Patent Law & Practice at a Glance

We regularly review changes to patent law and practice at the UKIPO, EPO and in other jurisdictions so that we can keep abreast of the latest developments.  Please feel free to contact your usual GJE contact if you have questions on any of these changes or how they might affect specific cases.

UK UPDATE

One IPO Transformation – New patent filing and search services

The UKIPO has published a report looking at the year ahead for their coming One IPO service.  This includes a new patents search service to replace Ipsum in September 2023, and the One IPO patents service in April 2024.  A pilot for the One IPO patents service will also begin in September 2023.

Full details including how to take part in the pilot can be found here and here.

Consultation Outcome – Legislative changes for IPO digital transformation

The government previously sought views on how the IP legal framework can better support the One IPO Transformation programme.  The consultation had two parts.  Part A related to proposed changes to the law and practice to enable digital transformation and broader questions about IPO services.  Part B focussed on proposed legal and practice changes to the IPO’s tribunal function.

The government response summarises the views of respondents and sets out next steps for the various issues of the consultation.  The response can be read here.

Consultation Outcome – Standard Essential Patents and Innovation

A summary has been published on responses to a call for views from SMEs, small-cap and mid-cap businesses on the current Standard Essential Patents (SEPs) framework.  The summary of responses covers the balance of the ecosystem and benefits to innovation and consumers, competition and market functioning, transparency, patent infringement and remedies, licensing of SEPs, and SEP litigation. 

The full report can be read here.

Research and analysis – The role of registered IP

The UKIPO has published a study on how registered patent and trade mark protection is used by some UK research council grant recipients to bring their inventions and creations to market.  The full report can be read here.

IP in Kazakhstan and South Korea

The UKIPO has published guides on IP in Kazakhstan and South Korea to help make the most of your IP internationally.  The full guide for Kazakhstan can be read here, and the guide for South Korea here.

The full set of International IP Service guides, including ASEAN, Australia, Bahrain, Brazil, Cambodia, Canada, Chile, China, Colombia, the EU and EEA, India, Indonesia, Kuwait, Laos, Malaysia, New Zealand, Oman, Pakistan, Peru, the Philippines, Qatar, Saudi Arabia, Singapore, Thailand, the UAE, and Vietnam can be found here.

UK-China IP newsletter

The newsletter is targeted at UK stakeholders and includes updates on recent developments in Chinese IP.  The latest edition of this newsletter can be found here. 

Filing statistics

The statistics for June 2023 are now available here.  Statistics for previous months can be found here.

Customer service standards

The latest update on how the IPO are doing relative to the targets they have set themselves can be found here.

EPO UPDATE

Revision of WIPO Standard ST.26

As of 1 July 2023, European patent applications to which WIPO Standard ST.26 applies must comply with version 1.5 or 1.6 of that standard.  More details here and here.

New features of MyEPO Portfolio, including new shared area

On 1 July 2023, the EPO launched new features of the web-based online service MyEPO Portfolio, extended electronic notification to the Mailbox to international agents and non-EPC applicants, and introduced new means of authentication.  The details of the new features are set out here.

One of the new features is an EPO Contingency Upload Service, which will be available as a contingency measure in the event of unavailability of the EPO online filing services.  It is intended to replace web-form filing and fax filing in the future.  However, as set out here, certain documents (such as priority documents) must not be uploaded using either web-form filing or the EPO Contingency Upload Service.

Other changes mean that all communications from the EPO acting as (S)ISA or IPEA will now be affected by the Mailbox and the introduction of a shared area which will allow users and the EPO to upload and edit documents together in real-time, allowing direct interaction between users and the EPO. This feature is designed to achieve more efficient and higher-quality results in consultations.  Further details on both are set out here and further details of the shared area are set out here.  For example:

• Both examiners and users can upload documents, which must be in DOCX format to the shared area.
• All changes are informal. This means that changes made by examiners are not to be considered official communication from an examining division, and changes made by users are not to be considered a formal submission.
• Changes made by examiners are merely suggestions made to assist users. Users are not bound to these changes and are free to amend them in any way they choose.
• A copy of the uploaded document or relevant parts thereof will be attached to the minutes of the consultation.
• The documents can remain in the shared area after the consultation. If examiners and users agree on a further consultation, they may continue working on these documents or upload new documents.

The aim of the new shared area therefore seems to be to streamline the informal agreement of amendments, which currently happens largely via email and telephone consultations.

Discontinuation of notice of entry into the European phase before the European Patent Office

The EPO will stop sending out service letter EPO Form 1201, which is sent during the international phase and which specifies the allocated European application number and details the steps to take for entering the European phase, with effect from 1 November 2023.  The information will instead be made available on epo.org, as set out here.

Revised list of states for which fees for international search and international preliminary examination are reduced

The EPO has published a revised list of states for which fees for international search and international preliminary examination are reduced.

Stay of proceedings due to referral G1/23

In view of the potential impact of referral G1/23, the EPO President has decided to stay ex officio all examination and opposition proceedings before the EPO in which the decision depends entirely on its outcome.

End of 10-day rule

As a reminder, the 10-day rule will cease to exist as of 1 November 2023.  This is set out in this notice from the EPO, which notably also explains the transitional provisions for the introduction of the new rules.  In summary, the 10-day rule will apply to documents dated 31 October 2023 or earlier, which leads to the slightly odd situation where an exam report issued on 31 October 2023 will have a later due date than one issued on 1 November 2023.