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21.04.17
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April 2017 bulletin
EPO practice
- As of 1 April 2017, the EPO are now issuing a provisional opinion on the patentability of the first invention in an application along with the partial search results and invitation to pay further/additional search fees. The provisional opinion will be for information only. This differs from previous practice, in which the EPO only issued a patentability opinion along with the full search report. For more information, please see: https://www.epo.org/law-practice/legal-texts/official-journal/2017/03/a20/2017-a20.pdf
- The EPO has released its latest Euro-PCT Guide for applicants regarding the international phase and entry into the European phase here: https://www.epo.org/applying/international/guide-for-applicants.html
- From 1 July 2017, Cambodia will be a validation state of the EPO. For more information, please see: https://www.epo.org/news-issues/news/2017/20170123.html
International patent practice
- As of 1 April 2017, the EPO acting as International Preliminary Examination Authority has increased the rate at which the preliminary examination fee is refunded from 75% to 100%. The refund is awarded if the international application or demand for international preliminary examination is withdrawn before the start of the international preliminary examination. For more information, please see: https://www.epo.org/law-practice/legal-texts/official-journal/2017/03/a28/2017-a28.pdf
- On 10 February 2017, Italy became the 12th member state to ratify the UPC.
- From 1 July 2017, the amended PCT regulations will come into force. The main update concerns the deadline for requesting supplementary international search which has been extended from 19 to 22 months from the priority date. For more information, please see: http://www.wipo.int/edocs/mdocs/pct/en/pct_wg_9/pct_wg_9_6.pdf
- On 1 February 2017, the EPO and the Federal Service for Intellectual Property (Russian patent office) launched a Patent Prosecution Highway (PPH) pilot programme for a trial period of 3 years. The PPH allows applicants to fast track examination for Russian applications that have been successfully prosecuted at the EPO, and vice versa. For more information, please see https://www.epo.org/law-practice/legal-texts/official-journal/2017/01/a5/2017-a5.pdf
UK patent practice
- The UK IPO have issued reminders that the changes to the Patents Rules announced last year came into effect on 6 April 2017. These changes include the following:
- The UK IPO no longer require patent proprietors to confirm their address each time they renew their patent. For more information, please see https://www.gov.uk/government/publications/patents-renewal-reminders-change-taking-place-on-6-april-2017/patents-renewal-reminders-change-taking-place-on-6-april-2017
- Omnibus claims are no longer allowed, unless the technical features of the invention cannot otherwise be clearly and concisely defined using words, a mathematical or chemical formula or any other written means. However, granted patents including omnibus claims will remain valid. For more information, please see: https://www.gov.uk/government/publications/changes-to-patents-rules-on-1-october-2016-and-6-april-2017/changes-to-patents-rules-on-1-october-2016-and-6-april-2017
- The IP Unjustified Threats Bill has passed the House of Lords and House of Commons without amendment and now awaits Royal Assent. For more information, please see: http://services.parliament.uk/bills/2016-17/intellectualpropertyunjustifiedthreats.html