News & Resources


March 2019 bulletin

EPO updates

Call for PCT applications in French or German for the Collaborative Search and Examination (CS&E) pilot project

As of 1st January 2019, the EPO has been accepting requests to participate in the Collaborative Search and Examination pilot project from interested PCT applicants filing in French or German who have selected the EPO as their International Searching Authority (ISA).

For more information, please see:

Notice from the European Patent Office dated 27 February 2019 concerning the fee refund procedures

While, in the majority of cases, the EPO will continue to make refunds to a deposit account held with it, it will no longer make refunds by cheque and make bank transfers instead. In addition, it will offer users more flexibility in their choice of refund recipient. Contrary to the practice before 1st April 2019, parties will therefore also be able to indicate a deposit account held by a third party.

For more information, please see:

Priority document exchange via the WIPO Digital Access Service (DAS) for European patent applications and for international applications filed with the EPO in its capacity as receiving Office

DAS supports the automatic electronic exchange of priority documents within participating patent offices (participating offices). Applicants may request the depositing office (usually acting as office of first filing (OFF)) to make priority documents available to the DAS system and then request accessing offices (acting as office of second filing (OSF)) to retrieve the priority documents via DAS.

For more information, please see:


UK IPO updates

UK/EU Trade Mark Practice

Examination of pleadings based on earlier marks

Since 1st January 2019 the registrar’s examining case officers may, in the event that the pleadings in opposition/invalidation are unclear, ask for further information, particularly if:

  • there are more than 6 earlier marks; or
  • it is not obvious why the goods/services covered by an earlier mark are claimed to be identical or similar to the opposed goods/services.

In the first case, when there is no justifiable or apparent reason or when the number of marks seems disproportionate, the registrar may direct the party to nominate its “best case” marks from the selection for consideration.

In the second case, the registrar may request further information prior to any hearing, with reference to the goods/services as well as similarities, as is standard practice. This allows the other side to properly address the identity or similarity of the goods/services prior to the hearing instead of learning of the reasoned arguments for the first time in the hearing; thus creating a more level playing field.

For more information, please see:

Demise of Graphical Representation

The European Union Intellectual Property Office (EUIPO), European Commission and national offices have developed a common communication on this for stakeholders. These documents give a provisional overview of the definitions, types of mark and file formats each country intends to accept. These depend on progress made by the Member States implementing their national legislation. Thus, the Common Communication is updated every six months. It lists the file formats the UK accepts as of the14th January 2019.

For more information, please see:


EU IPO updates

Impact of the UK withdrawal from the EU on the EUIPO (without a deal)

The below linked document provides a number of guidelines regarding EUTMs in the case the UK leaves the EU without a deal. There are some particularly important sections relating to representation and seniority.

In particular, it seems that seniority claims based on UK trade marks filed before the withdrawal date will be allowed and published, while those based on UK TMs filed after the withdrawal date will be rejected. EUTMRs currently registered that claim seniority will be unaffected.

Regarding representation, it appears that current owners of EUTMs and RCDs will not need to be represented to request renewal of these rights and are not required to appoint a representative. The same applies to applicants who wish to file trade marks. For all other proceedings, transfers, licenses etc. the applicant will be invited to appoint a representative.

International Applications will also be affected. An EU national domiciled in the UK and a UK national domiciled in the EU can still an International Application using the EUIPO as the office of origin, however a UK national domiciled outside the EU will no longer be able to.

For more information, please see:

New Locarno Classifications (12thedition)

Some minor changes have been made to the Locarno classes for RCDs.

For more information, please see:


International Patent Practice

There has been an amendment to Rule 69 relating to the Start of and Time Limit for International Preliminary Examination that will come into effect from 1stJuly 2019.

Rule 69.1 sets out the requirements for commencing international preliminary examination, in particular what the IPEA must be in possession of. Rule 69.1(a) reads:

(a) Subject to paragraphs (b) to (e), the International Preliminary Examining Authority shall start the international preliminary examination when it is in possession of all of the following:

  • the demand;
  • the amount due (in full) for the handling fee and the preliminary examination fee, including, where applicable, the late payment fee under Rule 58bis.2; and
  • either the international search report or the declaration by the International Searching Authority under Article 17(2)(a) that no international search report will be established, and the written opinion established under Rule 43bis.1;

unless the applicant expressly requests to postpone the start of the international preliminary examination until the expiration of the applicable time limit under Rule 54bis.1(a).

Parts (b) to (e) are unchanged, as is Rule 69.2.

This means that preliminary examination will start as soon as those three things are in the possession of WIPO, whereas previously the applicant had to request earlier examination before the time limit.

For more information, please see:

Madrid Agreement

Division and Merging of International Applications (27bis and 27ter)

Since the 1st February 2019 it has been possible to divide international applications under the Madrid Agreement. The request must be filed with the Office of the designated Contracting Party at which the international registration is to be divided, and not at WIPO.

The rules regarding the merging of international applications (Rule 27(3) and new Rule 27ter) have also been altered. In particular, you can now submit a request to merge international registrations when there has been a partial change in ownership.

Paragraph (2) of new Rule 27ter deals with the merger of international registrations resulting from the recording of division. A divisional international registration may be merged only with the international registration from which it was divided.

These rule changes are not compatible with Japanese national law and thus the Japanese Government have announced that they will not present requests for mergers or divisions to the International Bureau.

For more information, please see:

Hague Agreement

“Power of Attorney” No longer needed at the time of filing

This is an amendment of Rule 3 subparagraph 2(a) of the Common Regulations. There is now no longer a need to submit a power of attorney, in the case that the applicant cannot sign the initial application at filing. The naming of a representative in the international application at the time of filingshall constitute an appointment by the applicant of a representative. This alleviates the burden on applicants and representatives to both sign the documents, when time pressures are strict. If this is not done at the time of filing a power of attorney will still be necessary.

For more information, please see:

Discontinuation of Fax at the International Bureau WIPO

Since the 1st January 2019 it has no longer been possible to communicate under the Hague System by Fax and a new online E-Filing system will now be used.

For more information, please see:

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