Patent Law & Practice at a Glance – October 2024

UK UPDATE

Notifying the UKIPO of a court action

There is an obligation to serve documents on the comptroller or registrar in certain cases involving registered IP rights. The rule applies to cases involving patents, trade marks, supplementary protection certificates, and registered designs where the outcome may affect what is on the register. For example during revocation or invalidity proceedings, infringement cases where there is a counterclaim for revocation/invalidity, and entitlement proceedings.

The UKIPO has published a guide explaining why and how a party in an intellectual property case must notify the UKIPO about the case. The full guide can be read here.

UKIPO introduces statements of grant for international designs

The Hague System allows protection for a design in many different countries through a single application to WIPO. International registrations are assessed by each country and, if accepted, will take effect in those countries. Some IP offices issue a statement of grant of protection (SOG) to indicate they have accepted an international registration.

Following a trial earlier this year, the UKIPO has started issuing SOGs to design owners. A general SOG is provided on the UKIPO website and individual SOGs can be requested by contacting the UKIPO. More information can be found here.

Filing statistics

The statistics for July 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

Signing and filing of authorisations

With a view to simplifying its procedures and promoting digital transformation, the European Patent Office (EPO) is introducing several measures on 1 November 2024 regarding the signing and filing of authorisations. These measures will also apply to authorisations filed in procedures relating to European patents with unitary effect.

Among the changes, legal practitioners and professional representatives will be treated equally regarding their obligation to file an authorisation. Whereas under the current rules legal practitioners must always file a signed authorisation, under the new rules legal practitioners will only be obliged to file an authorisation under the same circumstances as professional representatives.

Another change is that, in addition to handwritten signatures, the EPO will accept a broad range of electronic signatures on authorisations.

Full details, including the requirements for electronic signatures, are available here, here, and here.

PCT UPDATE

Assembly of the PCT Union

The 56^th session of the Assembly of the PCT Union was held in Geneva from 9 to 17 July 2024. The Assembly adopted amendments to the PCT Regulations, including for PCT Rules 26, 33, 64, 89bis, and 92. Please see Proposed Amendments to the PCT Regulations for further details. A short summary of the amendments is provided here (pages 1 to 2).

ePCT update

A new version of the ePCT system was deployed on 22 July 2024. Please refer to WIPO IP Portal Support for further details. A short summary of the main new features is provided here (pages 2 to 3).

PCT guidance for users impacted by 19 July 2024 computer outage

The Regulations under the PCT provide, in PCT Rule 82quater.1, for measures applicable to the global computer outage that began on 19 July 2024. PCT applicants who were not able to meet a PCT time limit because of the outage may request excuse of delay on this basis. The International Bureau (IB) urges all PCT Offices and Authorities to likewise adopt this interpretation. Additionally, applicants who were unable to file their PCT applications within the priority period because of the global computer outage and its repercussions, but were able to file them within two months from the expiration of the 12-month period, may request restoration of the right of priority under PCT Rule 26bis.3 before receiving Offices which apply this provision (noting in particular that the receiving Office of the IB applies this rule and all applicable criteria thereunder). See here for further details (page 3).

Eligibility for reductions in certain PCT fees

The applicability of 75% reduction in certain fees at the European Patent Office has been amended. Please see here for further details (page 4).

PCT Patent Prosecution Highway (PCT-PPH) pilots

The National Institute of Industrial Property (Brazil) has joined the Global PPH pilot scheme. New and extended PCT-PPH pilot programs have also been announced. Please see here for further details (page 6).

PCT information update

The UKIPO has notified changes in its requirements concerning the deposit of microorganisms and other biological material. Please see here for further details (page 8 to 9).

New/Updated PCT Resources

New ePCT video tutorials for applicants are available at the WIPO website. These include video tutorials for ePCT-filing in DOCX format, as well as information on the latest updates in ePCT.

Six new webinars in the ePCT webinar series can be accessed in English, alongside supporting documents.

An overview of the tutorial and webinars is found here (pages 12 to 13).

Advanced PCT Seminar at WIPO Headquarters

An advanced PCT seminar will be held at WIPO Headquarters in Geneva on 2 and 3 October 2024. As in past years, the program will be conducted by experienced staff of the Patents and Technology Sector, as well as speakers from the United States Patent and Trademark Office. The seminar is aimed at patent administrators, paralegals and other users who are already familiar with the PCT system. The first day will be offered in hybrid format, and on the second day, hands-on workshops on legal and processing issues, an ePCT clinic, and visits with the PCT Operations Teams, will be offered to participants attending in person. Online registration details and links to further information will be provided in the PCT Seminar Calendar shortly.

Practical advice: mixed languages used in an international application

The following question is answered: I would like to file a PCT application in German with the European Patent Office as receiving Office. The invention is in the field of digital communication and my draft application includes a number of technical terms in English. As English is the language commonly used in this field of technology, the technology in question would be difficult to translate, and the translation of such key words would appear strange and risk being inaccurate and less succinct. Could the use of English terms be a problem during the PPC procedure? Please see here for the detailed answer (pages 14 to 15).

Other useful links

The PCT Seminar, Webinar and Event Calendar can be found here (pages 16 and 17).

The PCT Fee tables (as of 1 August 2024) can be found here (pages 18 to 25).

A list of PCT Contracting States and Two-Letter Country Codes (as of 1 August 2024) can be found here (page 26).