News & Resources

19.10.18

October 2018 bulletin

EPO updates

Referral to the Enlarged Board of Appeal: Appeal deemed not to be filed or inadmissible in case of delayed fee payment?

In accordance with Article 112(1)(b) EPC the President of the European Patent Office has referred a point of law concerning the interpretation of Article 108 EPC to the Enlarged Board of Appeal (case G1/18).

For more information, please see:

https://www.epo.org/news-issues/news/2018/20180723.html

Notice from the European Patent Office concerning the situation in the USA, the Philippines, Hong Kong SAR, China, Indonesia and Japan after the hurricanes and the earthquake between 15 September and 1 October 2018

In view of the current tragic events in the USA, the Philippines, Hong Kong SAR, China, Indonesia and Japan attention is drawn to the general legal remedies provided under the European Patent Convention in case of non-observance of time limits and, more specifically, to Rule 134(5) EPC.

For more information, please see:

https://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20181004.html

Decision of the President of the EPO concerning the electronic filing of documents

Documents may, in accordance with this decision and without prejudice to other means of filing, be filed electronically using EPO Online Filing (OLF), the EPO case management system (CMS) or the EPO Web-Form Filing service (Web-Form Filing).

Authorisations, documents in respect of opposition, limitation and revocation proceedings (Articles 99 to 105c EPC), documents in respect of appeal proceedings (Articles 106 to 112 EPC) or documents in respect of proceedings for review by the Enlarged Board of Appeal of decisions of the boards of appeal (Article 112a EPC) must not be filed using Web-Form Filing.

Electronically, priority documents may only be filed using OLF, and provided they have been digitally signed by the issuing authority and the signature is accepted by the EPO.

For more information, please see:

https://www.epo.org/law-practice/legal-texts/official-journal/2018/05/a45.html

Decision of the President of the EPO implementing Article 12 of the Rules relating to Fees

The insignificant amount referred to in Article 12 of the Rules relating to Fees shall be fixed at EUR 15.

For more information, please see:

https://www.epo.org/law-practice/legal-texts/official-journal/2018/04/a37.html

 

UK IPO updates

Method the Intellectual Property Office recommends for withdrawing patent applications

Withdrawal of a patent application can be made by:

IPO recommends that the email option be used, as this will ensure that the request is dealt with quickly by a dedicated team of staff.

 

EU IPO updates

Registered Community Designs: priority assessment

The new practice for Registered community Design (RCD) applications is aligned with the formerly revised practice for European Union Trade Mark applications in that the examination at application stage is limited to the minimum legal requirements to allow for the publication of a “claimed” priority.In accordance with the new practice, priority claims will be published as “claimed” instead of “accepted”.

This new practice will make it more transparent that the EUIPO’s examination of a priority claim is limited at application stage and that the party concerned should challenge the claim when there are reasonable doubts on the validity of the priority claim and when it may have an impact on the invalidity decision.

For more information, please see:

https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/about_euipo/alicante_news/alicantenews_September_2018_print_en.pdf

Change of EUIPO bank account: closure of BBVA account

On 17 February 2018, one of the two bank accounts used by EUIPO to which users can transfer fees, current account replenishments and charges changed.

EUIPO’s online e-filing application is fully up to date with this change.

In order to facilitate users, EUIPO has been accepting payments into the old bank account, administered by BBVA, since the changeover date, on an interim basis.

However, from 17 September 2018, the BBVA bank account has been closed.

Getting your Article 7(3) EUTMR claim right

The legislative reform of the EUTM system has introduced some changes in respect of the procedural aspects of claims under Article 7(3) EUTMR. As is known, under Article 7(3)EUTMR it is possible to claim the acquisition of distinctive character as a consequence of the use which has been made of a trade mark when it is either devoid of any distinctive character, descriptive and/ or have become customary in the current language or in the bona fide and established practices of the trade.

The Office will only examine the alleged acquired distinctiveness of a trade mark according to Article 7(3) EUTMR when the applicant has made an explicit claim in that regard.

Until the former regime, there was only one type of claim for acquired distinctiveness. The legislative reform has nevertheless introduced the possibility of making either a principal claim or a subsidiary one.In a principal claim, the applicant relies on the acquired distinctive character of the mark from the outset.In a subsidiary claim, the applicant wishes to focus first on the inherent distinctive character of the mark and only when such distinctiveness has definitely been rejected by the Office he would go through the path of the acquired distinctive character.

For more information, please see:

https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/about_euipo/alicante_news/alicantenews_July_2018_print_en.pdf

 

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