News & Resources

January 2017 bulletin

EPO practice

• On 1 November 2016, the EPO introduced new arrangements for managing deposit accounts, the main features of which include the partial revocation and debiting of debit orders at the EPO, and next day visibility of deposit account replenishments. The EPO officially allows partial revocation so long as each fee or expense concerned is specified. A summary of each of the main changes can be found here: http://www.epo.org/law-practice/legal-texts/official-journal/2016/10/a83/2016-a83.pdf and http://www.epo.org/law-practice/legal-texts/official-journal/2016/10/a84/2016-a84.pdf
• As of 1 January 2017, Belgium acceded to the London Agreement. This means it is no longer necessary to file a translation into a Belgian national language of the specification of a European patent granted in English on or after 1 January 2017. Please note that Dutch, French and German translations continue to be accepted. For more information, please see: http://www.epo.org/law-practice/legal-texts/official-journal/2016/12/a99/2016-a99.pdf
• The EPO has updated its Internal Guidance to Examiners and now allows subject matter relating to human embryonic stem cells with an effective filing date of 5 June 2003 or later to be considered for patentability. Following decision C-364/13, these updates replace the previous examination guidelines that excluded such subject matter from patentability under Art. 53(a) EPC. A detailed analysis is provided in the CIPA Journal, December 2016 ed., pp. 24-25.
• Proceedings before the EPO in which the decision depends entirely on the patentability of a plant or animal obtained by an essentially biological process under the Biotech Directive 98/44/EC are being stayed ex officio. This is because the patentability of such plants or animals is currently under discussion with the EPO representatives, following a notice detailing the Commission’s view that such plants or animals are not patentable. For more information, please see: http://www.epo.org/law-practice/legal-texts/official-journal/2016/12/a104/2016-a104.pdf
• Proceedings before the EPO in which the decision depends entirely on the outcome of the pending referral of G 1/16 to the EBA are being stayed ex officio. The points of law being referred concern the allowability of introducing undisclosed disclaimers into the claims. For more information, please see: http://www.epo.org/law-practice/legal-texts/official-journal/2016/12/a105/2016-a105.pdf. A detailed analysis of the implications of G 1/16 can be found here: http://tuftythecat.blogspot.co.uk/2016/10/new-epo-enlarged-board-referral-does.html

International patent practice

• The PCT fee structure for international applications changed on 1 January 2017. The revised fees can be found here: https://www.gov.uk/government/news/1-january-2017-update-to-the-patent-cooperation-treaty-pct-fees
• The IP5 pilot Patent Prosecution Highway (PPH) has been extended for a further 3-year period from 6 January 2017. The PPH allows applicants to fast track a PCT or national application in any one of the IP5 patent offices (i.e. the EPO, Japan, Korea, China and US patent offices), if that application has received a positive opinion from any one of the remaining IP5 patent offices. For more information, please see: http://www.epo.org/law-practice/legal-texts/official-journal/2016/12/a106/2016-a106.pdf
• The UK government has confirmed that it is proceeding with preparations to ratify the Unified Patent Court (UPC) Agreement. Once in force, the UPC will be a common patent court for all member states of the EU, with London hosting the central division branch for Pharma and Life Sciences. For more information, please see: https://www.gov.uk/government/news/uk-signals-green-light-to-unified-patent-court-agreement

International trade mark practice

• A new edition of the Nice Classification came into force on 1 January 2017. The Nice Classification is an international classification of goods and services to classify registered trade marks. Please note that the new Nice Classification applies to all trade mark applications filed on or after 1 January 2017, even if the mark claims priority from a mark filed before that date. For more information, please see: https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/law_and_practice/communications_president/co5-16_en.pdf

UK IP practice

• Jo Johnson has been appointed to succeed Baroness Neville-Rolfe as the new minister for intellectual property.