Patent Law & Practice at a Glance – September 2024

UK UPDATE

Patent practice regarding artificial neural networks and excluded subject matter

The UKIPO updated its guidance on patenting artificial neural networks (ANNs) following the judgment of the Court of Appeal in the Emotional Perception decision. The Court of Appeal decided that a trained ANN involves a computer program, and so patent examiners have been instructed to treat ANN-implemented inventions like any other computer implemented invention, for example using the AT&T signposts. The UKIPO highlighted that particular care must be taken when assessing whether the invention is said to improve the functioning of the computer (i.e. the ANN) itself.

The guidance can be found here, and our commentary on the Court of Appeal judgment can be read here.

Standard Essential Patents (SEPs) Resource Hub launched by UKIPO

The Hub is a collection of guidance and signposting to help UK businesses navigate the SEPs ecosystem and is divided into four parts:

1. Guidance on Technical Standards and Standard Development Organisations
2. Guidance on Standard Essential Patent Licensing
3. Guidance on dispute resolution and remedies in SEP Licensing
4. Additional resources including a UK SEPs case law tracker, glossary of terms and international SEPs-specific resources which may be useful to UK businesses trying to navigate the SEPs ecosystem.

The Hub may be accessed here.

Designs Practice Notice 01/24: Examination of a product consisting of multiple components

The UKIPO updated its guidance on what is acceptable for design registrations directed to products that include multiple, separable, elements. The takeaway from this update is that the UKIPO is open to multiple-component designs, possibly better referred to as “multi-item” designs, but appears to view designs including elements, such as packaging, not intended to be the main part of a product or contribute to an overall theme as likely to be non-registerable.

The full practice note can be found here, and our analysis of the update can be read here.

UK-China IP

The UKIPO publishes a newsletter targeted at UK stakeholders and including updates on recent development in Chinese IP. The latest edition of this newsletter can be found here.

Filing statistics

The statistics for June 2024 are now available here. Statistics for previous months can be found here.

Customer service standards

The latest update on how the UKIPO is doing relative to the targets it has set itself can be found here.

EPO UPDATE

Romania’s ratification of the Agreement on a Unified Patent Court and the possibility of requesting a delay in the registration of unitary effect

As set out here, in order to allow users to benefit from the territorial scope of the second Unitary Patent generation covering Romania, the EPO will accept requests for a delay of the registration of unitary effect as of 5 June 2024.

Continuation of examination and opposition proceedings in view of referral G 1/24

Referral G 1/24 relates to the interpretation of the claims. The President of the EPO has decided that proceedings before the examining and opposition divisions should continue to ensure the proper functioning of the EPO and for legal certainty.

Referral G 1/24

Third parties will have the opportunity to file written statements concerning the points of law raised in referral G 1/24 until 15 November 2024. Details of the referral may be found here.

Access to patent literature documents cited in search and examination proceedings

In view of its commitment to become a more sustainable organisation, the improvements to MyEPO Portfolio, and the availability of patent literature documents on Espacenet, the EPO has decided to stop sending paper copies of cited patent literature in search and examination proceedings. Instead, applicants and their representatives should use Espacenet to access digital copies of these documents. Non-patent literature as well as translations of cited patent literature will still be sent on paper.

This new practice will apply to patent documents cited in (supplementary) European search reports, (supplementary) international search reports, international preliminary examination reports and in communications from examining divisions. During the international phase, in line with the PCT legal framework, applicants will still be able to request paper copies of the cited patent documents.

Full details are available here.

Reduction of fees for the international search and the international preliminary examination

For some time now, the fees for the international search, the supplementary international search and the international preliminary examination carried out on international applications have been reduced by 75% if the international application, the request for supplementary international search, or the demand for international preliminary examination is filed by an applicant from a low-income or lower-middle-income economy or by an applicant from one of the validation states. The EPO has revised the list of low-income or lower-middle-income economies as of 3 July 2024. The full list is available here.

Staying of proceedings for the registration of unitary effect

Under new sanctions against Russia by the EU, member states, in their capacity as contracting states to the EPC and in fulfilling their international obligations undertaken in the EPC, must use best efforts to ensure that the EPO refuses requests for unitary effect that are filed by Russian nationals. This also applies to persons (natural or legal) residing or being established in Russia, as well as to applications jointly filed with a non-Russian natural or legal person resident or established outside of Russia.

In view of the potential impact of these sanctions, the President of the EPO has decided to take the precaution of staying proceedings for the registration of unitary effect in the Register for unitary patent protection ex officio where the request for unitary effect is or was filed by a Russian national or by a person residing or being established in Russia.

Since an exception to the sanctions applies to persons residing in Russia if they are nationals of or have a residence permit in an EU member state, an EEA country, or Switzerland, those persons may invoke the exception in order to have the stay of proceedings lifted. Full details are available here.

PCT UPDATE

The new WIPO Treaty

On 24 May 2024, WIPO member states approved a new Treaty relating to intellectual property, genetic resources and associated traditional knowledge. It is the first WIPO Treaty to address the interface between these subjects, and to include provisions specifically for Indigenous Peoples as well as local communities.

Once it enters into force, the new Treaty will establish in international law a new disclosure requirement for patent applicants whose inventions are based on genetic resources and/or associated traditional knowledge. Where a claimed invention is based on genetic resources, applicants will be required to disclose the country of origin or source of the genetic resource. Where a claimed invention is based on traditional knowledge associated with genetic resources, applicants will be required to disclose the Indigenous Peoples or local community, as applicable, who provided the traditional knowledge.

Implications for the PCT are detailed here (pages 1 and 2).

Amendments to the PCT Regulations

As of 1 July 2024, the following amendments to the PCT Regulations entered into force:

• Amendments to PCT Rules 26 and 29 relating to the procedure when an international application contains parts in different languages and all such languages are accepted by the competent receiving Office; and
• Amendments to the French text of Rule82quater.3(c) to resolve an inconsistency between the English and French texts of this Rule.

Please see the WIPO website for further details (page 2).

Patent Cooperation Treaty and Regulations

The text of both the Patent Cooperation Treaty and the Regulations (WIPO Publication 274) are available from the WIPO website in Arabic, Chinese, English, French, German, Italian, Portuguese, Russian and Spanish. Separate pdf versions of the Treaty and Regulations are also available in the same languages.

PCT statistics 2024

The 2024 edition of the PCT Yearly Review summarises PCT activities and developments in 2023. It contains a comprehensive set of statistics relating to PCT filings and the performance of the international patent system in 2023 (including filings by top countries of origin, by top applicants and by technological fields, as well as statistics on participation of women inventors in PCT applications). It also contains statistics relating to national phase entries in 2022 (the latest available year).

For further details please see here (pages 2 and 3). The PCT Yearly Review is available in English on the WIPO’s website.

PCT Patent Prosecution Highway (PCT-PPH) Pilots

On 1 June 2024, a new two-way PCT-PPH pilot program started between the National Institute of Industrial Property (Chile) and the European Patent Office (EPO). Under this program, accelerated processing in the national phase in one Office is available on the basis of a PCT application with a positive written opinion from either the International Searching Authority (ISA) or the International Preliminary Examining Authority (IPEA). Accelerated processing is also available on the basis of a positive international preliminary report on patentability (IPRP) (Chapter II) (that is, where at least one of the claims has been determined as patentable), issued by the other Office in its capacity as ISA/IPEA. For further details, please see here (page 3).

Modified Administrative Instructions under the PCT and modified PCT Receiving Office Guidelines

With effect from 1 July 2024, Sections 305bis, 308, 707 and 804 of the Administrative Instructions under the PCT, and the PCT Receiving Office Guidelines, have been modified. Please see here (pages 5 and 6) for further details.

Practical Advice: Naming the Inventor

The following question is answered: I am a European Patent Agent. My client filed a European patent application in which he waived his right to be mentioned as an inventor. Now he intends to file a PCT application and again does not wish to be mentioned. It is equally possible in a PCT application to indicate the name of the inventor but keep it confidential? See here for further details (pages 7 and 8).

Other useful links

The June 2024 PCT Newsletter includes other useful information:

• The PCT seminar, webinar and event calendar (pages 9 and 10).
• The PCT fee tables (as of 1 June 2024) (pages 11 to 19).
• A list of PCT Contracting States and two-letter country codes (as of 1 June 2024) (page 20).