News & Resources

25.09.19

September 2019 bulletin

EPO updates

Fee Refund Procedures

Since 1 April 2019, fees at the EPO can no longer be refunded by cheque and are instead refunded to a deposit account held with the EPO or a bank account. The applicant or representative can decide the recipient of the refund.

For more information, please see:

https://www.epo.org/service-support/updates/2019/20190401.html

Expanded coverage for Mailbox service

The list of communications that can be received via the Mailbox service has been expanded from 3 June 2019. The list of communications that can now be received using Mailbox can be found in the PDF on the page linked below.

For more information, please see:

https://www.epo.org/service-support/updates/2019/20190408.html

Oral proceedings held as a video conference at the European Patent Office – technical guidelines

The EPO has issued guidelines for users interested in holding an examiner interview or oral proceedings via video conference. These include technical requirements, acceptable software and other recommendations.

Full details can be found by following the link below.

https://www.epo.org/applying/online-services/proceedings/technical-guidelines.html

Switzerland and Liechtenstein Renewal Fee Changes – From 1 July 2019

Renewal fees for Swiss and European patents effective in Switzerland and Liechtenstein have changed as of 1 July 2019. The new rates can be found via the link below.

https://www.epo.org/law-practice/legal-texts/official-journal/2019/05/a53.html

Serbia Renewal Fee Changes – From 1 July 2019

Renewal fees for European patents effective in Serbia have changed as of 1 July 2019.

The new rates can be found via the link below.

https://www.epo.org/law-practice/legal-texts/official-journal/2019/07/a70.html

Changes to the electronic filing of European patent applications in France

  1. Applications claiming priority can be filed in person or by post at the EPO or INPI (National Industrial Property Institute) headquarters in Courbevoie;
  2. R. 614-1 French Intellectual Property Code (Regulations) – Applicants who reside or have a principle place of business in France must file at the INPI unless claiming priority from an earlier French application.
  3. L. 614-4 French Intellectual Property Code – Applications can also be filed by fax
  4. Applications may also be electronically filed through the EPO using either a smart card issued by the INPI allowing the minister for defense to view the content in the case of point 2 or a smart card issued by the EPO in the case of point 1;
  5. Applications can also be filed electronically through the INPI’s “e-procedures” portal on its website.

For more information, please see:

https://www.epo.org/law-practice/legal-texts/official-journal/2019/05/a54.html

Rules of Procedure of the Boards of Appeal – in force from 1 January 2020

Revised Rules of Procedure of the Boards of Appeal (RPBA) were adopted by the Boards of Appeal Committee on 4 April 2019 and were unanimously approved by the Administrative Council at its 160th meeting on 26 and 27 June 2019. This is following two consultations. They will come into force on 1 January 2020 and apply to any appeals currently pending at this time (with the exception of the changes made to Article 12 paragraphs 4 to 6 or if oral proceedings/a communication under Rule 100(2) EPC has been notified), or filed after this date.

There are numerous substantial amendments to the Rules which can be seen in the marked-up copy provided via the link below. This document also provides reasoning for the changes. The aims of these changes are to increase the efficiency related to the handling of cases. For example, this can be seen in the changes to Article 11, regarding the remittal of a case to the department of first instance in order to reduce a “ping-pong” effect between the appeal boards and examining or opposition divisions. New rules are also provided regarding the acceleration of proceedings under Article 10.

For full details of the changes and reasoning, please see the PDF found on the link below.

https://www.epo.org/law-practice/case-law-appeals/communications/2019/20190704.html

Mailbox service update for professional representatives to receive communications

The list of communications that can be received electronically via the Mailbox has been updated. For technical reasons, the electronic notification service has been temporarily suspended for some of the forms added as of 3 June 2019.

Details of the list of communications and affected forms can be found via the link below.

https://www.epo.org/applying/online-services/mailbox.html

Euro-PCT Guide: PCT procedure at the EPO

The 12thedition of the Euro-PCT Guide is available with some minor formal changes. The guide covers International phase and entry into the European phase. The changes relate to the following:

  • The annexes have been replaced by screenshots in the text of the Guide in order to better reflect the fact that most applicants file electronically and not on paper nowadays.
  • The numbering system has been modified in order to provide a better structure.
  • The layout has been revised.

Please see the link below for a copy of the guide.

https://www.epo.org/applying/international/guide-for-applicants.html

Change to new smart card cryptography software

From 1 October 2019 the Gemalto Classic client software will not be supported, and it will be replaced by Cryptovision smart card software.

For further details please see the link below.

https://www.epo.org/service-support/updates/2019/20190730.html

Decision of the President of the European Patent Office dated 13 June 2019 concerning the EPO online Filing software to be used for the electronic filing of documents

Following a decision of the president dated 9 May 2019 in relation to Rule 2 EPC, version 5.10 or later releases of the electronic filing software should be used for online filing.  From 4 November 2019submissions via the older versions of the software will not be accepted by the office’s server. Additionally, as of 4 November 2019 the previous decision of the President (19 June 2017) relating to online filing software will no longer have effect.

For more information, please see:

https://www.epo.org/law-practice/legal-texts/official-journal/2019/07/a64.html


EPO Consultations

Increased flexibility in the timing of the examination process

The EPO held a consultation on the possibility of allowing more flexibility in the timing of the examination process by offering means to postpone the examination of European patent applications. A proposal for User-driven Early Certainty (UDEC) offering applicants the possibility to postpone the start of substantive examination by a maximum period of 3 years was put forward to address the fact that some applicants may wish for more time prior to grant (avoiding validation costs etc.).

The consultation also included questions relating to third party activation and EPO activation mechanisms. The responses varied widely with an almost 50/50 split on whether to introduce such a postponement. Most believe that only the applicant should be able to trigger such a postponement, and most were against allowing the EPO to do the same.

A full summary of responses can be found on the consultation page linked below.

https://www.epo.org/law-practice/consultation/completed.html


UK IPO updates

PCT fee structure change as of 1 Jan 2019

Transmittal fee: £75

Search fee: £1,576

International fee: £1,037 for the first 30 sheets, £12 for each sheet over 30

Restoration for restoration of priority: £150

Reductions for e-filing: £156 electronic filing (not being in character coded format), £234 electronic filing (being in character coded format)

Fees for preparation of priority document: £20

For more information, please see:

https://www.gov.uk/government/news/1-january-2019-update-to-the-patent-cooperation-treaty-pct-fees 

Changes to SPC and patent law if the UK leaves the EU without a deal

In the case of a no deal Brexit,the Patents (Amendment) (EU Exit) Regulations 2019 (“the Patents Regulations”) will enter into force on exit day. This ensures that EU law relating to patents will be retained in UK law at least for the time being.

Regarding SPCs, a UK patent and UK market authorisation must be held in order to obtain one in the UK. Granted SPCs in force or not will remain in effect post exit day and there is no need to re-file currently pending applications. If an authorisation from the European Medicines Agency is the basis for the SPC, you may be asked to provide information on the equivalent converted UK authorisation, so that this can be recorded on the register.

After exit day, the courts will continue to apply pre-exit CJEU case law in any SPC actions. SPC examiners will also take into account all of the relevant CJEU case law applicable before exit day, and examine SPC applications on that basis.

In summary, formal changes will be made in order for the UK law to mimic the EU law before exit day and references to the EU within the text will be amended to refer to the UK. Decisions of the CJEU will no longer be binding on actions considered post Brexit, although they may be considered.

For more information, please see:

https://www.gov.uk/government/publications/changes-to-spc-and-patent-law-if-uk-leaves-the-eu-without-a-deal/changes-to-spc-and-patent-law-if-the-uk-leaves-the-eu-without-a-deal

https://www.gov.uk/government/consultations/supplementary-protection-certificate-waiver-no-deal-legislation

Conditions in which undisclosed disclaimers are allowed

Section 14.127 of the manual for patent practice has been amended to include the circumstances in which an undisclosed disclaimer is allowed. These are:

  • Delimiting a claim against an anticipation published after the priority date
  • Delimiting a claim against an anticipation in an unrelated field that the skilled person would never take into consideration (i.e. an accidental anticipation)
  • Delimiting a claim against subject matter excluded from patentability for non-technical reasons, such as methods of treatment of the human body or inventions contrary to public morality

Further details can be found via the link below.

https://www.gov.uk/guidance/manual-of-patent-practice-mopp/section-14-the-application#ref14-127

Extension of prescribed time limits – Divisional applications and parent compliance periods

Section 15.21 of the manual for patent practice has been amended to include the provision that the comptroller can also extend the compliance period of a parent application under r.108 to allow a divisional application to be filed within the period prescribed by r.19.

The UK compliance period, in which an application must be made ready for grant, is 4 years and 6 months. A divisional application may be filed up to three months before the end of the compliance period of its parent.

An extension under r.108(2) is available as of right but a second extension (using r.108(3)) would require the Comptroller’s discretion. As with the extension to the time limit of r.19, this discretion will normally be exercised only if the applicant shows that the circumstances are exceptional and that he has been properly diligent.

An appeal against a decision to refuse the allowance of a divisional application will succeed only if it is established that the comptroller’s discretion was exercised wrongly in principle.

For more information, please see:

https://www.gov.uk/guidance/manual-of-patent-practice-mopp/section-15-date-of-filing-application#ref15-21

Working with the EPO to improve UK patent search timeliness

Due to a backlog of applications in the fields of biotechnology,computing and telecommunications, the UK IPO has reached an agreement with the EPO such that the EPO will conduct searches on national applications.

Further details can be seen via the link below.

https://www.gov.uk/government/publications/working-with-the-epo-to-improve-uk-patent-search-timeliness/working-with-the-epo-to-improve-uk-patent-search-timeliness


UK/EU Copyright Practice

Changes to copyright law to implement the Marrakesh Directive

UK copyright law contains provisions which allow disabled people, and individuals and organisations acting on their behalf, to make copies of copyright works in accessible formats (such as Braille books, subtitled films), from non-accessible originals, without infringing copyright.

Recent amendments to copyright law have changed how these provisions operate. These changes may affect certain right holders, as well as disabled people and the individuals and organisations that support them. Some rules to the conditions which govern this permitted reproduction are discussed via the link below.

https://www.gov.uk/government/publications/changes-to-copyright-law-to-implement-the-marrakesh-directive

 Changes to copyright law in the event of no deal Brexit

In the event of a no deal Brexit the UK has drafted some changes to Copyright and related rights regulations. This removes or corrects references to the EU, EEA, or Member States in UK copyright legislation to preserve the effect of UK law where possible. For reciprocal cross-border mechanisms where continuing to extend provisions to the EU on a unilateral basis after exit would adversely affect those in the UK, the UK government is limiting the mechanisms to operate on a purely domestic basis or bringing them to an end, as appropriate. Protection under the Berne Convention and the TRIPS Agreement providing a minimum standard does not depend on the UK’s relationship with the EU and thus will remain unchanged.

For more information, please see:

https://www.gov.uk/government/publications/changes-to-copyright-law-in-the-event-of-no-deal/changes-to-copyright-law-in-the-event-of-no-deal


EU IPO updates

Impact of the UK’s withdrawal from the EU on EUIPO practice

The document below sets out provisions that the EUIPO have put in place and changes in law that will occur when the UK leaves the EU. These changes apply to the EUTMR and CDR.

For more information, please see:

https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/law_and_practice/communications_president/COM-2-19_en.pdf


International Patent Practice

The mailing address of the Japan Patent Office (JPO) has changed, as follows:

Mailing address:         3-4-3 Kasumigaseki

Chiyoda-ku

Tokyo, 100-8915

Japan

As from 1 August 2019, there will be a change in the equivalent amounts of the international filing fee and the fee per sheet over 30, payable in JPY to the Japan Patent Office as receiving Office, as well as a change in the equivalent amount in JPY of the applicable fee reduction listed in item 4 of the Schedule of Fees, as indicated in Fee Table I(a).


Madrid Agreement

Withdrawal of the notification made under Rule 34(2)(b) of the Common Regulations under the Madrid Agreement and the Madrid Protocol:  United Kingdom

The Office of the United Kingdom has withdrawn the notification made under Rule 34(2)(b) of the Common Regulations, with effect as from May 6, 2019.

Consequently, as from that date, the Office of the United Kingdom no longer collects and forwards to the International Bureau of WIPO the fees due under the Madrid Protocol and the Common Regulations.

For more information, please see:

https://www.wipo.int/edocs/madrdocs/en/2019/madrid_2019_48.pdf

Possible ‘No-Deal’ Brexit: Implications for Madrid System Users

The UK parliament has published a statutory instrument providing for continued protection in the UK to marks in international applications and registrations under the Madrid System in which the European Union (EU) has been designated. WIPO has released information pertaining to this instrument in order to make users aware of their rights.

For more information, please see:

https://www.wipo.int/madrid/en/news/2019/news_0011.html


Hague Agreement

Japan relaxes its requirements regarding views

Applicants designating Japan are no longer required to provide six orthogonal views of a three-dimensional product, which constitutes the industrial design, so as to provide appropriate disclosure.

For more information, please see:

https://www.wipo.int/hague/en/news/2019/news_0006.html

Possible “No-Deal” Brexit: Implications for Hague System Users

The Government of the United Kingdom (UK) has published a draft statutory instrument that provides continued protection in the UK for designs in international applications and registrations under the Hague System, in which the European Union (EU) has been designated.

For more information, please see:

https://www.wipo.int/hague/en/news/2019/news_0004.html


USPTO IP Practice

USPTO announces new trademark rule

The USPTO has announced a new trademark rule requiring foreign-domiciled applicants and registrants to have a U.S.-licensed attorney.This new trademark rule has an effective date of August 3, 2019.

For more information, please see:

https://www.uspto.gov/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us 

Other

Brexit and the exhaustion of IP rights

When the UK exits the EEA it will also exit the EEA exhaustion scheme. In a no deal scenario the government have said that the UK will still recognise EEA regional exhaustion. Therefore there will be no changes from a UK import perspective. The EU however may not choose to do the same and thus exports of UK IP protected goods to the EEA may require a right holder’s license.

For more information, please see:

https://www.gov.uk/government/publications/exhaustion-of-intellectual-property-rights/exhaustion-of-intellectual-property-rights

 

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