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.

UK UPDATE

New PCT fee structure at the UKIPO from 1 Jan 2023

The announcement can be found here.  Summarising the changes:

• The international fee has increased to £1200 for the first 30 sheets, and £14 for each sheet over 30. 
• The reductions for e-filing have also been increased to £181 (not being in character coded format) and £271 (being in character coded format).

IP in New Zealand

The UK IPO has published a guide on IP in New Zealand, which can be found here.

The full set of International IP Service guides, including ASEAN, Australia, Brazil, Chile, China, Colombia, the EU and EEA,  India, Indonesia, Peru, the Philippines, and Singapore can be found here.

One IPO – First look at the planned search service

The UK IPO has published an article about the new search service that will provide new tools to help search and analyse IP.  The article can be read here.

A pilot for the patent search service is planned for June 2023, with the full patent launch in Autumn 2023.  Trade marks and designs will be added in 2025.

New CEO at the UKIPO

Adam Williams has been appointed Chief Executive and Comptroller-General of the Intellectual Property Office.  The IPO’s statement can be read here.

UK-China IP newsletter

The latest edition of this newsletter can be found here.

EPO Update

Presentation requirements of the application documents

Although no changes have been introduced as of yet, the rules governing the presentation of the application documents have been revised to delegate the power to set the presentation requirements to the President of the EPO.  It has also been clarified that if in oral opposition proceedings the interlocutory decision of the opposition division has been based on documents not complying with these requirements (for example, if handwritten amendments have been made to the description), the formalities officer will request the patent proprietor to file a formally compliant verbatim version of amended text passages once the interlocutory decision becomes final.  More details are available here and here.

PPH programme between the IP5 offices

The European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the China National Intellectual Property Administration (CNIPA) and the United States Patent and Trademark Office (USPTO), collectively referred to as the IP5 Offices, have decided to extend the comprehensive Patent Prosecution Highway programme for an indefinite period.  Full details of the programme have been published here.

PPH programme between the EPO and Peru

The European Patent Office (EPO) and the National Institute for the Defense of Competition and Intellectual Property Protection (INDECOPI) have decided to extend the comprehensive Patent Prosecution Highway (PPH) programme for an indefinite period.  Full details of the programme have been published here.

Oral proceedings

As of the new year, the default for oral proceedings before examining divisions, opposition divisions, the Legal Division and the Receiving Section are to be held by videoconference.  Details here and here.

Fees for international applications

PCT fees are set by WIPO in Swiss francs.  However, where these fees must be paid to the EPO, they must be paid in euros.  The equivalent amounts are set yearly by WIPO, and the equivalent amounts as of 1 January 2023 have been published here.