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

IP in the EU and EEA

The UKIPO has published a guide on IP in the EU and EEA, which can be found here.

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

New Designs Practice Notice 02/22

Guidance has been issued to provide clear information on application forms for designs, time periods for response, and the process for deferring publication.  The full notice can be read here. 

New Consultation: Legislative changes for IPO digital transformation

The UKIPO is seeking views on how the IP legal framework can better support the One IPO Transformation programme.  The consultation is running until 6 January 2022 and can be accessed here.

The UK has joined the WIPO Lex-Judgements database

The 100 most notable UK IP cases have been added to WIPO global database.  The UKIPO press release can be read here, and the database here.

Russia and Financial Sanctions: Legal Fees General Licence

A General Licence has been issued to allow a UK legal firm or Counsel to immediately receive or make payments concerning Designated Persons (those designated under financial sanctions).  Details from IPReg on the General Licence and other sanctions can be read here.  The CIPA summary and FAQs can also be read here.

IP Education Framework

The UKIPO have created a tool for teachers to introduce IP concepts into lessons for UK curricula from primary to higher education.  The tool and the rest of the IP in education guidance can be found here.

Innovation and Growth at the UKIPO

A report has been published to outline how the UKIPO has supported innovation and economic growth for 2021-2022.  The full report can be read here.

Inclusion and Diversity at the UKIPO

A report has been published to outline inclusion and diversity at the UKIPO for 2021-2022.  The full report can be read here.

UK-China IP newsletter

The latest edition of this newsletter can be found here.

Filing statistics

The statistics for October 2022 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

10 day rule

The Administrative Council has recently approved a series of measures including the abolishment of the 10 day rule. This change is due to come into effect on 1 November 2023.

PPH Programme with Colombia

The European Patent Office (EPO) and the Superintendence of Industry and Commerce of Colombia (SIC) have decided to extend the comprehensive Patent Prosecution Highway (PPH) programme for an indefinite period. Full details here.

MyEPO Portfolio Pilot

As of 1 November 2022, the EPO has launched a second phase of the MyEPO Portfolio pilot to gather feedback on features developed since the general release of MyEPO Portfolio in June 2022.  Full details available here and here.

Unitary Patent

The EPO has issued a Decision of the President and two notices concerning the forthcoming introduction of the Unitary Patent.

In order to facilitate the introduction of the Unitary Patent system, the European Patent Office (EPO) will accept early requests for unitary effect as of 1 January 2023.  Early requests for unitary effect may only be filed for European patent applications in respect of which a communication under Rule 71(3) EPC has been despatched.  If the requirements for the registration of unitary effect as provided for in the Rules relating to Unitary Patent Protection are met, the EPO will register unitary effect once the Unitary Patent system has started and communicate the date of this registration to the requester. Otherwise, it will invite the requester to correct the deficiencies if applicable or reject the request for unitary effect.  More details are available here.

As of 1 January 2023, applicants will also have the possibility to request that the issuance of the decision to grant a European patent be delayed so that the mention of the grant is published in the European Patent Bulletin on or immediately after the date of entry into force of the UPCA (i.e. on or after the date of application of the above-mentioned EU Regulations) in order to allow the registration of unitary effect for that European patent.  More details are available here and here.

Closed Dates

The EPO has published the closed dates for 2023.

FOREIGN LAW

Australia

The Australian High Court has refused to hear an appeal by Dr Thaler against the decision of the Full Federal Court that his patent application could not name an AI tool, DABUS, as inventor.  One Australian court had previously said that DABUS could be named as an inventor, but this was overturned by the Full Federal Court.  The High Court’s refusal to hear Dr Thaler’s appeal appears to settle the question of AI inventorship in Australia for now.

Bangladesh

The Bangladesh Patent Office has issued a notification dated 18 September 2022 closing the “Mail Box” for pharmaceutical and agricultural chemical products inventions and rejecting all applications submitted in the Mail Box.  Information about the “mail box” can be found here – it essentially refers to a TRIPS provision that allowed developing countries not to implement protection for pharmaceutical products and agricultural chemicals (a requirement of TRIPS) for a period of time after TRIPS entered into force.

Brazil

Brazil’s PPH program has reached its annual limit of 800 applications.  No new PPH requests will be accepted in 2022.  More information is available here.

Brazil has taken legislative steps towards joining the Hague Agreement on designs.  Brazil’s accession to the agreement is now being considered by the senate.  Read more here.

The Brazilian patent office recently decided that patent application no. BR 11 2021 008931-4, one of the “DABUS” applications, would not be allowed to enter the national phase as it named an AI tool as the inventor.

Russia

A 30% discount to the official fees is currently provided in Russia in case of e-filing. However, according to a recent announcement of the Ministry of Finance of the Russian Federation this discount is planned to be canceled as of January 1, 2023.

UAE

Powers of Attorney, Deeds of Assignment, Certificates of Incorporation for patent and design application in the UAE no longer need to be legalized at the UAE consulate. They now need only to be notarized locally.

Ukraine

There is uncertainty over the status of patents and other IP rights in Ukraine following the introduction of martial law earlier this year.  The current law suggests that patents that were in force on 24 February and have since either missed a renewal fee payment or reached the end of their 20-year term remain “valid” until the end of the war.  IPKat has a helpful post explaining the issues in full here.

United States

The USPTO has published a Federal Register Notice announcing a fifth extension of its Cancer Immunotherapy Pilot Program. Petitions requesting participation in the pilot program that are compliant with the program’s requirements and are filed on or before January 31, 2023, will be accepted.

The After Final Consideration Pilot (AFCP) 2.0 has been extended to September 30, 2023.  To learn more, visit the AFCP 2.0 page.

The USPTO is extending the Fast-Track Appeals Pilot Program for a second time. Under this program, appellants with a docketed ex parte appeal may file a petition to expedite review of the appeal by the PTAB. The extension continues the program for another two years. The new expiration date is July 2, 2024.  Currently, the average appeal pendency is about 12 months, down from 15 months in 2020, and 30 months in 2015.

The USPTO has issued a final rule on the receipt date of patent correspondence submitted through the USPTO patent electronic filing system. The rule defines the receipt date as the date in the Eastern time zone of the United States (Eastern Time) when the USPTO received the correspondence rather than the date on which the correspondence is received at the correspondence address in Alexandria, Virginia. This change is necessary because the USPTO is expecting to provide servers for receiving electronic submissions in locations that are separate from the USPTO headquarters in Alexandria, Virginia.

PCT

Cabo Verde joins ARIPO

Carbo Verde became a member State of ARIPO with effect from 14 July 2022, and the Harare Protocol will enter into force with respect to Cabe Verde with effect from 14 October 2022.  Therefore, any international application filed on or after 14 October 2022 will include the designation of Cabo Verde for an ARIPO patent, as well as for a national patent.  See here (page 1).

PCT Working Group meeting/PCT Committee for Technical Cooperation

The 15^th session of the PCT Working Group was held in Geneva from 2 to 7 October 2022.  For further details of the discussions, see here (page 1) and here (pages 1 to 3).

CNIPA/EPO Pilot Extended

The pilot between CNIPA and EPO to allow PCT applicants who are nationals or residents of China to select the EPO, in addition to CNIPA, as ISA and IPEA for international applications filed with CNIPA or the IB as receiving office has been extended to 30 November 2023.  See here (page 3 and 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: AP, BN, CH, CU, CZ, DJ, EC, EE, ES, FI, GE, IL, JP, MA, PA, SI, TR and UZ.  See here (page 1 and 2), here (page 6), and here (page 1 and 2).

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: AP, BN, CH, CU, CZ, DJ, DK, EC, EE, ES, FI, GE, JM, MK, PA, SI, TH, TR, UZ and ZA.  See here (page 2 and 3), here (page 6 and 7) and here (page 2). 

Montenegro

The Ministry of Economic Development and Tourism (Montenegro) will cease to act as a receiving office under the PCT from 1 October 2022.  Furthermore, the Office has closed its national route for obtaining patent protection via the PCT for international applications filed on or after 1 October 2022.  Applicants desiring protection in Montenegro will no longer be able to enter the national phase in that country.  Instead, from 1 October 2022, Montenegro became bound by the EPC and international applications filed on or after 1 October 2022 automatically include designation of Montenegro for a European patent. See here (page 4 and 5). 

Podcast

A podcast entitled ‘Taking the Complexity Out of PCT’ may be of potential interest to experienced PCT users.  Matthew Bryan, Director of the PCT Legal and User Relations Division of WIPO is interviewed by a US patent attorney on wide ranging topics including PCT history, the work carried out by his Division, and his hopes for the PCT’s further development.  See here (page 1)

Priority Documents

The Intellectual Property Office of Singapore now issues digitally signed priority documents. See here (page 3).  The State Patent Bureau of the Republic of Lithuania will commence operation as both a depositing and accessing Office of WIPO DAS from 1 January 2023.  See here (page 3).

PCT Information Update

From 1 December 2022, the only competent International Searching and Preliminary Examining Authorities for international applications filed by nationals and residents of the US with the USPTO or IB as RO are: the Australian Patent Office, the European Patent Office, the Israel Patent Office, the Japan Patent Office, the Korean Intellectual Property Office, the Intellectual Property Office of Singapore and the USPTO.  See here (page 5).

On 1 January 2023, there will be changes in the equivalent amounts, in certain currencies, of the international filing fee, the fee per sheet over 30, the electronic filing reductions, the search fee, the supplementary search fee and the handling fee.  See here (page 5).

Non-working Days

The non-working days at the IB during December 2022 and January 2023, in addition to weekends, will be: 26 December 2022, 30 December 2022 and 2 January 2023.  The IB will therefore be open for business over the holiday period from 27 December 2022 to 29 December 2022 inclusive, and then will be open as usual from 3 January 2023.  See here (page 6)

The PCT Information Service will be closed 26 December 2022 to 2 January 2023 inclusive.  It will reopen on 3 January 2023.  However, if you call the PCT Information Service ((41-22) 338 83 38) during the holiday period, there will be a recorded message providing a telephone number for cases requiring urgent attention.  It is recalled that the PCT Information Service answers general inquiries about the filing of international applications and the procedure to be followed during the international phase of the PCT (questions relating to specific applications should be addressed to the PCT Operations Division).  See here (page 6).

PCT Operations Customer Support (PCT eServices) and PCT Operations Sections will be closed on 26 December 2022, 30 December 2022 to 2 January 2023, and open on 27 to 29 December 2022 and from 3 January 2023 as usual.  The PCT Operations Customer Support Section respond to inquiries related to services for the purpose of preparing, filing and managing applications electronically.  The PCT Operations Sections answer specific application-related inquiries.  See here (page 6 and 7).

Publication

PCT applications will be published during the holiday period on Thursday 22 December 2022 and Thursday 29 December 2022.  There will be no changes to the deadlines for receipt of changes which should be taken into account for the purposes of international publication (which will be, respectively, midnight (CET) on Tuesday 6 December 2022 and Tuesday 13 December 2022). See here (page 7).

New/Updated PCT Resources

The ‘Introduction to the International Phase’ and ‘Introduction to the National Phase’ of the PCT Applicant’s Guide, have been updated and are available in English.  See here (page 4).

The ‘History of the PCT Regulations’ has been updated to include amendments enter into force since the last update in July 2020.  See here (page 11).

A new webinar entitled ‘Everything you need to know about ePCT’ can be accessed at https://www.wipo.int/pct/en/seminar/webinars/index.html.

Filled in samples of the July 2022 versions of the Request Form and Demand Form are now available. See here (page 7 and 8).

In order to assist candidates preparing from the EQE or EPAC, the IB, with the agreement of the Examination Board for the EQE and EPAC, 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 & French.  Differently from previous years, the PDF files have been replaced by a searchable and comprehensive application that will be available for the EQE.  See  https://pctlegal.wipo.int/eGuide/eqe/documents.xhtml.

Global Innovation Index

The 2022 edition of the Global Innovation Index is now available at https://www.wipo.int/global_innovation_index/en/2022/.  This edition tracks the most recent global innovation trends against the background of an ongoing COVID-19 pandemic.

Patentscope

Patentscope now includes the national patent collection of Malta. See here (page 9).

Practical Advice: Submitting Replacement Sheets

The following question is answered: I am the agent for a PCT application and have received an invitation to correct defects in the international application (Form PCT/RO/106) indicating that replacement sheets of the description, claims and drawings are required.  Who should I send the replacement sheets to and what do I need to include?  See here (pages 8 to 10).

Practical Advice: PCT Training material available from WIPO

The following question is answered: I am a trainee patent attorney at a patent law firm and would like to know if WIPO provides any training courses or material that could be useful, not only to me, but also to fellow trainees, on the role of the Patent Cooperation Treaty (PCT) System and how to file international patent applications using ePCT. See here (pages 9 to 12).

Practical Advice: Considerations for Requesting Early Publication of an International Application

The following question is answered: I have filed an international application and am wondering if I should request early publication of the application, as I heard that my competitor has a similar product to my invention in development.  Are they are factors I should take into consideration before I request early publication by the IB, and what should I do if I want to? See here (pages 12 to 14). 

Other Useful Links

The PCT Seminar, Webinar and Event Calendar can be found here (page 13). 

The PCT Fee table (as of 1 November 2022) can be found here (pages 14 to 21). 

A list of PCT Contracting States and Two-Letter Country Codes (as of 1 November 2022) can be found here (page 22).