Patent Law & Practice at a Glance

We regularly review changes to patent law and practice at the UK-IPO, 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.

New biological sequence listings requirements for patent applications

From 1 July 2022 a new global standard will apply to all new patent applications containing biological sequence listings. The new standard, WIPO ST.26, applies to biological sequences with ten or more defined nucleotides or with four or more defined amino acids. This change is being adopted by all WIPO contracting states including the UKIPO. Details of WIPO ST.26 are available.

New software, WIPO Sequence, is available for applicants to compile sequence listings.

Details of the UKIPO’s new requirements and procedures for Changes for patent applications with biological sequence listings are available.

UK-China IP newsletter

The latest edition of this newsletter can be found here.

IP in India

The UKIPO has published a guide on this, which can be found here.

The full set of guides, including ASEAN, Brazil, Chile, China, Colombia, Indonesia, Peru, the Philippines, Singapore and Vietnam in addition to India can be found here.

UKIPO Service standards

The latest UKIPO update on their how they are doing relative to the standards they set can be found here.  Recently published details on the UKIPO’s corporate priorities for 2022 and 2023 can also be accessed from this page.

The UKIPO is also pleased that they have reduced their IP rights examination backlog to zero.  Details can be found here.

Filing statistics

The UKIPO statistics for May 2022 are now available here.

Statistics for previous months can be found here.

Use of IP across UK industries

The UKIPO have published an update to their research in this area with a breakdown of details for 2017 to 2019.  The research can be found here.

Blog on Green Channel

The UKIPO published a blog post with some of the latest information about the Green Channel, which can be used to accelerate patent protection for technology that has an environmental benefit.  The post can be found here.

Patents factsheets

The UKIPO patent grant timeline has recently been updated.  All the patents factsheets can be found here.

Design registration timeline

This has been updated.  Details can be found here.

IP for business and IP in education

The UKIPO is providing a new tool in the form of a business lifecycle framework.  Details of this and other guidance from the UKIPO on IP for business can be found here.

The UKIPO has updated their pages on IP in education.  These can be found here.

One IPO transformation

The UKIPO have published an update on their One IPO transformation programme one year into the programme.  Details can be found here.

EPO UPDATE

10-day rule

At a meeting held by the EPO Committee on patent law on Thursday 12 May 2022, a proposal for ‘dropping’ the 10-day notification rule was preliminarily approved.  The proposal still needs to be approved at the Administrative Council meeting at the end of June, but if it passes there too we could expect this change to come into force on 1 February 2023.  The proposed change would abolish the 10-day rule regardless of whether communications are delivered electronically or by post.  We will keep a close watch on this so that we can keep our clients informed.

Suspension of the PPH programmes between the EPO and Russia

The EPO has suspended the PPH programme between the EPO and EAPO and the PPH programme between the EPO and Rospatent.

Unitary Patent

In advance of the adoption of the UPC and Unitary Patent, the EPO has published the Rules relating to Unitary Patent Protection and the Rules relating to Fees for Unitary Patent Protection.

MyEPO Portfolio

The EPO is launching MyEPO Portfolio, a secure, web-based online service for parties to proceedings before the EPO. It is designed to improve accessibility, enable the exchange of digital information and provide improved procedural guidance.  After its launch, MyEPO Portfolio will be accessible from MyEPO, an area on the EPO website that will provide access to a variety of EPO online services in the future, with additional services added over time. A suite of user guides and tutorials will be available for each service.

EQEs

Candidates have been reminded that, with effect from 1 January 2021, all correspondence from the Examination Secretariat is conducted in electronic form only, via the myEQE portal.  This goes for all appealable decisions too.  The requirement to use registered mail is removed.

Submissions made by other parties in appeal proceedings

As of 1 June 2022, in all inter partes appeal proceedings, the Boards of Appeal has adapted their practice of informing the parties of submissions and documents which are filed by a party to the proceedings or by a third party.  Party submissions, in particular the notice of appeal, the statement of grounds of appeal and the reply to the statement of grounds, will continue to be communicated to the other parties.  However, copies of all documents attached to party submissions, including patent and non-patent literature cited in party submissions as well as documents containing amendments, such as an amended set of claims, are no longer to be forwarded automatically.  All these documents contained in the electronic file can be downloaded from the European Patent Register.  They will be provided to the parties free of charge in paper form upon request only.  The Boards of Appeal’s practice of informing the other parties of the filing of items or documents which are not available for inspection in the electronic files of the European Patent Register (e.g. non-scannable objects, non-public documents) or are not easily legible (e.g. documents filed in colour) is retained.

Filing of sequence listings in the international (PCT) procedure before the EPO as receiving Office

The EPO has published additional information on the procedure before the EPO as receiving Office applicable under the PCT from 1 July 2022 in the case of non-compliance with WIPO Standard ST.26 of a sequence listing disclosing nucleotide and/or amino acid sequences.

PCT Update

New Contracting State

On 6 July 2022, Cabo Verde will be bound by the PCT.  Any international application filed on or after 6 July 2022 will therefore automatically include the designation of Cabo Verde.  It will also be automatically elected in any demand filed in respect of an international application filed on or after 6 July 2022.  More here. 

On 6 July 2022, Cabo Verde will also be bound by the Paris Convention.  Cabo Verde is already a member of the WTO.  More here.

Budapest Treaty

The Budapest Treaty will enter into force with respect to Malaysia on 30 June 2022.  ‘The Budapest Treaty’ refers to the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.  More here.

Electronic Filing & Processing of International Applications

The UKIPO is to stop accepting international applications filed by PCT-SAFE.  The UKIPO is in the process of implementing ePCT-filing as a replacement, and is looking to accept filings via this system as of 1 July 2022.  More here.

ePCT Update

Push notifications are now available as a strong authentication option for ePCT.  More here.

WIPO DAS

The Turkish Patent and Trademark Office will commence operation as a depositing office from 1 June 2022.  More here.

PATENTSCOPE

Targeted limitations related to wildcard searches have been put in place.  More here.

Modified Administrative Instructions under the PCT

Annex F and Appendix I to Annex F have been modified.  From 1 July 2022, WIPO Standard ST .26 files can be used when filing international applications, and WIPO Standard ST .25 files can continue to be used in the processing of international applications filed prior to that date.  More here (page 1).

Germany: National Phase Entry Date Change

The new time limit for entry into the national phase in Germany is 31 months.  This will be applicable from 1 May 2022 in respect of international applications for which the previously applicable 30-month time limit has not yet expired on 30 April 2022, and to the extent that the applicant has not expressly made an effective request for entry into the national phase before 1 May 2022.  More here (pages 2 to 3).

New/Updated PCT Resources

The FAQs on the filing of sequence listings under new WIPO Standard ST. 26 have been updated. Applicants planning to file international applications containing sequence listings on or after 1 July 2022 are advised to read.  New ePCT video tutorials are also available.    More here (page 6).  Further PCT resources are available here.

Change of Practice: EPO & Form PCT/RO/105

From 1 April 2022, the EPO as receiving office will no longer systematically attach a copy of the received request form (PCT/RO/101) to the Form PCT/RO/105 (notification of the international application number and filing date). This will only be sent in cases of ex officio correction(s) by the receiving office.  This is intended to allow applicants to immediately identify whether the receiving office made a change to the request form.  More here (page 7).

Updated PCT-EPO Guidelines

The Guidelines for Search and Examination at the EPO as PCT Authority (PCT-EPO Guidelines) have been amended with effect from 1 March 2022.  Amendments have been made to almost all parts of the Guidelines.  However, the major change is the expansion of Part A.  More here (pages 7 to 8).

Practical Advice: Furnishing Priority documents & Requesting that an international application be treated as an application for another type of protection

The March newsletter contains a practical advice section on the fulfilment of the requirement to furnish priority documents.  More here (pages 8 to 10).  The April newsletter contains a practical advice section on requesting for another type of protection, other than a patent, using an international application.  More here.

Other Useful Links

The 2022 edition of WIPO’s World Intellectual Property Report can be found here.

The WIPO Symposium on Trade Secrets and Innovation 2022 will take place from 23 to 24 May at WIPO Headquarters in Geneva, Switzerland. More here.

The PCT Seminar, Webinar and Event Calendar can be found here.

The PCT Fee table (as of 1 April 2022) can be found here.

A list of PCT Contracting States and Two-Letter Country Codes (as of 6 April 2022) can be found here.