News & Resources

13.01.23

January bulletin

PCT

USPTO (competent International Searching and Preliminary Examining Authorities)

The USPTO, in its capacity as RO, has notified the IB of a change concerning its specification of competent International Searching and Preliminary Examining Authorities.

With effect from 1 December 2022, the Australian Patent Office, the European Patent Office (EPO), the Israel Patent Office, the Japan Patent Office (JPO), the Korean Intellectual Property Office, the Intellectual Property Office of Singapore and the USPTO are the only competent International Searching and Preliminary Examining Authorities for international applications filed by nationals and residents of the United States of America with the USPTO, or with the RO of the IB.

https://www.wipo.int/export/sites/www/pct/guide/en/gdvol1/annexes/annexc/ax_c_us.pdf

EPO

Amendments to Rules 46, 49, 50, 57, 65, 82, 126, 127 and 131 of the Implementing Regulations to the EPC

By decision of 13 October 2022, the Administrative Council of the EPO adopted a set of legal changes to the Implementing Regulations to the EPC that will support the ongoing digital transformation in the patent grant procedure at the EPO and strengthen alignment with the PCT.

In this context, it delegated the authority to decide on the presentation requirements of application and other documents to the President of the EPO. This rule change and a decision of the President restating the current requirements will enter into force on 1 February 2023.

Furthermore, the Administrative Council adopted amendments to Rule 65 EPC governing the transmittal of documents cited in search reports and to Rules 126127 and 131 EPC on notification and time limit calculation, which will apply as of 1 February 2023 and 1 November 2023 respectively.

https://www.epo.org/law-practice/legal-texts/official-journal/2022/11/a101.html

Forthcoming introduction of the Unitary Patent and the possibility of requesting a delay in issuing the decision to grant a European patent in response to a communication under Rule 71(3) EPC

At an applicant’s request, the EPO will delay issuing its decision to grant a European patent so that the mention of the grant in the European Patent Bulletin will be published on or immediately after the unitary patent system start date (expected to be on 1 June 2023).

A request can validly be filed only for European patent applications in respect of which the applicant has been informed of the text intended for grant by a communication under Rule 71(3) EPC but has not yet approved that text. It can be filed using a dedicated request form provided by the EPO (FORM 2025). Any request that does not meet these requirements will be deemed not to have been filed. The EPO has confirmed that a request for delay filed on the same day as the approval of the text intended for grant will be considered to have been validly filed.

This decision enters into force on 1 January 2023 and applies to all pending European patent applications.

A request for delay has no effect on the four-month period for replying to the communication under Rule 71(3) EPC. Applicants must therefore still file a reply to this communication within the applicable time limits. Otherwise, the European patent application will be deemed to be withdrawn under Rule 71(7) EPC, even if a delay of grant has been validly requested.

In order to obtain a Unitary Patent, a separate request for unitary effect must be filed with the EPO. Early requests for unitary effect will be allowed to be filed as of 1 January 2023. Early requests for unitary effect may only be filed for European patent applications in respect of which a communication under Rule 71(3) EPC has been despatched.

https://www.epo.org/law-practice/legal-texts/official-journal/2022/11/a102.html
https://www.epo.org/law-practice/legal-texts/official-journal/2022/11/a104.html
https://www.epo.org/law-practice/legal-texts/official-journal/2022/11/a105.html

EPO makes permanent its default position for conducting oral proceedings by videoconference

Prior to the pilot project that made hearings by videoconference the default, in 2020 (in response to the Covid-19 pandemic), the default position was for hearings to be conducted in person on the premises of the EPO. The pilot project has since been extended and expanded multiple times, with the current end date being 31 December 2022.

As the reaction of most users to the pilot project has been positive, the President António Campinos has decided that conducting hearings by videoconference should become the default format of oral proceedings from 1 January 2023. Only under certain circumstances, and when the opposition division permits it, will oral proceedings in opposition be conducted in person.

The decision enters into force on 1 January 2023 and applies to all oral proceedings before examining and opposition divisions.

https://www.epo.org/law-practice/legal-texts/official-journal/2022/11/a103.html
https://www.epo.org/law-practice/legal-texts/official-journal/2022/11/a106.html

UKIPO

Designs Practice Notice: Application forms, deferring publication, and time periods for replying to objections

Guidance has been issued to provide clear information on application forms, time periods for response and the process for deferring publication of a design:

https://www.gov.uk/government/publications/designs-practice-notice-dpn-0222-application-forms-deferring-publication-and-time-periods-for-replying-to-objections/designs-practice-notice-dpn-0222-application-forms-deferring-publication-and-time-periods-for-replying-to-objections.

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