IP News: A Roundup of Recent Developments

The following summaries collate a selection of the latest IP news in the UK, at the European Patent Office (EPO), and in relation to PCT (international) applications.  The summaries have been prepared by members of our patent team, and so focus primarily on patent matters, but also have some points relating to trade marks and designs.  If you have any questions, please contact your usual GJE attorney, or email gje@gje.com.

UKIPO NEWS

Covid-19 response

The UKIPO has provided guidance on how their services are affected and how individuals can interact with them in the light of the restrictions currently in place in the UK.  This guidance can be found here.

The UKIPO’s specific guidance on patent matters can be found here.  There is also a page for trade marks and designs and tribunals and hearings.  The biggest change recently on the patent side is that the UKIPO have announced they will be reverting to the two-month time limit for responding to the first examination report when that report sets the compliance period (i.e.  when the first examination report is issued later than three and a half years from the earliest priority date).

Effect on IP of the end of the Brexit transition period

The UKIPO has provided guidance on how IP is affected by the end of the Brexit transition period.  While the UKIPO website has this guidance spread throughout the site, the main guidance can be found here and here.

There have been various changes to UK law in light of the end of the transition period.  There are changes to the Patents Act 1977, Patent Rules 2007, Trade Marks Act 1994, Trade Marks Rules 2008, Registered Designs Act and Rules and CDPA 1988.  These are the main UK patent, design and trade mark laws.  Other IP related laws and rules will also have been updated in the light of the Brexit transition period ending.

UKIPO Manuals updated

The UKIPO has a suite of manuals providing guidance to examiners, attorneys and IP right holders.

The manual of patent practice (MOPP) has been updated and can be found here.  The latest updates can be found here.

The formalities manual has been updated and can be found here.  Chapter 14 has been updated to account for the effect of the transition period on divisional applications in relation to the address for service.  The specific section updated is section 14.02.

New SPC forms

The UKIPO has provided some new SPC forms to account for the changes in procedure caused by the end of the end of the Brexit transition period.  The new forms are the SP5 and SP6.  These respectively relate to notification of the UKIPO of an intention to use the SPC manufacturing waiver and to notify the UKIPO of marketing authorisation granted for a medicinal or plant protection product after an SPC application has been made.

Ecommerce advice

The UKIPO has advice for IP rights holders in relation to ecommerce relating to how Alibaba, Amazon, eBay and Facebook help rights holders protect their IP.  The guidance can be found here.  The information relating to Amazon has been updated recently.

Monthly filing statistics

In 2020 the UKIPO started publishing monthly filing statistics for patents, trade marks and designs.  The statistics are typically released two to three months in arrears.  The monthly filing statistics for the latest three months published by the UKIPO can be found here: September, October and November 2020.  The general page for the statistics can be found here.

UK-China IP newsletter

Through UK-China cooperation a newsletter covering recent developments in IP in China, the UK and EU is published monthly.  The latest newsletters, the January 2021 edition, can be found here.  Details on how to get copies of previous editions can be found here.

EPO NEWS

Closed days for 2021

Each year, the EPO filing offices are closed on a series of specific days, corresponding e.g.  to national holidays.  This notice gives the days on which EPO filing offices are closed in 2021.  The next closed day is on 8 March 2021.

G3/19

The EPO has published the details resulting from the decision of the Enlarged Board of Appeal, case no.  G3/19.  This concerns the referral of certain questions to the enlarged Board concerning the patentability of plants and animals obtained by means of an essentially biological process.  The Enlarged Board found that product claims and product-by-process claims directed to plants or animals are not allowable “if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process”.

Amendments to the Implementing Regulations

The Administrative Council has approved the amendment of Rules 19 and 143 EPC.  The reference to “address of the inventor” in both rules has been amended to read “country and place of residence of the inventor”, while paragraphs 3 and 4 of Rule 19 EPC have been deleted.  The deleted paragraphs relate to communications between the EPO and the inventor in cases where the applicant is not the inventor.  The amendments to Rule 19 EPC enter into force on 1 April 2021 while the amendments to Rule 143 EPC enter into force on 1 November 2021.

The Administrative Council has approved the amendment of Rules 117 and 118 EPC to allow for the taking of evidence by video conference.  The practicalities surrounding the taking of evidence by videoconference are discussed in this notice.

Oral proceedings by videoconference before examining and opposition divisions

As of 4 January 2021, oral proceedings before examining divisions are to be held by videoconference unless “there are serious reasons against holding the oral proceedings by videoconference”.

A similar decision, also entering into force on 4 January 2021 has been issued in respect of oral proceedings before opposition divisions.

The justification for these decisions has been explained here, along with further details regarding this new practice.

Another notice clarifies the practice of the EPO in the event of the non-attendance or applicants at oral proceedings in front of the examining divisions.  Of particular note is the statement that an “announcement of non-attendance at oral proceedings or a statement that the party will not be represented at oral proceedings is normally interpreted as a withdrawal of any request for oral proceedings”.

Changes to the practice of the Boards of Appeal

As of 1 December 2020, a Board of Appeal may create a consolidated list of documents cited by the parties during these proceedings if it considers such a list to contribute to the efficient processing of the appeal.  This change applies to documents filed for the first time during appeal proceedings.  Also as of 1 December 2020, copies of documents cited in and attached to party submissions are no longer to be forwarded automatically in inter partes appeal proceedings.  Both changes are discussed here.

Possibility of further extensions due to COVID-19

The focus of this notice is on the remedies already provided for under the EPC and PCT that are available to applicants in cases of non-observance of time limits.  In addition, point 5 raises the possibility of there being a further extension in the future under Rule 134(2) EPC in the case of general dislocation in Germany.  The EPO state they will continue to monitor this matter, and will inform applicants and their representatives accordingly.

Updates to the Guidelines for Examination

The 2021 edition of the Guidelines has been drawn up and will enter into force on 1 March 2021.  A summary of the changes to the Guidelines is given here (scroll down to the penultimate paragraph).  One interesting change is that informal consultations with examiners should in principle now take place by videoconference but can also be held by telephone at the request of the applicant.  The Guidelines have also been revised in view of G3/19, concerning products from essentially biological processes.

PPH programme at the EPO

It’s possible to accelerate examination at the EPO.  Filing a “PACE” request is one reasonably popular means.  However, an alternative means for acceleration is by way of the PPH (“Patent Prosecution Highway”), which contains a request to accelerate proceedings at the EPO based on work products obtained from examination in other jurisdictions.  The EPO has PPH programmes in place with various patent authorities across the world.  As of 6 January 2021, the EPO’s PPH programmes with the Canadian IPO, the IPO of Singapore, and the Israel Patent Office, have been extended indefinitely.

Safeguards which apply in the event of electronic outages

This notice sets out the safeguards which apply under the EPC and the PCT in the event of outages of means of electronic filing and other online services, including the extension of periods under Rule 134(1) EPC and Rule 82quater.2 PCT.

PCT NEWS

Annual overview of IP activity from WIPO

WIPO have provided their annul overview of global IP activity.  A helpful summary is here, which offers an interesting read, noting an increase in trade mark and industrial design filing activity by 5.9% and 1.3% respectively.  For particularly interested readers, go here for the full report.

Sequence listings

WIPO have launched a desktop app enabling applicants to prepare sequence listings compliant with WIPO ST.26.  This relates to the exact format in which sequence listings (which often occur when patenting inventions in the biotechnology field) are identified when attorneys file an invention at the EPO.  Various improvements to the WIPO sequence tools are being implemented and tested, with beta releases occurring in 2021.  For more information, see here and here.

PCT(UK) and Gibraltar

Early October 2020, the UK announced that its ratification of the Paris convention and of the PCT will now be extended to cover Gibraltar.  This entered into force on 1 January 2021.  For more, see here.  The corresponding information on the UKIPO website can be found here and here.

PCT(UK) and Guernsey

On 23 December 2020, the UK announced that the PCT(UK) will now be extended to cover Guernsey.  The declaration will enter into force on 23 March 2021.  For more, see here.  The corresponding information on the UKIPO website can be found here and here.

Budapest treaty

On 1 January 2021, the UK announced that its existing ratification to the Budapest treaty would extent to also apply to Guernsey, the Isle of Man and Gibraltar.  All states party to the Budapest treaty are obliged to microorganisms deposited as a part of the patent procedure, irrespective of where the depository authority is located.  This change entered into force on 1 January 2021.  More here.

PCT resources

Some updated PCT resources are now available – the ePCT user guide has been updated, and some updated seminar materials are also available.  These seminar materials may be of interest to those wanting to find out more about the PCT.  More here.

If you have any questions or would like to discuss any of the updates featured, please contact your usual GJE attorney, or email gje@gje.com.