Patent Law & Practice at a Glance – February 2025

UKIPO update

Guidance – Examining patent applications relating to AI inventions

Following the judgment of the Court of Appeal in Emotional Perception AI Ltd v Comptroller-General of Patents, the UKIPO has updated its guidelines for examining patent applications for using artificial intelligence and corresponding illustrative scenarios showing how the UKIPO would apply the guidance.

The updated guidelines and scenarios can be accessed here.

Patent searching

IPSUM is no longer available and has been replaced by a “Search for Intellectual Property” service as of mid-January. The new service expands on IPSUM and allows searching for patents and SPCs using keywords and official numbers. The new search service also provides data-driven patent insights, such as filing trends.

The new UKIPO patent search service can be accessed here.

Filing statistics

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

Customer service standards

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

EPO update

Processing of personal data by the Boards of Appeal

An independent oversight mechanism for the processing of personal data by the Boards of Appeal acting in their judicial capacity has been established. Details are set out here.

Issuing of electronic priority documents

Following the decision of the Administrative Council of the European Patent Organisation recommending a common practice in regard to issuing and accepting electronic priority documents, the EPO will begin issuing priority documents in electronic format upon request. This will serve as a complement to the EPO’s participation in the WIPO Digital Access Service (DAS).

Details of the new process are set out here, here and here. The practice of issuing electronic priority documents will be introduced in two phases. The first will be a pilot phase starting in February 2025.

Updated Guidelines for Examination

By decision of the President of the EPO dated 3 December 2024 and pursuant to Article 10(2) EPC, the Guidelines for Examination in the European Patent Office (EPC Guidelines) have been amended in line with the EPO’s policy to provide an annual update. The amended EPC Guidelines, which enter into force on 1 April 2025, will be published as a complete April 2025 edition that will supersede the March 2024 edition. More details are set out here.

Updated PCT-EPO Guidelines

By decision of the President of the EPO dated 3 December 2024 and pursuant to Article 10(2) EPC, the Guidelines for Search and Examination at the European Patent Office as PCT Authority (PCT-EPO Guidelines) have been amended in line with the EPO’s policy to provide an annual update. The amended PCT-EPO Guidelines, which enter into force on 1 April 2025, will be published as a complete April 2025 edition that will supersede the March 2024 edition. More details are set out here.

Unitary Patent Guidelines

By decision of the President of the EPO dated 3 December 2024 and pursuant to Rule 3 of the Rules relating to Unitary Patent Protection in conjunction with Article 10(2)(a) EPC, the new Unitary Patent Guidelines (UP Guidelines) will be published for the first time and enter into force on 1 April 2025. The UP Guidelines will be issued in electronic form only, as an HTML file, and will be available in all three official languages on the EPO website at epo.org. More details are set out here.

Extension of electronic notification via the EPO Mailbox to proceedings before the Enlarged Board of Appeal

As of 1 February 2025, the Boards of Appeal has begun to notify documents in proceedings before the Enlarged Board of Appeal electronically via the EPO Mailbox. Thus, all communications, summonses and decisions relating to proceedings before the Enlarged Board of Appeal will be notified electronically via the Mailbox, where the addressee has activated this service. More details are set out here.

PCT update

World Intellectual Property Day – 26 April 2025

The theme of World Intellectual Property Day 2025 is ‘IP and music: Feel the beat of IP’. WIPO asks that you join them in honouring the universal language of music and the talented creators, inventors and entrepreneurs who continue to develop new sounds, styles and technologies that shape the future of music and make us feel the beat of IP. Please see here (page 6) for further details.

WIPO Standard ST.26

WIPO Standard ST.26 establishes uniform requirements for presenting nucleotide and/or amino acid sequences in patent applications. The Sequence Listings Task Force is currently considering modifications to the minimum length requirement of sequence listings. The Task Force is looking to gather input directly from applicants and interested parties to determine the impact of the minimum length requirement. Applicants, patent agents and any other interested parties are invited to participate in the survey before 31 March 2025. Please see here (pages 6-7) for further details.

Non-working days at the IB

For the period from 1 January to 31 December 2025, non-working days at the IB will be as follows: All Saturdays and Sundays, and 1 January 2025, 18 April 2025, 21 April 2025, 29 May 2025, 9 June 2025, 1 August 2025, 25 December 2025 and 31 December 2025.

PCT information update

With effect from 1 January 2025, the EPO has notified the IB that it will discontinue EPO Web-Form Filing and will no longer accept international applications and other documents and correspondence relating to international applications filed using EPO Web-Form Filing.

With effect from 1 January 2025, there has been a change in the equivalent amounts in EUR for the transmittal fee, fee for priority document and supplement for airmail payable to the IB as receiving office.

Please see here (pages 5 and 6) for further details.

Updated PCT resources: past webinars

Recordings of seven webinars presented by PCT Consultant Carl Oppedahl, as well as supporting documents, can now be accessed here. The webinars are entitled ‘Best practices for filing a PCT application in RO/US’, ‘Best practices for presentation of priority claim in a PCT application’, ‘Choosing a Receiving Office for your PCT application’; ‘Choosing an International Searching Authority for your PCT application’, ‘Choosing between US national phase entry or bypass continuation from your PCT application’, ‘Making best use of ePCT to manage your PCT applications’ and ‘Making best use of PCT Declarations in your PCT application’.

A recording of the webinar entitled ‘Mastering ePCT webinar series: Request for Change under PCT Rule 92bis’, as well as supporting documents, can now be accessed here.

Practical advice: request for restoration of the right of priority due to reasons of financial hardship

The following question is answered: I am a patent agent and, because of financial difficulties caused by a difficult personal situation, my client instructed me to file a PCT application one week after the expiration of the priority period. When entering the priority claim in the request form in ePCT, the filing system indicated that the right to claim priority is eligible for restoration. How can I request restoration of the priority right and what are the chances that the right of priority would be restored in this case? Please see here (pages 10 and 11) for the detailed answer.

Other useful links

The PCT Seminar, Webinar and Event Calendar can be found here (page 9).

The PCT Fee tables (as of 1 January 2025) can be found here (pages 10-17).

A list of PCT Contracting States and Two-Letter Country Codes (as of 1 January 2025) can be found here (page 18).