Weekly Patent Update – Jan 2022 (1 of 3)

“JPO-INPI PPH pilot program will end

On 31 December 2021, the Japan Patent Office (JPO) and the National Institute of Industrial Property of Argentina (INPI) will end the PPH pilot program they have been implementing since 1 April 2017 because Argentina’s national system allows an early grant of a patent to applications filed with the INPI based on Japanese applications.

Accelerated examination system based on Resolution 56/2016

Despite the end of the JPO-INPI PPH program, Argentina’s Resolution 56/2016 that instituted the country’s accelerated examination system in 2016 will remain applicable to those who wish to quickly obtain patents equivalent to Japanese ones in Argentina.

See this page for more information on Resolution 56/2016.“

“The Japan Patent Office (JPO) revised its regulations for procedural documents and proving documents to be submitted to the JPO, abolishing the requirement for using a seal to these documents from January 1st, 2022, except for some procedures. Meanwhile, when using a seal to procedural documents and proving documents for certain procedures to which the JPO still keeps the requirement to use a seal (procedures to which damage caused by falsifying documents is significant), such seal should be a seal for which “personal identity can be verified.” Accordingly, for a seal to be used for procedural documents and proving documents, seal registration certificates are, in principle, required to be submitted. In line with this, the JPO will revise its operating procedures for a signature by foreign users to proving documents, so as to ask foreign users to verity their personal identities.

How to Verify the Identification of Signature

For proving documents that are needed for filing applications for change in the name(s) of applicant(s) and applications for registration of transfer of rights (“applications”) (as documents proving the succession of rights, such as assignments), the JPO requests applicants to submit any of the following certifying the identification of their signatures:

(1) Description in applications, stating that “the intention of transferors, etc. was confirmed” by representatives of transferors or transferees, such as patent attorneys or lawyers

Please be advised that patent attorneys or lawyers who are the representatives of transferors or transferees need to describe in the “Others” column of applications that “the intention of signees (transferors) to sign the applications was confirmed.”

The identity of signees can be verified as follows, in place of (1) description in the “Others” column:

(2) Submission of assignments with documents certifying the authenticity of signature (certificates signed before notary publics, certificates confirmed by signees, etc.)

Please be sure to submit assignments and their translations, to which the following documents certifying the authenticity of signature are attached: documents proving that “signees signed certificates before notary publics” (certificates signed before notary publics), or documents proving that “signees confirmed the fact that they signed certificates before notary publics” (certificates confirmed by signees), or documents proving that “representatives of transferors or transferees confirmed the authenticity of their signatures to certificates before notary publics” (certificates confirmed by representatives).

(3) Submission of signature certificates

Please be sure to submit signature certificates issued by foreign authorities, certificates issued by notary publics proving the authenticity of signatures, and their translations.

For the procedures stated above, certain costs, such as costs to issue signature certificates in countries where signees reside, are anticipated, and it might be difficult to obtain these certificates in some countries. Therefore, the JPO recommends (1) or (2) stated above, as procedures that could impose less burdens on users.

(4) Case in which transferors visit the JPO to confirm their identity (by presenting passports, etc.)

If (1) to (3) stated above are not available for users, the JPO provides consultations to procedures for (4). Please contact to the Official Services Management Section of the General Coordination Division stated below.”

“In regard to relief measures for applicants who are unable to deal with specified procedures due to “reasons beyond one’s control” or “legitimate reasons,” the Japan Patent Office (JPO) usually applies such measures based on its Formality Examination Manual, and “Guidelines Concerning Remedial Provisions Applicable after the Expiration of a Time Limit”?PDF:378KB?. Nonetheless, when it comes to relief measures for procedures negatively affected by the Novel Coronavirus Disease (COVID-19), the JPO takes the following flexible approaches until further notice (e.g. applicants are not required to submit document evidence supporting their reasons).

1. Procedures to which Relief Measures can be granted

(1) Relief measures based on “reasons beyond one’s control”

Under the laws and regulations of Japan, when applicants are unable to implement prescribed procedures due to “reasons beyond their control” within the time limits, they need to carry out procedures to apply for relief measures specified by the JPO. More specifically, please refer to “1. Procedures to which relief measures can be applied by carrying out procedures within 14 days” of II. Statutory Time Limits in ”Handling of Procedures Affected by COVID-19”.

(2) Relief Measures for “Legitimate Reasons”

Under the laws and regulations of Japan, when applicants are unable to implement prescribed procedures due to “legitimate reasons” within the time limits, they need to carry out procedures specified by the JPO to apply for relief measures. More specifically, please refer to “2. Procedures to which relief measures can be applied when conducting prescribed procedures within two months” and “3. Priority claim” of II. Statutory Time Limits in ”Handling of Procedures Affected by COVID-19”.

2. Ways to Apply for Relief Measures

(1) Relief measures for “reasons beyond one’s control”

Applicants or their representatives are required to submit documents by: (1) adding an “Others” column in documents to be submitted and describe on the documents reasons why they have not been able to implement procedures within the time limits; or (2) describing the above reasons in column “Details of statement” in written statements.

(2) Relief measures for legitimate reasons

Please submit documents for procedures that applicants were unable to implement within the prescribed periods and statements of the grounds for restoration, which describe reasons for the failure to meet the time limit.Also, when applicants request exemption from paying additional patent (registration) fees based on reasons beyond their control, please file such requests by submitting written payment form in which a column “others” is added to describe the request for exemption from paying additional patent (registration) fees based on reasons beyond their control and the specific details of the reasons (or, together with submitting the payment form (*1), please submit documents (written statements) describing that the reasons for the delay was beyond their control).

(*1) Please note that if applicants (representatives of applicants) submit documents stating the reasons beyond their control after submitting the payment form, the JPO cannot recognize the reasons (under Article 69 (4) of the Regulations under the Patent Act, Article 21 (3) of the Regulations under the Utility Model Act, Article 18 (3) of the Regulations under the Design Act, and Article 18 (8) of the Regulations under the Trademark Act).

3. Examples of Reasons of Not Complying with Time limits

The following are case examples in which applicants or their representatives were not able to implement procedures:

• Applicants or their representatives have been infected with the COVID-19;
• The offices of applicants or their representatives have been closed due to those who were infected with the COVID-19;
• Since local governments in regions where applicants or their representatives reside issued an order of or request for restrictions on movement due to the COVID-19, access to the office is severely restricted;
• The offices of applicants or their representatives have fallen into difficult situations to continue to operate due to negative impacts caused by the COVID-19;

Example for description of reasons (Please describe the circumstances with dates that prevented applicants from carrying out prescribed procedures within the time limits.)

“Due to the negative effects of the COVID-19, Company XX for which applicants work/Office YY where representatives of applicants work had been closed (and forced to work at home) from ??, 2020, and the applicants/the representatives were not able to implement their prescribed procedures. Nonetheless, since it has become possible to implement the procedures from ??, 2020, please recognize ?? as an effective procedure.”

Description Example of Request for Exemption from Paying Additional Registration Fees

“[Others] Due to the negative effects of COVID-19, Company XX for which applicants work/Office YY where representatives of applicants work had been closed (remote work) from ?? to ?? in 2021, and the applicants/the representatives are (were) not able to implement the prescribed procedures for paying patent (registration) fees within the time limits. Nonetheless, since it has become possible to implement the procedures from ??, 2021 within/after the late-payment periods (*2), the applicants/the representatives file a request for exemption from paying the additional registration fees.”

• *1 Please note that depending on the procedures, there is a time limit that the critical date is the date on which the procedures become available. For further details about time limits, please refer to “II. Statutory Time Limits” in Handling of Procedures Affected by COVID-19.
  Also, the dates on which the procedures become available are the dates on which the applicants/the representatives become ready to submit documents to the JPO to implement the procedures.
• *2 Only in case the reasons for the delay are legitimate reasons.

4. Documentary Evidence

In general, when applying relief measures to applicants or their representatives who were unable to implement prescribed procedures within the time limits due to reasons beyond their control or legitimate reasons, the JPO asks them to submit documentary evidence supporting the fact written in their documents. However, only in case they have been negatively affected by the COVID-19, the JPO will not require them to submit any documentary evidence until further notice.

5. Granting of Relief Measures

Except cases in which it is difficult for the JPO to consider that the time limits for procedures have been affected by the spread of the COVID-19, the JPO will, until further notice, grant relief measures for a certain period of time to cases in which applicants or their representatives describe the fact that their procedures have been negatively affected by the COVID-19.”

“The Japan Patent Office (JPO) and the National Institute of Industrial Property of Brazil (INPI) have been implementing the Patent Prosecution Highway pilot program since April 2017. On 9 November 2021, the two Offices agreed to renew the program to extend the pilot period until 30 November 2026. The period may be further extended as necessary. Main content starts here

PCT-PPH will start under Japan-Brazil Patent Prosecution Highway pilot program

On 1 January 2022, the JPO and the INPI will start PCT-PPH in this pilot program. This will allow applicants to file a PPH request with the INPI based on international work products (Written Opinion (WO) and International Preliminary Examination Report (IPER)) produced by the JPO as well as to file a PPH request based on international work products produced by the INPI.

The INPI will accept up to 100 PCT-PPH requests in addition to 600 normal PPH requests (total numbers from the INPI’s all PPH partners including the JPO, max. 150 for each IPC section) annually, increasing the total acceptable number to 700.

Because the PCT route is frequently used by Japanese applicants filing with the INPI, this introduction of PCT-PPH will make the JPO-INPI PPH more useful.

Details of JPO-INPI PPH pilot program

(1) Acceptable number of PPH requests

The INPI will accept up to 600 normal PPH requests and up to 100 PCT-PPH requests annually from the INPI’s all PPH partner Offices including the JPO. The INPI limits the acceptable number to 150 for each IPC section, and to one per applicant per week.

The JPO does not limit the number of PPH requests it will accept.

(2) Filing limitation based on first application

A PPH request can be filed with the INPI if the first application was filed with any of the INPI’s PPH partner Offices.

The JPO does not limit the filing of PPH request based on the first application.

How to make a request

Guidelines (Requirements and procedures in detail) and Request form for Patent Prosecution Highway (PPH)“

“From 1 January 2022, the structure of the Estonian Patent Office will change.

The Office will now have an Intellectual Property Law Department in addition to the Patent Department, Trade Mark Department, and Registry Department. The Financial and Administrative Department will be consolidated into the Cooperation and Support Department to be established at the Estonian Competition Authority.”

“A Bilateral Patent Prosecution Highway (PPH) pilot program commenced between the Indian Patent Office (IPO) and the Japan Patent Office (JPO) with effect from 5th December 2019. The guidelines in this regard have been published on the website of Controller General of Patents, Designs & Trade Marks. The IPO will start accepting Form 5-1 under Chapter 5 of the PPH Guidelines for the third year of the pilot program with effect from 20th December 2021. The number of requests will be limited to 100. The following points are to be noted while submitting a request to IPO under the said PPH program:

• The number of the requests for the PPH in IPO will be limited to 100 cases per year on first come first serve basis.
• An applicant who has filed a patent application, either alone or jointly with any other applicant, shall not file more than 10 PPH requests to IPO per year.
• Request for assigning special status for expedited examination under the PPH is required to be filed online in prescribed form 5-1 under chapter 5 of the PPH guidelines.
• An applicant/Authorized agent can file the request for expedited examination on Form 18A ONLY AFTER THE REQUEST FOR ASSIGNING SPECIAL STATUS FILED ON FORM PRESCRIBED IN CHAPTER 5 IS ACCEPTED BY IPO. The decision on Acceptance/Rejection/Defect noticed will be communicated to the Applicant/Authorized agent through email as well as message on efiling portal.
• In case of defects in form 5-1 the applicant will be provided opportunity to rectify the defects within 30 days from the issue of notification of defects by IPO.
• Notwithstanding the above procedure, the timelines for filing a request for expedited examination shall be as prescribed under the Patents Rules, 2003.”

“Dewan Negara today passed three more bills, namely the Patent (Amendment) Bill 2021, the Copyright (Amendment) Bill 2021 and the Geographical Indications Bill 2021.

The bills were approved after the third reading by Deputy Minister of Domestic Trade and Consumer Affairs, Datuk Rosol Wahid.

The Patent (Amendment) Bill 2021 contains 69 amended clauses that have taken into account Malaysia’s commitments in the TRIPS Agreement on public health, the Regional Comprehensive Economic Partnership Agreement (RCEP) and the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP). This amendment is also implemented to comply with the provisions of the Budapest Treaty which will allows Malaysia to become a member of the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of the Patent Procedure.

Meanwhile, when tabling the Copyright (Amendment) Bill 2021 Rosol said the amendments to the act was to ensure that the copyright law provides more efficient and effective protection in line with current demands and to fulfil the needs of the business community and stakeholders.

He said the Act 322 amendment provides suitable copyright protection including implementing allowed exceptions of rights and international ratification.

The amendment is also to prepare Malaysia to join the Marrakesh Treaty to Facilitate Access To Published Works For Persons Who Are Blind, Visually Impaired Or Otherwise Print Disabled (Marrakesh Treaty) to acknowledge the rights of visually impaired individuals to obtain works in accessible format copy.

Meanwhile, when tabling the Geographical Indications Bill 2021, Rosol said the bill had 15 sections containing 101 clauses per schedule, adding that the Geographical Indications Act 2000 (Act 602) was enacted in line with the need to protect registered or unregistered geographical indications in Malaysia, in line with the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement which was effective on 1st January 1995.”

“All INPI services will continue to be exclusively available online, in accordance with the provisions of Decree-Law No. 119-A/2021, of 22 December.

In the context of exceptional and temporary measures for the prevention and control of infection by COVID-19, until June 30, 2022, all INPI services will continue to be exclusively available online, in accordance with the provisions of Decree-Law No. 119-A /2021, of December 22 .

According to the aforementioned Decree-Law, “the advantages that resulted for citizens and companies, as well as for the operation of the services, of the various exceptional and temporary measures designed to enable and encourage the practice of acts by means of remote communication within the scope, namely, of the registration processes and procedures and procedures conducted by the National Institute of Industrial Property (INPI).”

The document states that “these measures continue to be fully justified, by reducing the need for travel and the physical presence of interested parties in the facilities of the services or bodies.””

“Portugal and China renew the Patent Prosecution Highway (PPH) pilot program existing between the two countries.

The National Institute of Industrial Property (INPI) and the Chinese Office of Intellectual Property – China National Intellectual Property Administration (CNIPA) renew, for a period of five years, the pilot program of Patent Prosecution Highway (PPH) existing between the two countries .

The relevant requirements and procedures for completing Patent Prosecution Highway (PPH) applications will remain unchanged for the two Offices .
The PPH pilot program between Portugal and China was launched in 2014, renewed 2019 and the current one will run from January 1, 2022 until December 31, 2026.”

“From December 13, 2021, all intellectual property intervention requests must be filed and managed electronically. Any new application, as well as extensions or modifications to existing applications, is introducing into the  portal  Intellectual Property Enforcement Portal  (IPEP).

From this date, paper applications are no longer accepted.

More information on the website of the Customs and Excise Administration: https //: douanes.public.lu“