News & Resources

November bulletin: EPO, German patent practice, PCT practice, Int’l TM practice

EPO practice

• A new version of the EPO Guidelines has been released, which can be found here: http://www.epo.org/law-practice/legal-texts/guidelines.html
• The EPO has also released guidelines for the procedure before the EPO in the international phase, for the first time. This new set of guidelines can be found here: http://www.epo.org/law-practice/legal-texts/guidelines-pct.html
• European patents filed after 1 November 2015 can be validated in Moldova. The validation fee is €200, which must be paid within six months of publication of the search report or on entry into the regional phase for a PCT application. More information is provided here: http://www.epo.org/law-practice/legal-texts/official-journal/2015/10/a85/2015-a85.pdf
• Rule 82(2) EPC, relating to the publication of an amended patent specification after opposition proceedings, will soon be amended to allow for the possibility of filing handwritten amendments at oral proceedings before the Board of Appeal. In this situation, the EPO will require a typed version of the amendments to be filed within the three month period allowed for filing translations and paying the publication fee. The new rule will come into force on 1 May 2016.
• The EPO is launching a pilot programme in which information on the searching strategy used will be appended to all search reports drawn up from 1 November 2015 to 31 December 2016. The EPO is aiming to test how useful this information is to applicants.
• The EPO has decided to stay any proceedings whose outcome depends entirely on the decision in Enlarged Board of Appeal case G 1/15. This decision relates to whether a claim to priority is valid to an extent in the case that the claim in the application/patent covers various alternatives, only some of which are present in the priority document. This is referred to as “partial priority”.
  http://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20151102a.html

German patent practice

• The German Federal Court has decided that if a claim of a European patent validated in Germany contains a limiting feature that lacks basis in the original application, the patent will not be revoked for that reason. Instead, the feature concerned will just be disregarded when assessing the patentability of the claimed invention: http://www.epo.org/law-practice/legal-texts/official-journal/2015/09/a78/2015-a78.pdf

PCT practice

• The fees for PCT filings at the UK IPO have changed: https://www.gov.uk/government/news/1-november-2015-update-to-the-patent-cooperation-treaty-pct-fees
• Minor amendments to the PCT regulations will enter into force on 1 July 2016. These aren’t particularly noteworthy, but do allow applicants to write to the International Bureau of WIPO in languages other than English and French.

International TM practice

• The UK is a member of the Madrid Protocol international trade mark system. The UK IPO has now provided information on which territories are covered by a UK designation on a Madrid Protocol trade mark registration. The territories covered are: England, Wales, Scotland, Northern Ireland, the Falkland Islands, the Isle of Man and Jersey.
• Since the Madrid Protocol entered into force in Algeria on 31 October this year, there are no longer any countries that are in the Madrid Agreement (a pre-existing alternative international trade mark system) but not also in the Madrid Protocol. This means that the Madrid Protocol only will govern all future international trade marks and the Madrid Agreement will become more or less redundant.