Patent Law & Practice at a Glance – January 2025

UK update

New PCT fee structure at the UKIPO from 1 January 2025

The Patent Cooperation Treaty (PCT) fee structure will change on 1 January 2025. The announcement can be read here, and the summarised changes are as follows:

• The search fee has been reduced to £1,548.
• The international fee has been reduced to £1,189 for the first 30 sheets. The fee remains £13 for each additional sheet over 30.

UK-China IP

The UKIPO publishes a newsletter targeted at UK stakeholders, including updates on recent developments in Chinese IP. The latest edition of this newsletter can be found here.

Customer service standards

The latest update on how the UKIPO is performing relative to the targets it has set itself can be found here.

EPO update

Deemed withdrawal of European patent applications by applicants subject to sanctions on Russia

Rule 39 EPC has been amended to include a new paragraph (2a) stating that the designation in a European patent application of EPC contracting states, which are also EU member states, will be deemed to be withdrawn if the applicant or any co-applicant is a person subject to Russian sanctions. Corresponding amendments have been made to Rules 36 and 160 EPC. These changes are detailed here and here.

PPH pilot programme between the EPO and the Intellectual Property Office of New Zealand

The EPO has announced that, as of 1 December 2024, a PPH pilot programme between the EPO and IPONZ is in place for a period of three years, ending on 30 November 2027. Details of the pilot programme are available here.

PPH pilot programme between the EPO and the Intellectual Property Office of Brazil

The EPO has announced that the PPH programme between the EPO and INPI has been extended for five years, ending on 30 November 2029. Details of the programme are available here.

PCT update

Five million PCT applications published

The five-millionth PCT application was published on 28 November 2024, marking a significant milestone in the history of the Treaty and WIPO. Further details can be found in the PCT Newsletter (page 1).

The Riyadh Design Law Treaty

On 22 November 2024, the WIPO member states adopted the Riyadh Design Law Treaty, marking a significant step towards simplifying the process of design protection for creators worldwide. The Treaty aims to make it easier, faster, and more affordable for designers to protect their designs both at home and abroad, thereby fostering international collaboration and innovation in the field of design. Please see here (page 2) for further details.

WIPO Digital Access Service for priority documents

The German Patent and Trade Mark Office has notified the International Bureau (IB) that, with effect from 25 November 2024, it commenced operation as a depositing office of the WIPO Digital Access Service (DAS) for priority documents. As a depositing office, it will deposit certified copies of patent applications as priority documents from 25 November 2024 upon the applicants’ requests. Please see here (page 3) and here for further details.

Non-working days at the International Bureau

For computing time limits under PCT Rule 80.5, the days on which the IB will not be open, for the period from 1 January to 31 December 2025 are: all Saturdays and Sundays, and 1 January, 18 April, 21 April, 29 May, 9 June, 1 August, 25 December and 31 December. Please note that these days apply only to the IB and not to any national or regional offices in their PCT roles. Further details are available here (page 4).

WIPO Fee Transfer Service

The IB has published updated information on the common timetable for 2025, specifying the latest dates each month by which the participating collecting Office shall establish and transmit fee transfer information to the IB, and by which the lists of fees to be transferred, and the amounts of fees indicated in the said lists, shall be established, and transmitted to and from the IB. Please see here (pages 4 to 5) for further details.

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. Please see here (pages 5 to 6).

New/updated PCT resources: distance learning courses

The basic distance learning course on the PCT provided by WIPO has been updated in all 10 PCT languages, and all language versions will be available in early January 2025. The course, which provides an introduction and general overview of the PCT system, is entirely self-study, with assessment questions to measure understanding and progress. Further details are available here (page 9).

Recording of webinars on the PCT

Recordings of seven webinars presented by PCT consultant Carl Oppedahl in November and December 2024, along with presentation materials, can now be accessed here. Please also see here (page 9) for further details.

World Intellectual Property Indicators 2024

The 2024 edition of the World Intellectual Property Indicators report is now available. The report analyses IP activity globally, drawing on 2023 filing, registration and renewal statistics from national and regional IP offices and WIPO. It covers patents, utility models, trademarks, industrial designs, microorganisms, plant variety protection and geographical indicators. The report also draws on survey data and industry sources to give a picture of activity in the creative economy.

New/updated PCT resources: applicability of 90% reduction in certain PCT fees

The table showing the applicability of the 90% reduction in certain PCT fees has been updated with effect from 1 January 2025, and is available here. The table showing the status prior to 1 January 2025 will remain available in parallel for a few months.

New/updated PCT resources: materials for the European Qualifying Examination

The IB, with the agreement of the Examination Board for the EQE and the EPAC Board, has made available on the PCT website a special edition of the PCT Applicant’s Guide containing individual annexes and the introductions to the “International Phase” and the “National Phase” in both English and French. The PDF files have been replaced by a searchable and comprehensive document available for the EQE.

New/updated PCT resources: enhancement of the PCT Applicant’s Guide

To improve the readability of the various annexes of the PCT Applicant’s Guide and optimise the overall user experience, the endnotes and related information in all annexes have been integrated into the main body of the text for all contracting states and offices. This new format aims to improve data presentation and increase navigation efficiency, making it easier to access relevant content. Please see here (page 9) for further details.

Practical advice: options for action following the international search

The following question is answered: “I filed my PCT application and have received the international search report and the written opinion from the International Searching Authority. I wish to address the issues raised in the written opinion and thereby hopefully increase my chances of obtaining patent protection in the national phase. What can I do to achieve this objective and how?” Please see here for the detailed answer (pages 9 to 11).

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 for the detailed answer (pages 10 and 11)

Other useful links

The PCT seminar, webinar and event calendar can be found here (page 12).

The PCT fee tables (as of 1 December 2024) can be found here (pages 13 to 22).

A list of PCT contracting States and two-letter country codes (as of 1 December 2024) can be found here (page 23).