Patent Law & Practice at a Glance – November 2024

UK update

Changes to supplementary protection certificates on 1 January 2025

Supplementary protection certificates (SPCs) provide additional protection for patented medicines and pesticides, which are required to go through extensive testing and approval before they can be authorised for sale.

The UKIPO has provided guidance in relation to significant updates to marketing authorisations for medicines in the UK that will take effect on 1 January 2025. These changes will impact existing and future SPCs and the authorisation types relied upon for SPC applications.

The main changes are that from 1 January 2025:

• Centralised Authorisations, such as those issued by the European Medicines Agency (EMA), are no longer valid in Northern Ireland and will not qualify for paediatric extensions in the UK.
• GB authorisations may be converted into UK authorisations that are effective across the whole of the UK.
• Transitional arrangements for SPCs differ depending upon where the SPC or SPC application is in the process and the type of authorisation relied upon, and action may be required to ensure that no rights are lost.

The full changes can be read about here, and our analysis of the changes can be read here.

Trading Standards IP Crime survey and Successes 2023 to 2024

The UKIPO conducted its annual survey of trading standards officers’ work on intellectual property (IP) crime for the period April 2023 to March 2024, providing insight on the scale and scope of IP crime in the UK from the perspective of Trading Standards Officers.

Clothing and tobacco products remain the most investigated IP crime sectors while vaping products have increased significantly. Perfume, footwear, electricals and watches/jewellery, remain significant focusses for investigation. The UKIPO reports that most investigations take place at physical premises, with a growing number of cases on social media platforms.

The full report can be read here.

UK-China IP

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

Filing statistics

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

Customer service standards

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

EPO update

Decommissioning of smart cards and of the EPO’s web-form filing service

As of 1 January 2025, it will no longer be possible to access EPO online services using EPO smart cards, with the EPO instead requiring two-factor authentication.

The EPO’s web-form filing service will also be decommissioned on 1 January 2025.

Details are available here, with further details available here and here.

EPO closed days

The EPO has published a list of its closed days here. As a reminder, time limits expiring on a day on which at least one EPO filing office is not open for receipt of documents (closing days) are extended until the first day thereafter on which all the filing offices are open for receipt of documents and on which ordinary mail is delivered.

Restrictions on requesting unitary patents in view of Russian sanctions

The Rules relating to Unitary Patent Protection have been amended to add an express legal basis in the UPR for the EPO to register unitary effect only where the proprietor of the European patent is not subject to the specific restrictive measure laid down in Article 5s(2) Regulation (EU) No 833/2014 as amended by Regulation (EU) 2024/1745, having regard to the exemptions under Article 5s(5).

Article 5s(2) provides that EU Member States, in their capacity as contracting states to the European Patent Convention (EPC) and in fulfilling their international obligations undertaken in the EPC, must use best efforts to ensure that the EPO refuses requests for unitary effect within the meaning of Regulation (EU) No 1257/2012 of the European Parliament and of the Council that are filed by Russian nationals or natural persons residing in Russia, or by legal persons, entities or bodies established in Russia, including if jointly filed by a Russian national or natural persons residing in Russia, legal persons, entities or bodies established in Russia with one or more non-Russian natural or legal person resident or established outside of Russia. Pursuant to Article 5s(5), Article 5s(2) does not apply to nationals of an EU member state, of an EEA country member or of Switzerland or to natural persons having a temporary or permanent residence permit in an EU member state, in an EEA country or in Switzerland.

Details available here and here.

PCT update

Accession of Uruguay to the PCT

On 7 October 2024, Uruguay deposited its instrument of accession to the PCT, becoming the 158^th Contracting State of the PCT. Uruguay will become bound by the PCT on 7 January 2025. Any international application filed on or after 7 January 2025 will therefore automatically include the designation of Uruguay. However, the instrument of accession deposited by Uruguay contained a reservation that it will not be bound by Chapter II of the PCT. Therefore, it will not be automatically elected in any demand filed in respect of an international application filed on or after 7 January 2025. Further information on the accession to the PCT by Uruguay is available here.

Meeting of International Authorities

The 31^st session of the Meeting of International Authorities under the PCT was held in Beijing, China on 16 and 17 October 2024. The summary by the Chair and working documents can be found here. Further information on the topic discussed can also be found here (pages 2 and 3).

Global Innovation Index

The 2024 edition of the Global Innovation Index (GII) is now available here. A summary of the findings was published in Press Release PR/2024/925, and can be found here.

New/updated PCT resources

The ePCT Frequently Asked Questions (FAQs) available on the PCT eServices Help page have been replaced by a new structure of ePCT User Guide FAQs for applicants and are now available in English here. The link is available from the ePCT home page by clicking on ‘Help’. Further details are found here: here (page 7).

Practical advice: correction of incorrectly submitted parts of an international application

The following question is answered: I filed a PCT application and mistakenly included a draft set of drawings rather than the final version. The priority period expired last week. I would prefer to have the version of the drawings in the PCT application as it was in the priority application. Is there any way of remedying this? Please see here for the detailed answer (pages 8 to 10).

Other useful links

The PCT seminar, webinar and event calendar can be found here (pages 11 and 12).

The PCT fee tables (as of 1 October 2024) can be found here (pages 13 to 21).

A list of PCT Contracting States and two-letter country codes (as of 1 October 2024) can be found here (page 22).