Weekly Patent Update – Nov 2021 (1 of 3)

Hi all!

We have now included all official fees for Finland and Portugal as part of our IP Services offering.  If you would be interested in having these official fees imported into your system as part of our Equinox Official Fee Management Service, please send an email across to ip-services@workanyware.co.uk and we will be in touch!

Our current monitored jurisdictions are the United Kingdom, European Union, EPO, WIPO, Benelux, the Netherlands, Belgium, Germany, Australia, New Zealand, Canada, Ireland, Israel, Luxembourg, Finland, Portugal and the United States of America.

All of our monitored official fees can be viewed under the ‘Official Fees’ tab of the IP Portal!

“From 1 July 2022, WIPO Standard ST.26 specifies new requirements for biological sequence listings included in patent applications.

On 1 July 2022 a new standard for patent applications which include biological sequence listings will come into effect. This change is being adopted by all WIPO contracting states. It will apply to all new patent applications filed here at the IPO. This includes new divisional applications and new international PCT (Patent Cooperation Treaty) applications.

The new standard is WIPO ST.26 The full description and definition of WIPO ST.26 is available on the WIPO website. In summary it applies to all patent applications which include sequence listings of:

any nucleic acid sequences (DNA, RNA) having ten or more fully defined residues and

any peptide (including cyclic peptides) sequences having four or more fully defined residues

The new standard specifies biological sequence listing must be in electronic XML format. Applicants can use new software, WIPO Sequence, to compile their sequence listings. This will generate XML files compliant with WIPO ST.26 WIPO Sequence is available to download from the WIPO website.

Filing international PCT (Patent Cooperation Treaty) applications containing biological sequence listings

From 1 July 2022 all new international PCT (Patent Cooperation Treaty) applications which include biological sequence listings must include the sequence listing in the ST.26 file format. The International Search Authority will examine the sequence listings.

Filing UK national patent applications containing biological sequence listings

For UK national applications, EOLF and online web-filing services will accept the ST.26 XML files from 1 July 2022. XML sequence files generated using WIPO Sequence software will be compliant with WIPO ST.26

Your application will have a preliminary examination. The examination will identify if your application refers to or includes a biological sequence listing. It will also confirm compliance with WIPO ST.26

If your application includes a biological sequence or sequence listing but it does not comply with WIPO ST.26, you will have 15 months from the filing date to provide a compliant sequence listing. If you only put the sequence listing in the description or as a drawing, this will not comply with WIPO ST.26.

If your application mentions a biological sequence or sequence listing but you do not include it when you file your application, you will have two months to file. We will treat this as a missing part of the application. The filing date of your application will be reset to the date on which the sequence is received.

Filing amended biological sequence listings

If you amend your biological sequence listing, you must include a declaration it does not add matter to your original filing. This includes amendments to overcome objections in the preliminary examination report.

Filing divisional patent applications containing biological sequence listings

WIPO ST.26 will apply to all new patent applications filed on or after 1 July 2022. This includes new divisional applications with parent applications filed before 1 July 2022. For all divisional applications containing biological sequence listings:

i. The sequence listing must comply to the WIPO ST.26 standard.
ii. The sequence listing must not add matter beyond the parent application.
iii. You must include a declaration that the sequence listing does not add matter.

Preparing for the changes

All patent applicants and attorneys are advised to prepare for the changes early. If this applies to you, we strongly encourage you to familiarise yourself with using WIPO Sequence ahead of 1 July 2022.

If you currently file, or plan to file, this type of patent at the IPO, we’d value your feedback via this survey.”

“IPONZ has updated its Patents Examination Manual to include new sections on patent restorations and extensions of time, and take recent Hearings Office decisions into account.

New Patents Examination Manual sections

We have added new sections to our Patents Examination Manual covering Sections 117 to 128 of the Patents Act 2013, and Regulation 147 of the Patents Regulations 2014. The new sections are as follows:

Sections 117 to 128: Restoration of patents and patent applications

This new section outlines our practice and procedures relating to the restoration of patent cases.

Section 117 to 128: Restoration of patents and patent applications

Regulation 147: Extensions of time in exceptional circumstances

This new section outlines our guidelines, practices and commentary on requests for extensions of time under Regulation 147.

Regulation 147: Extensions of time in exceptional circumstances

Update to section on Regulation 82: Claims overlap between parent and divisional applications

We have recently updated the section of our Patents Examination Manual on Regulation 82: Claims overlap between parent & divisional applications. This is to take into account the following recent Hearings Office decisions:

Oracle International Corporation [2021] NZIPOPAT 5 (9 June 2021)

Ganymed Pharmaceuticals GmbH and TRON-Translationale Onkologie an der Universitätsmedizin der Johannes Gutenberg-Universität Mainz Gemeinnützige GmbH [2021] NZIPOPAT 6 (5 July 2021)

View our updated section on Regulation 82: Claims overlap between parent and divisional applications.”

“The Council noted the developments on the Plant Variety Protection Act (Act 1050 of 2020) of Ghana and reaffirmed its 2013 decision on conformity with the 1991 Act of the UPOV Convention, allowing Ghana to become a UPOV member.”

“The Council noted the developments on the Plant Variety Protection Act, 2021 of Nigeria and reaffirmed its 2019 decision on conformity with the 1991 Act of the UPOV Convention, allowing Nigeria to become a UPOV member.”

“We are pleased to confirm that the bulk change of agent service for patents is now live.

This is an automated part of patent form 51, that processes bulk requests over 50 patents. The request should be filed on a CSV spreadsheet and can include a mix of GB and EP patents but the pre-fix needs to be present on the request.

More details of how to use the bulk service and template spreadsheet as well as alternative options you can use for recording multiple changes of representative address are available in our guidance on GOV.UK

Read the guidance for the bulk change of agent service

If you have any questions about using this service, please get in touch with us by email to: bulkafs@ipo.gov.uk.”

The following update has been machine-translated from Hebrew.

“The October patent diary was the last diary published to the public in its current format.

As of 1.12.2021, the patent diary will be published in a new format on the first day of each month.

The new diary is a website that combines all the events that are published in accordance with the law. The site can be searched for information by various cuts, so that it will make it easier for the representatives, applicants and the public to find the information they need. It will also be possible to download the diary in various formats.

Further explanations about the new diary and the possibilities in which you can find in a presentation presented at a meeting we held on the subject on 02.09.2021.

Please note:

A notice of publication of the acceptance of the application (PK 11) will be issued and sent immediately upon payment of the acceptance fee and not once a month prior to the publication of the diary, as sent so far.

Applications for which the acceptance fee will be paid within the last seven days of the month will be published in the following month’s diary.”

“Chapter 1: Standard Procedures

1.05 and 1.19 Change to inventor address details for EP patents.
Annex 3 deleted – no longer in use.

1.05

In all cases, the forms should be accompanied by the appropriate fee. If the fee has not been paid or is subsequently cancelled, then the action will be deemed not to have been properly filed. For proceedings filed on or after 1 January 2021, an address for service in the UK, which includes the Isle of Man (or Gibraltar and the Channel Islands) should be provided. The forms should also be accompanied by two copies of a statement of grounds (rule 76(1)). For proceedings started under section 46(3) by a person other than the proprietor, see Chapter 11 and rule 89. For all EP applications published from 1 November 2021 onwards, the European Patent Register will only include abbreviated address details for the listed inventor and not their full address. In order to facilitate the subsequent serving process, for proceedings commenced from 1 November 2021 involving a European patent, the proprietor will be contacted to obtain address details for the inventor where the inventor appears likely to have an interest in the proceeding (rule 77(1)).

1.19

If everything is in order or put in order then the B3/B2 should send a copy of the form, the statement of grounds and any other documents filed by the claimant to the patent applicant/proprietor and all those who it appears are likely to have an interest in the case (see Annex 4a). In determining who to notify, the B3/B2 should consider those named in the Register of Patents and those named in the statement and should refer any recommendations to the HO. See 1.05 above regarding inventor address for proceedings involving European patents.

The serve letter should:

• indicate that proceedings have started
• set a date for the filing of a counter-statement
• request the counter-statement be filed in duplicate
• request that any correspondence filed should be marked for the attention of the Case Officer
• request an address for service in the UK, which includes the Isle of Man (or Gibraltar and the Channel Islands) is supplied on filing of counter statement in any proceedings filed on or after 1 January 2021, if not already available. (For proceedings filed on or prior to 31 December 2020, any party who has filed an address for service in the EEA but outside the UK, may retain that address for service for the duration of proceedings, including any appeal proceedings).”

“Based on the Supreme Council’s decision in its 41st Session (Al-Ula – January 5, 2021) to approve “ The law amending some provisions of the Patent Regulation of the Cooperation Council for the Arab States of the Gulf ” which is approved by the Supreme Council in its 20th Session (Riyadh- November 1999) The GCC Patent office has stopped accepting the filing of patent applications in accordance with the mentioned Patent Regulation of the Cooperation Council for the Arab States of the Gulf (Riyadh- November 1999).”