a climate of US and European patent reform. The Global IP Outsourcing Conference will take place on 17-18 February 2014 in San Francisco, California, USA. The conference will gather LPO experts, IP lawyers from in-house and private practice, and government representatives to discuss issues and opportunities related to “The Role of LPO in Navigating the Patent Reform Storm.”
The San Francisco Global IP Outsourcing Conference will offer strategies for business development.
As a result of US patent reform coupled with an increase in patent applications globally, the IP outsourcing industry will likely reach $3 billion by the end of 2013. Large law firms and legal departments outsource much of their patent prosecution processes already, including prior art searches, patent illustrations, patent proofreading, patent drafting, and patent docketing support. The outsourcing of patent services is high-value work for LPOs, particularly in India, and the recent changes to the US patent system has the potential to generate an increased volume and scope of work for IP outsourcers.
The San Francisco Global IP Outsourcing Conference will address major changes to US patent law.
Two of the most significant changes to US patent law that will affect IP outsourcing include: (1) switching to a “first-to-file” system, and (2) expanding the definition of Prior Art.
- First to File
The new law harmonizes the American priority rules with those of most industrialized nations. Instead of a “first to invent” priority, the “first to file” will have priority. This provision encourages more preliminary filings of emerging inventions rather than fully developed ones. For LPO providers and their clients, the “first-to-file” priority is good news. This provision will give greater certainty to the limits of an indemnification against infringement, since infringement can be more easily discerned under the new priority rule.
- Definition of Prior Art
The AIA also expands the opportunity for third parties to submit prior art for consideration during patent prosecution. Third-party prior art submission is useful because it will assist USPTO Patent Examiners in determining which patent applications are worthy of grant. The intended result is higher-quality patents that are less likely to be challenged further down the patent pipeline. Essentially, foreign “prior art” will now be eligible for denying or invalidating a US patent, which internationalizes the standards. Foreign LPOs and manufacturers welcome this change.
The conference will address Export Control Regulations.
In 2008, the US Patent and Trademark Office issued a notice which warned that US export controls might apply to transfers of technical data in the context of outsourcing of patent preparations. IP experts will describe the application of U.S. export controls and sanctions to the export of technical data in connection with patents.
With the continuing patent reform storm, LPOs around the world have an opportunity to chart a course for growth. And, savvy LPOs can easily establish a niche for themselves in the patent outsourcing/offshoring market. Stay informed of developments in the IP outsourcing industry and the San Francisco Global IP Outsourcing Conference, by connecting to GOAL via www.connect-goal.com.