Rice's European Patents

Let's talk about the patents that Rice University owns that were granted in Europe. Little attention has been paid to these in the past, to the point that one might be surprised to learn Rice owns patents in Europe.

At present, there are 5 active patents assigned to Rice by the European Patent Office (EPO), according to Lens.org.

Among them, the most recently granted was EP 3,033,346 B1, Derivatives of Uncialamycin, Methods of Synthesis and Their Use as Antitumor Agents. Granted January 8, 2020, it was invented by a team of 6 inventors (Kyriacos C. Nicolaou, Min Lu, Debashis Mandal, Sanjeev Gangwar, Naidu S. Chowdari, and Yam B. Poudel) and co-owned by Bristol-Myers Squibb Co. and The Scripps Research Institute. The same patent is also filed with the USPTO, under the same title, and the applications were submitted on the same day. However, there were three patents granted by the USPTO stemming from the first application set: US 9,777,013; US 10,233,192; and US 10,889,590. 

EP 3,033,346: Derivatives of Uncialamycin, Methods of Synthesis and their Use as Antitumor Agents

There is nothing obvious about these five inventions indicating why Rice pursued their ownership in the EU. Only one, EP 2,753,733 B1, Carbon Nanotubes Fiber Having Low Resistivity, High Modulus and/or High Thermal Conductivity and a Method of Preparing Such Fibers by Spinning Using a Fiber Spin-Dope, is co-owner or co-invented by an entity or people located in Europe. In that case, half the invention team and Conyar B.V. are from the Netherlands. 

EP 2,753,733: Carbon Nanotubes Fiber Having Low Resistivity, High Modulus and/or High Thermal Conductivity and a Method of Preparing Such Fibers by Spinning Using a Fiber Spin-Dope

The other four are either co-owned by American entities or Rice entirely. Perhaps there are commercial interests abroad that aren't obvious in a patent.

Expanding results to include expired patents doesn't really increase our results; evidently there are only two more EPO Rice patents. None of them were filed before 1998, and that one expired patent is an outlier by about 4-5 years. A few more results pop up if applications are included, but again the increase is minimal.

EXPIRED! Hemoglobin Mutants with Reduced Nitric Oxide Scavenging

With so few EPO patents, past, present, and potential, we simply must conclude Rice doesn't have much interest in owner European IP.  

Streamline Patent Issuance and Utilize Information from Related Applications

From the Federal Register, Vol, 81, No. 167 (Monday, Aug. 29, 2016) Pages 59197-59199

Request for Comments and Notice of Roundtable Event on Leveraging Electronic Resources To Retrieve Information From Applicant's Other Applications and Streamline Patent Issuance

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SUMMARY: The United States Patent and Trademark Office (USPTO) is continuing its efforts to expedite and improve the overall patent process. Accordingly, the USPTO is exploring how to best utilize available electronic resources to provide examiners with information(e.g., prior art, search reports, etc.) from applicant's other applications as early as possible to increase patent examination quality and efficiency. These other applications, for example, could have the same or substantially the same disclosure (e.g., domestic parent and counterpart foreign applications) as the U.S. application being examined. In addition to improving patent examination quality and efficiency, providing the examiner with this information from applicant's other applications will reduce applicant's burden to provide this information to the USPTO.

    Further, the USPTO is seeking to reduce the issuance time of a patent by eliminating potentially unnecessary information from the front page of the patent. In particular, the USPTO is seeking public comment on what information, beyond a copy of the specification and drawing that is required by statute, should be part of the patent considering that complete information concerning U.S. patents and U.S. patent application publications are accessible to the public via the Patent Application Information Retrieval (PAIR) system.

For more information: https://www.gpo.gov/fdsys/pkg/FR-2016-08-29/html/2016-20703.html

International Cooperative Tool to Manage Patent Dossier and Examination Information

Global Dossier is a "set of business services being developed by the five IP Offices (IP5 - USPTO, EPO, JPO, KIPO, and SIPO) aimed at modernizing the global patent system and delivering benefits to all stakeholders through a single portal/user interface." It's first service, Dossier Access, is a user-friendly interface to find the patent family for an application, as well as related classification and citation data for each member of the patent family. Find the search tool at the top of the Global Dossier introductory page.

Change Regarding Correction of Foreign Priority Claims

Notice from the Federal Register, Vol. 80, No. 193 (Tues., Oct. 6, 2015) pp. 60367-60368

SUMMARY: The American Inventors Protection Act of 1999 (AIPA) provided for publication of patent applications at eighteen months from the earliest filing date for which a benefit is claimed. Thus, the patent laws and regulations require that foreign priority or domestic benefit claims, specifying the application number, country (or intellectual property authority), and filing date of any foreign application for which priority is claimed and the application number of any domestic application for which benefit is claimed, be submitted in a timely manner to allow for publication at eighteen months from the earliest filing date for which a benefit is claimed. It has been United States Patent and Trademark Office (USPTO) practice to require that any correction of the application number in a domestic benefit claim after the time period for filing a priority or benefit claim be via a petition to accept an unintentionally delayed benefit claim, but to permit correction of the application number in a foreign priority claim after the time period for filing a priority or benefit claim without such a petition. This dissimilar treatment of the correction of foreign priority claims and domestic benefit claims results in the publication of a corrected patent application publication reflecting the accurate domestic benefit claim information whenever an applicant corrects the application number in a domestic benefit claim in a pending application, but not whenever an applicant corrects the application number of the foreign application in a foreign priority claim. The rationale for the practice of permitting correction of the application number in a foreign priority claim without a petition was because the filing date of a prior foreign patent application did not affect the effective prior art date of a U.S. patent application publication and because the USPTO schedules publication of an application with the filing date provided by applicant in a foreign priority claim. The Leahy-Smith America Invents Act (AIA), however, now provides that the filing date of an earlier foreign patent application may now be the effective prior art date for subject matter disclosed in a U.S. patent or a U.S. patent application publication. Therefore, U.S. patent application publications should reflect accurate foreign priority information to minimize the burden on examiners and members of the public in assessing the effective prior art date for subject matter disclosed in such U.S. patent application publications. The USPTO will thus now require that any correction of the identification of the foreign application (by application number, country (or intellectual property authority), and filing date) in a foreign priority claim after the time period for filing a priority or benefit claim be via a petition to accept an unintentionally delayed priority claim, and once the petition is granted in a pending application, will now publish a corrected patent application publication reflecting the accurate foreign priority claim information. Requiring a petition and publishing a corrected patent application publication whenever an applicant corrects the application number in a foreign priority claim or a domestic benefit claim will provide for common treatment of the correction of the identification of a foreign or domestic application in a priority or benefit claim. The publication of a corrected patent application publication by the USPTO will result in corrected patent application publications with accurate foreign priority information which will benefit examiners, applicants and members of the public in assessing the effective prior art date for subject matter disclosed in a U.S. patent application publication.

DATES: Effective Date: The change in this notice takes effect on November 5, 2015. Any corrections to the foreign application number in a foreign priority claim that were previously accepted are not affected by this change in practice.

For more information, please access http://www.gpo.gov/fdsys/pkg/FR-2015-10-06/html/2015-25407.htm

New Collaborative Search Pilot Program with the Japan Patent Office

From the Federal Register, Vol. 80, No. 132 (Friday, July 10, 2015) [Pages 39752-39759] [FR Doc No: 2015-16846]
SUMMARY: The United States Patent and Trademark Office (USPTO) is initiating a joint Work Sharing Pilot Program with the Japan Patent Office (JPO) to study whether the exchange of search results between offices for corresponding counterpart applications improves patent quality and facilitates the examination of patent applications in both offices. In the pilot program, each office will conduct a prior artsearch for its corresponding counterpart application and exchange the search results with the other office before
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either office issues a communication concerning patentability to the applicant. As a result of this exchange of search results, the examiners in both offices may have a more comprehensive set of references before them when making their initial patentability determinations. Each office will accord special status to its counterpart application to first action. First Action Interview (FAI) pilot program procedures will be applied during the examination of the U.S. application and make the search results of record in the form of a Pre-Interview Communication.
DATES: Effective date: August 1, 2015.
Duration: Under the United States-Japan Collaborative Pilot (US-JP CSP) program, the USPTO and JPO will accept petitions to participate for two years from its effective date. During each year, the pilot program will be limited to 400 granted petitions, 200 granted petitions where USPTO performs the first search and JPO performs the second search, and 200 granted petitions where JPO performs the first search and USPTO performs the second search. The offices may extend the pilot program (with or without modification) for an additional amount oftime, if necessary. The offices reserve the right to terminate the pilot program at any time.
See the complete text at: http://www.gpo.gov/fdsys/pkg/FR-2015-07-10/html/2015-16846.htm

More information is also available from the Collaborative Search Pilot Program page at http://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp or by emailing CSP@USPTO.GOV.

European Patent Office Free Webinars

The European Patent Office (EPO), the United States Patent and Trademark Office's partner in Cooperative Patent Classification (CPC), has scheduled some upcoming free hour-long webinars specifically timed to be convenient for United States viewers. They will take place at 11:00AM Eastern Time/8:00AM Pacific Time. This shows up on the registration web page as 5:00PM Central European Time.

Webinar Topics

• Introduction to Espacenet June 10, 2015
• Espacenet and Global Dossier June 17, 2015
• Cooperative Patent Classification June 23, 2015
• Federated European Register—Legal Status Information June 25, 2015
• Espacenet and Common Citation Document September 7, 2015
• European Patent Register, Global Dossier and Register Alert September 9, 2015
• Espacenet Advanced September 29, 2015

All webinars are free of charge. The webinars use the WebEx platform.

To register go to www.epo.org/vc.

For more information access https://www.epo.org/learning-events/events/training/patent-information.html or contact pitraining@epo.org .