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

Compliance periods on divisional applications

As of 1 May 2023, the compliance period for UK divisional applications (i.e. those filed on or after that date) is equal to the original and un-extended compliance period of the parent application.  Prior to this date, UK divisional applications were accorded a compliance period equal to the compliance period of the parent application including any extensions – so this is a subtle but important change by the UKIPO concerning divisional applications.

In practice, this change means that the latest a divisional application can be filed (without relying on discretionary extensions of time) is one month before the expiry of the original compliance date of the parent application, even if the compliance date on the parent application is extended.

More information can be found here. 

Forms – Patents, trade marks and designs

A new end page has been added to most UK patent, trade mark, and design forms. The new page contains a checklist and sending instructions to help correct completion of the forms.  Full details of the changes can be read here.

Guidance – Avoiding misleading payment requests

Customers are receiving an increasing amount of misleading invoices from companies requesting payment for trade mark, design and patent services such as publication, renewal or entry in business directories.  The UKIPO has published guidance on identifying misleading invoices and what you should do if you receive one.  The guidance can be read here.

International IP Guides

The UKIPO have published guides on IP in various non-UK countries.

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.

IPO counterfeit goods research

The IPO have published the results of a large scale consumer survey looking at buying counterfeit goods.  As an overarching trend, the proportions of people who currently, used to or had never purchased counterfeit goods was in line with previous studies.  The survey and analysis can be read here.

Online copyright infringement tracker survey

The IPO conducts an annual study on the behaviours and attitudes for the use of online digital content.  The overall level of infringement across content categories (excluding digital visual images) increased from 25% to 32%.  The full publication can be read here.

Standard Essential Patents explained + questionnaire

A standard essential patent (SEP) is a patent that protects technology that is essential to implementing a standard.  The IPO has provided an overview of their work in relation to SEPs including a discussion of the nature of SEPs, how technical standards are developed, and a summary of a previous call for views.

A new questionnaire targeting SME, small-cap and mid-cap businesses has been launched to gather more views on SEPs from these groups.

The overview and questionnaire can be found here.

IPO User research and feedback

The IPO is calling for volunteers to join their user panel to participate in testing their new One IPO Transformation services.  Sessions are carried out through Microsoft Teams, typically run between 60-90 minutes and include conversations in a 1:1 setting.  More details on the user research sessions and a survey to register can be found here.

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 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.

Intellectual Property Office Corporate Priorities 2023 to 2024

The UKIPO has published their corporate priorities for 2023-2024.  These can be read here.

Viscount Camrose announced as the new IP Minister

Viscount Camrose was appointed Parliamentary Under Secretary of State in the Department for Science, Innovation and Technology on 7 March 2023.  The announcement from the IPO can be read here.

Meet the IPO Board: CEO Adam Williams, Deputy CEO Andy Bartlett, and Chief DDaT Officer Siân-Nia Davies

Adam Williams was announced as the UKIPO’s new CEO in December 2022.  An article interviewing their new CEO can be read here.

An interview with the Deputy CEO of the IPO, where he discusses his time at the IPO and the upcoming ‘One IPO Transformation’, can be read here.

An interview with the Chief Digital, Data, and Technology officer (CTO) at the IPO, where she discusses her time at the IPO, can be read here.

UK-China IP newsletter

The latest edition of this newsletter can be found here.

Filing statistics

The filing statistics at the IPO by month 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

Republic of Moldova invited to accede to European Patent Convention

At its 173rd meeting on 13 December 2022, the Administrative Council of the European Patent Organisation decided to extend an invitation to accede to the European Patent Convention (EPC) to the Republic of Moldova.  Moldova is expected to become the 40th contracting state to the EPC.  More details are available here.

A summary of the other matters discussed in this meeting is available here.

Revision to EPO Fees

As of 1 April 2023, the EPO has revised its fees.  The changes are set out here, here, here, and here.  The EPO has also published supplementary publication 2 of the 2023 OJ which sets out the schedule of fees and expenses applicable as of 1 April 2023.

Updated Guidelines for Examination

The Guidelines for Examination have been amended in line with the EPO’s policy to provide an annual update. The amended EPC Guidelines, which entered into force on 1 March 2023, are available here and details of the update are set out here.

The EPO has highlighted the following changes to the Guidelines:

• Parts A, C and E have been updated to include information about the applicability of new Rule 56a EPC, which entered into force on 1 November 2022. 
• Part A has also amended to reflect the accession of Montenegro to the EPC on 1 October 2022 and the changes resulting from the revised Arrangements for deposit accounts (ADA).
• Part F-II now includes a section with details of the nucleotide and amino acid sequences to be included in sequence listings and the technical aspects to be considered when generating a sequence listing complying with WIPO Standard ST.26.
• In Part G, information on capturing and storing evidence of multimedia disclosures found on the internet has been added.
• In addition to covering the transitional measures put in place ahead of the upcoming launch of the unitary patent system, the new Guidelines also provide information on the legal changes made to support the digital transformation in the EPO’s patent grant procedure and point to changes not yet in force at the time of writing but due to be implemented over the course of this year.

Updated PCT-EPO Guidelines

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 entered into force on 1 March 2023, are available here and details of the update are set out here.

The most significant change is the expansion of Part A, which now includes a new Chapter VIII on representation containing information applicable to all procedures.

Extension of time limits in view of earthquakes in Türkiye and Syria

In view of the earthquakes in Türkiye and Syria the EPO drew attention to the general legal remedies provided for under the EPC in cases of non-observance of time limits, in particular, to the application of Rule 134(2) EPC in accordance with this Notice, as well as the potential application of Rule 134(5) EPC and Rule 82quater.1 PCT.  In the case of parties who reside in Türkiye or have appointed representatives with their place of business in Türkiye, time limits expiring in the period from 6 February to 6 April were extended to 7 April 2023 pursuant to Rule 134(2) EPC.  More details are set out here.

Decommissioning of outgoing faxes

As of 1 March 2023, the EPO is no longer sending faxes in proceedings under the EPC.  Details of the change are given here.

Information from the Boards of Appeal

Supplementary publication 1, OJ 2023 has been published.  This sets out information from the Boards of Appeal including the composition of the presidium of the Boards of Appeal, business distribution, and texts relating to proceedings such as the Rules of Procedure.

End of 10 day rule

As previously reported, 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.

Unitary patents

The EPO has published supplementary publication 3 of the 2023 OJ which sets out the practice and procedures before the EPO relating to European patents with unitary effect.

Resumption of proceedings following decision G 2/21

With effect from 24 March 2023 the EPO has lifted the stay on proceedings in which the decision depended entirely on the decision in G2/21.  (Oddly, this took effect following a notice dated 24 April 2023.)

PCT UPDATE

ePCT Update

A new version of ePCT was released on 24 January 2023.  See here for a summary of the main new features (pages 1 to 3).  It is noted that there is also a new process for request access rights in ePCT (see page 3).  An overview of the new process for requesting access rights is described in the FAQ available at: https://www.wipo.int/pct/en/epct/learnmore.html?N=1636.

New PCT Contracting State

On 15 March 2023 Mauritius became bound by the PCT.  Any international application filed, or demand filed in respect of an international application, on or after 15 March 2023 will automatically include the designation of Mauritius.  See here (page 1).

PCT Applicant’s Guide

A fully electronic version of the PCT Applicant’s Guide (‘eGuide’) is now available at https://www.wipo.int/pct/en/guide/index.html.  The eGuide contains all the content of the traditional Guide but presented the data in a different structure, offering new features including hyperlinks to legal provisions and to other PCT information resources.  The eGuide allows users to navigate through all relevant content on the same page (avoiding users having to open and check each individual Annex for information about a specific State or Office).  The eGuide is also searchable, and may be used on mobile devices.  See here for further details (pages 1 and 2).

Non-Working Days at the IB

The days on which the IB will not be open for business, for the period from 1 January to 31 December 2023, are as follows: all Saturdays and Sundays, 2 January, 7 April, 10 April, 18 May, 29 May, 25 December and 29 December.  See here (page 2).

Budapest Treaty: Declaration by the African Intellectual Property Organisation

As of 15 March 2023, the deposit of a microorganism made by a patent applicant with any ‘international depositary authority’ under the Budapest Treaty must be recognised by the African Intellectual Property Organisation (OAPI) for the purposes of its patent procedure. See here for further details (page 3).

World Intellectual Property Indicators 2022

The 2022 edition of the World Intellectual Property Indicators report is now available in English at https://www.wipo.int/publications/en/details.jsp?id=4632.  The report analyses IP activity around the globe, covering patents, utility models, trademarks, industrial designs, microorganisms, plant variety protection and geographical indications.  See here (page 3).

WIPO Fee Transfer Service

Updated information relating to the 2023 timetable can be found in the Official Notices (PCT Gazette) of 1 December 2022 at Official Notices (PCT Gazette) Collection (wipo.int). This information specifies the latest dates each month by which a 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 stablished and transmitted to and from the IB.  See here (page 3).  The IB has published a list of the PCT fee transfers that are part of the WIPO Fee Transfer Service for each participating Office as of 31 December 2022.  See here (page 4). 

Electronic Filing and Processing of International Applications

The following Offices have updated their e-filing notification to take into account the change in the applicable format for the filing of sequence listings as from 1 July 2022: CL, HR, IB, NL, TH and ZA.  See here (page 4).

Languages Accepted for Language-Dependent Free Text in Sequence Listings in accordance with PCT Rule 12.1(d)

The following receiving Offices have notified the IB of their language requirements relating to the language-dependent free text contained in the sequence listing part of the description of an international application: CL, HR and ZA.  See here (page 4).

WIPO Digital Access Service for Priority Documents

The Monaco Industrial Property Office has notified the IB that, with effect from 1 February 2023, it commences operation as both a depositing office and an accessing office of the WIPO Digital Access Service for Priority Documents (DAS).  See here for further detail (page 5).

Warning: Bogus Requests for Payment of Fees

A new bogus invitation originating from ‘IPWU – Intellectual Property World Union’ has been identified.  This is an invitation that does not come from the IB and is unrelated to the processing of international applications under the PCT. To view an examples of the invitation, as well as many other examples that have been brought to the attention of WIPO by PCT users, and for further information on such requests in general, please see here.  Please also see here (page 10).

Unconventional PCT publication numbers in early 2023

Due to a software error, the international publication numbers of the first three publication batches of 2023 did not follow the conventional format. The numbers published ran from WO 2023/272317 to WO2023/288343.  Conventional numbering resumed on 26 January 2023, starting with WO 2023/000001, and the already published range will be skipped if reached later in the year.  See here (page 10). 

PCT in the News

The Visegrad Patent Institute has published several PCT case studies on its website at: https://vpi.int/en/09-knowledge-hub/.  The articles look at the pros and cons of filing PCT applications, the financial benefits the PCT route can provide, and consider the challenges faced by companies seeking patent protection in multiple countries.  See here (page 7).

Practical Advice: How to remove access rights in ePCT of a former employee and assign access rights to a new person

The following question is answered: I am working as a paralegal in a patent law firm and a colleague has recently left the firm.  Unfortunately, he did not transfer his access rights in ePCT to anyone else before leaving and, since he is the only one who had access to certain applications, we are now unable to access them in the system.  How can we remove his access rights and regain access ourselves to the applications in ePCT? See here (pages 7 and 8).

Practical Advice: How to correct the priority date of an international application

The following question is answered: I submitted an international application several months ago and have now received a Form PCT/RO/110 indicating that the filing date of the earlier application does not fall within the period of 12 months preceding the international filing date.  I now realise that I used the incorrect date format and indicated December 7, 2022 as 12.07.22 instead of 07.12.22.  Can I correct the priority date?  Is there a time-limit for doing so and with which authority should I request correction?

PCT Filings in 2022

In 2022, PCT filings rose by 0.3% over 2021, totalling 278,100 – the highest number ever recorded in a single year.  Details of the countries of origin and applicants with the largest number of filings, as well as the distribution of published applications across different fields of technology can be found here (pages 1 and 2). 

New/Updated PCT Resources

A new/updated ePCT video tutorial for applicants entitled ‘Request access rights after filing’ is now available.  The video provides a step-by-step demonstration of how to request access rights to an international application in ePCT after filing, and is available at: https://www.wipo.int/pct/en/epct/tutorials.html.

The webinar entitled ‘What’s New for Applicants in ePCT (21 and 23 February 2023) in the ‘Everything you need to know about ePCT’ webinar series, as well as supporting documents, can now be accessed at https://www.wipo.int/pct/en/seminar/webinars/index.html.

A recording of the first webinars recently presented by Carl Oppedahl (PCT Consultant), together with supporting documents, are now available.  See here for further details (pages 7 and 8).

Practical Advice: WIPO Pay – WIPO’s online payment platform

The following question is answered: I have recently started using the ePCT system for filing my PCT applications.  I have noticed that the International Bureau has an online payment system called WIPO Pay.  Can this be used for all PCT applications and what are the different payment methods available? See here (pages 9 and 10).

Practical Advice: Automatic assignment of access rights when filing an international application via ePCT

The following question is answered: I recently used ePCT for the first time to prepare a zip file for filing a PCT application with the United States Patent and Trademark Office as receiving office (RO/US) in order to benefit form the many useful validations that are included in ePCT.  Although I downloaded the zip file from ePCT and successfully uploaded it to Patent Center of RO/US, after receiving Form PCT/IB/301 from the International Bureau to acknowledge receipt of the record copy, I realised that I do not have access rights to the application in ePCT.  It was my understanding that by uploading zip files created using ePCT I would automatically have access rights to the application in the ePCT system after the receiving office had transitted the record copy to the IB.  Why did this not happen in my case? See here (pages 8 to 10)

Practical Advice: The Minimum Requirements for Filing an International Application

The following question is answered: I have an international application that needs to be submitted as soon as possible.  What are the minimum requirement for filing a PCT application and what can I submit at a later date? What is the recommended filing method, if I have a choice? See here (pages 9 to 11).

PCT-PPH Pilots

The two-way PCT-PPH pilot program between the EPO and the National Institute for the Defence of Competition and Intellectual Property protection (Peru) (INDECOPI), which ran from 1 Jan. 2020 to 1 Jan. 2023, has been extended for an indefinite period with effect from 2 Jan. 2023. See here (page 2).

WIPO Fee Transfer Service

It is recalled that, since 1 July 2020, any receiving office, international searching authority, authority specified for supplementary international search or international preliminary examining authority may participate in the WIPO Fee Transfer Service as a ‘participating office’, in which PCT fees are transferred form one office (‘collecting office’) to another (‘beneficiary office’) via the IB.  On 13 April 2023, the IB published information of the offices that have notified the IB of their participation, or of a change of scope in their participation in the Official Notices (PCT Gazette) (from page 91). See here (page 8) for further details.

New/Updated PCT Resources

Recordings of the first six webinars in a series of sixteen webinars presented by PCT Consultant Carl Oppedahl, together with supporting documents, are now available.  See here (page 8) for further details.  For information and registration for the upcoming webinars, please refer to the PCT Seminar Calendar.

PCT in the Media

A link to an article celebrating World Intellectual Property Day 2023 has been added to the ‘PCT in the Media’ page of the PCT website at: https://www.wipo.int/pct/en/news/pct-media.html.  WIPO Magazine has recently published the article written by Ms. Aikaterini Kanellia and Ms. Lisa Jorgenson, both from the Patents and Technology Sector, WIPO, entitled ‘Together We Can: Approaches to Empowering Women in IP’.  The article highlights that: ‘only around 16 percent of patent applications filed through WIPO’s Patent Cooperation Treaty (PCT) are from women, leaving countless brilliant minds and their ideas untapped.  WIPO estimates that at current rates, gender parity among PCT-listed inventors will not be achieved before 2064’.  The authors call for action now to enable and support women innovators so as to unlock their potential for innovation, strengthen IP and innovation ecosystems and drive economic growth.  See here (page 9).

Other Useful Links

The PCT Seminar, Webinar and Event Calendar can be found here (pages 12 to 14).

The PCT Fee tables (as of 1 April 2023) can be found here (pages 15 to 22).

A list of PCT Contracting States and Two-Letter Country Codes (as of 1 April 2023) can be found here (page 23).