Weekly Patent Update – Dec 2021 (1 of 3)

“Because of the current coronavirus situation in the Helsinki area, we are closing our customer service point in Helsinki from 1 December 2021 until 31 January 2022 as a work and customer safety measure.
Our online services and telephone services will be running normally.

Our customer service number 029 509 5030 is open Mon–Fri until 30 November at 9.00–16.15 and from 1 December at 9.00–15.00.
You can send paper notifications by post or leave them in our mailbox on the wall of our office building at Sörnäisten rantatie 13 B, Helsinki. We recommend that you use our online filing service. It is quicker and cheaper than using paper forms.

Our online services and information services are available at the prh.fi website.
Email us for more information:

Finnish Trade Register
Advice: neuvonta.kaupparekisteri@prh.fi

Trademarks
Advice: neuvonta.tavaramerkki@prh.fi
Advice relating to trademark classification: luokitusneuvonta@prh.fi
Email your office action response, or any additional submissions, to: tmposti@prh.fi

Patents
Advice: advice.patents@prh.fi

Design rights
Advice: neuvonta.malli@prh.fi

Associations
Advice: neuvonta.yhdistysasiat@prh.fi
We are prepared to carry out our duties as an authority despite the coronavirus outbreak. We apologise for any inconvenience caused.

For more information, please contact:
PRH Customer Service
Tel. 029 509 5030
until 30 November Mon–Fri at 9.00–16.15
from 1 December Mon–Fri at 9.00–15.00″

“The 2021 Patent Public Advisory Committee (PPAC) Annual Report is now available online.

The report includes information on patent policies, goals, performance, budget, and user fees. The PPAC prepares the report to be transmitted to the President, Secretary of Commerce, and the judiciary committees of the Senate and House of Representatives within 60 days following the end of each fiscal year.

To learn more about the PPAC, please visit the PPAC page on the USPTO website.”

“As an outcome of the ninth session of the Committee on WIPO Standards (CWS), the following new and revised WIPO Standards have been published in English, French, and Spanish on the WIPO website.

New standards:

• ST.91: Recommendations on digital three-dimensional (3D) models and 3D images

Revised standards:

• ST.26: Presentation of nucleotide and amino acid sequence listings using XML
• ST.27: Exchange of patent legal status data
• ST.37: Authority File of Published Patent Documents
• ST.88: Electronic representation of industrial designs

These updates reflect much dedication and effort from the CWS task forces involved, and the ongoing collaboration and goodwill of all CWS participants.”

“This page provides practical information to help you make the most of your IP when doing business in ASEAN.

This page provides practical information to help you make the most of your IP when doing business in the area covered by the Association of Southeast Asia Nations (ASEAN).

The Member States are Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, Myanmar, Philippines, Singapore, Thailand and VietNam.

While there is no regional IP office, there is a considerable amount of effort is placed on aligning standards and there are number of regional programmes businesses can use.

Trade marks

ASEAN TMview is a searchable online database of trade mark registrations and applications filed in participating ASEAN countries: Brunei Darussalam, Indonesia, Cambodia, Lao PDR, Malaysia, Philippines, Singapore, Thailand, and Vietnam.

This database means business can do an initial search and understand what trade marks are available in participating countries. It is recommended to also do secondary searches on national databases before submitting an trade mark application.

Patents

The ASEAN Patent Examination Co-operation (ASPEC) is a regional patent work-sharing programme amongst participating ASEAN countries: Brunei Darussalam, Indonesia, Cambodia, Lao PDR, Malaysia, Philippines, Singapore, Thailand, and Vietnam.

ASPEC means businesses can use the search and examination reports from participating offices to accelerate the patent registration process in one of the other participating offices.

ASEAN Patentscope is a regional database businesses can use to search for registered patents in participating ASEAN countries.

Designs

ASEAN Designview is an online database of design registrations in participating ASEAN countries: Brunei Darussalam, Indonesia, Cambodia, Lao PDR, Malaysia, Philippines, Singapore, Thailand, and Vietnam.

The database means businesses can do an initial search and understand what designs are available in participating countries. It is advisable to do secondary searches on national databases before submitting any design application.

Enforcing your rights

The enforcement environment varies across the ASEAN member states. The IPO have specific enforcement guides for ASEAN countries. These manuals provide a picture of the IP enforcement environment in country however the businesses are advised to take legal advice on specific IP cases.”

“The President of the European Patent Office, having regard to Rules 53(2) and 163(2) of the European Patent Convention (EPC), has decided as follows:

Article 1

Inclusion of a copy of the previous application in the file of a European patent application 

(1) At the request of the applicant, the European Patent Office shall include free of charge in the file of a European patent application a copy of the previous application from which priority is claimed retrieved via the WIPO Digital Access Service using the indicated access code.

(2) The European Patent Office shall include free of charge in the file of a European patent application a copy of the previous application from which priority is claimed if the previous application is:

(a) a European patent application,

(b) an international application filed with the European Patent Office as receiving Office under the Patent Cooperation Treaty (PCT).

(3) If a copy of the previous application cannot be included in the file, it shall not be deemed duly filed under Rule 53(2) EPC.

Article 2

Information to the applicant

If a copy of the previous application cannot be included in the file because the applicant has not filed a request under Article 1(1) or if the European Patent Office is unable to retrieve a copy of the previous application via the WIPO Digital Access Service, the European Patent Office shall inform the applicant accordingly in good time and give them an opportunity to file the copy subsequently in accordance with Rule 53(1) EPC.

Article 3

Euro-PCT applications

Articles 1 and 2 shall also apply to international applications entering the European phase before the European Patent Office as designated or elected Office (Rule 163(2) EPC).

Article 4

Previous decisions superseded 

When this decision enters into force, the decision dated 31 March 2020 on the filing of priority documents (OJ EPO 2020, A57) shall cease to have effect.

Article 5

Entry into force

This decision shall enter into force on 1 January 2022.”

“A. Background

The European Patent Office (EPO) has been participating in the WIPO Digital Access Service (DAS) for the exchange of certified copies of previously filed patent applications (priority documents)1 since 1 November 2018. Under DAS, the EPO and the United States Patent and Trademark Office (USPTO), the Korean Intellectual Property Office (KIPO) and the China National Intellectual Property Administration (CNIPA) electronically exchange priority documents. The four offices have now agreed to terminate the existing Priority Document Exchange Agreements (PDX Agreements) between them as of 30 June 2023 and to use DAS as the sole tool for exchanging priority documents electronically.

Under the existing PDX Agreements the EPO and the three offices automatically transfer certified copies of patent applications or, where applicable, utility model applications from which priority is claimed under the European Patent Convention (EPC) or under the applicable national laws of the US, Korea or China. This automatic exchange does not however extend to priorities claimed in international applications filed under the Patent Cooperation Treaty (PCT).

B. Practical Impact

Until now, where priority was claimed from a previous patent or utility model application filed with the USPTO, KIPO or CNIPA, if a priority document could not be retrieved via DAS or if the applicant did not request retrieval via DAS, the EPO included automatically and free of charge a copy of the previous application from which priority is claimed in the file of the application, and informed the applicant accordingly.

With the termination of the PDX Agreements, the EPO will no longer include a US, Korean or Chinese priority document in the file automatically in cases where a US, Korean or Chinese priority document cannot be retrieved via DAS or where the applicant does not request retrieval via DAS. This applies to European patent applications filed with the EPO on or after 1 January 2022 and Euro-PCT applications entering the European phase on or after that date that claim priority from a US, Korean or Chinese patent or utility model application. Furthermore, it applies to any European patent applications or Euro-PCT applications claiming priority from a US, Korean or Chinese patent or utility model application for which the required priority document could not be included in the file of the application by 30 June 2023.

In contrast, in the case of patent applications filed before 1 January 2022 where the EPO successfully includes the priority document in the file on the basis of the PDX Agreements, the EPO will only inform applicants in good time if a copy of the previous US, Korean or Chinese application from which priority is claimed cannot be retrieved via DAS. In such cases, or if they do not request retrieval via DAS, applicants will have the opportunity to file a copy subsequently in accordance with Rule 53(1) EPC.

The termination of the PDX Agreements will not affect the exchange of priority documents via DAS, which will remain available free of charge for all applications claiming priority from a previous application of a state participating in DAS, including US, Korean and Chinese applications.

Furthermore, the EPO will continue to include automatically and free of charge in the file of a European patent application a copy of the previous application from which priority is claimed if the previous application is a European patent application or an international application filed with the EPO as receiving Office under the PCT.

In the light of this development, the President has decided to issue a new decision on the filing of priority documents2 that supersedes the previous decision of 31 March 2020.3 The new decision reflects the termination of the automatic exchange of priority documents between the EPO and the USPTO, KIPO and CNIPA.”

“1. The present notice provides information about the practice of the Legal Division of the European Patent Office (EPO) in respect of electronic signatures attached to documents submitted as evidence to support requests for registration of a transfer of rights under Rules 22 and 85 EPC and requests for registration of a licence or other rights under Rule 23 EPC filed electronically in proceedings before the EPO (see Article 1 of the decision of the President of the EPO dated 3 March 2021 concerning the electronic filing of documents (OJ EPO 2021, A20, to be replaced on 1 January 2022 by the decision of the President of the EPO dated 14 May 2021 concerning the electronic filing of documents (OJ EPO 2021, A42)).

2. Under the practice applicable to date, the authenticity of the signature on documents submitted under Rules 22 and 85 EPC and Rule 23 EPC is confirmed by way of an original handwritten signature of the party concerned. To facilitate communication by electronic means, the Legal Division will accept, as from the date of publication of the present notice, qualified electronic signatures, in addition to handwritten signatures, in respect of evidence filed in support of requests for registration of a transfer of rights and for registration of a licence or other rights. A qualified electronic signature is considered to fulfil the legal requirement for a signature with respect to data in electronic form in the same way that a handwritten signature does with respect to data on paper.

3. For the purposes of this notice, the Legal Division will apply mutatis mutandis the definition provided in Regulation (EU) No 910/2014.

Accordingly, a qualified electronic signature is an electronic signature that

(a) is uniquely linked to and capable of identifying the person signing;

(b) is created by means that the person signing can use with a high level of confidence and over which they have sole control;

(c) is associated with the electronic document to be authenticated in such a way that any subsequent change in the data is detectable;

(d) is created by a qualified electronic signature device; and

(e) is based on a qualified certificate.

4. The requester is required to establish that the electronically signed document meets the above requirements.

5. In each case, the Legal Division will examine whether the electronic signature attached to documents submitted electronically as supporting evidence under Rules 22 and 85 EPC and Rule 23 EPC meets these requirements. If the evidence presented is found to be unsatisfactory or where doubts arise as to the authenticity of the signature, the EPO may require the submission of further relevant documentary evidence.

6. Article 11 of the decision of the President of the EPO dated 3 March 2021 concerning the electronic filing of documents (OJ EPO 2021, A20, to be replaced on 1 January 2022 by Article 12 of the decision of the President of the EPO dated 14 May 2021 concerning the electronic filing of documents (OJ EPO 2021, A42)) does not apply to the signature attached to documents submitted as evidence to support requests under Rules 22 and 85 EPC and Rule 23 EPC.

7. This notice will apply to requests already pending on the date of its publication or filed thereafter.”

“1. Referral G 2/21 (?Plausibility?) is pending before the Enlarged Board of Appeal. The referring board seeks to clarify whether an exception to the principle of the free evaluation of evidence should be accepted in that post-published evidence must be disregarded if the inventive step is acknowledged on the basis of a technical effect and the proof of the effect rests exclusively on such postpublished evidence (question 1). It further asks whether, if the postpublished evidence is to be disregarded, it can be taken into consideration if the skilled person at the filing date of the patent application would have considered the effect plausible (question 2) or not implausible (question 3). The questions referred to the Enlarged Board of Appeal can be found in decision T 116/18.

2. The President of the EPO has decided that, in view of the potential impact of the referral, all examination and opposition proceedings before the EPO in which the decision depends entirely on the outcome of the referral will be stayed ex officio. The stay will be lifted as soon as possible after the Enlarged Board of Appeal has issued its decision.

3. This concerns patent applications and patents in which the assessment of inventive step is exclusively based on evidence, such as experimental data, which was not publicly available before the filing date of the patent application and which was filed after that date.

4. If proceedings are stayed, the examining or opposition division concerned will inform the parties accordingly (see Guidelines for Examination at the EPO, E-VII, 3). At the same time, it will withdraw any communications setting them time limits to react, and will despatch no further such communications until the Enlarged Board of Appeal has given its decision, whereupon a communication will be issued concerning the resumption of the proceedings.

5. The present notice is applicable with immediate effect.”

“The Director General of the World Intellectual Property Organization (WIPO) presents his compliments and has the honor to notify the deposit by the Government of the Socialist Republic of Viet Nam, on November 17, 2021, of its instrument of accession to the WIPO Copyright Treaty, adopted at Geneva on December 20, 1996.

The WIPO Copyright Treaty will enter into force, with respect to the Socialist Republic of Viet Nam, on February 17, 2022.”

“1. What?

This notice is to explain to users of the IPO’s Trade Marks Tribunal Service the impact of some legal changes being made to the end of the Transition Period transitional arrangements. The changes are set out in The Trade Marks and International Trade Marks (Amendment) (EU Exit) Regulations 2021 which amend the transitional provisions contained in The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 and The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019. We expect the changes to impact only a small number of proceedings. Except for cases which have already been the subject of a decision on their substantive grounds, the changes have the potential to impact only in the following circumstances, and then, only if those proceedings rely (in whole or in part) on an EU trade mark (whether an EUTM or an IR (EU), or an application for such a mark:

• UK opposition or invalidation proceedings launched before IP Completion Day (i.e. before 11pm on 31 December 2020), or
• UK opposition proceedings filed on, or after, IP Completion Day against trade mark applications filed before IP Completion Day

2. Why?

The changes seek to correct an unfair imbalance which has arisen from the way in which the existing transitional provisions interact with a practice adopted by the European Union Intellectual Property Office (EUIPO) in relation to proceedings before it. In summary, despite EU trade marks still being applicable earlier marks in the types of UK opposition/invalidation proceedings identified above, the practice of the EUIPO has prevented those earlier marks from being challenged by the owners of even earlier UK marks and rights. This leaves UK mark/rights owners without an effective means of challenging the EU mark relied upon and potentially meaning that an opposition/invalidation in the UK could succeed even though the EU trade mark on which it is based may not be valid.

3. The new law

The new law provides that if an EU trade mark is relied upon in one of the above sets of UK opposition/invalidation proceedings, its enforceability in those proceedings will, in principle, be tied to the fate of the comparable mark derived from the relevant EU mark, or in the case of a pending EU mark, the fate of any re-filed UK application made during the 9 month window provided by law for doing so. The new law only applies to proceedings which have yet to be determined by the Tribunal by way of final decision. The following table sets out the main effects:

4. The new practice and required behaviour

The Tribunal will not limit the enforceability of a relied upon EU mark of its own motion. A party who wishes the Tribunal to take any of the actions set out below must, therefore, make an application (in writing) to the Tribunal at the earliest opportunity, the actions being:

1. To wait for any challenge against the comparable mark or refiled UK mark to be determined, and/or

2. To wait for any pending re-filed UK application to be determined, and/or

3. To request that the Tribunal does not enforce the EU mark at all, or only in part.

For absolute clarity, if no application is received, the UK opposition/invalidation proceedings will continue without reference to the status of the comparable mark or re-filed UK mark. The party making any application under these new provisions should identify the number of any comparable/re-filed UK mark and, where applicable, the cancellation/revocation number of any proceedings which have been launched against the comparable/re-filed UK mark. The Tribunal will only consider requests to stay proceedings to await the outcome of invalidation or revocation proceedings if those challenges have already been lodged.

Parties should note that the Tribunal will look to consider favourably any requests made under these new provisions. However, there may be circumstances where the Tribunal does not consider it appropriate to grant such requests. For example, if a challenge against a comparable/re-filed UK mark stands no real prospect of success, this will be seen as a delaying tactic and the request will likely be refused.

Where it is determined that the Tribunal should wait until any challenge to the comparable mark/re-filed UK mark has been decided, or until the registrability of a pending re-filed UK application has been determined, this may result in the original UK opposition/invalidation proceedings being stayed or, alternatively, in certain proceedings, being consolidated. Which course of action to follow will be decided on a case-by-case basis, using the Tribunal’s case-management powers. The parties can request a case management conference if they do not agree.

5. Timing

The new law came into force on 26 November 2021. A party can now avail itself of the new law by making an application in accordance with the above practice. As stated above, applications should be made as soon as is practical.”

“To assist enterprises in gaining a deeper understanding of the acquisition, maintenance, and utilization of patents, TIPO has compiled the Manual on Patent Application and Management Practices for Enterprises , which has been available on the TIPO website for reference.

The manual includes useful information to enterprises, such as government resources and services related to intellectual property, a checklist for patent applications, as well as tips and reminders on the patent application progress, patent right maintenance, and management practices.”

“In order to promote the research  and  development  of green patents and accelerate commercialization of related products, the scope of applicability of AEP will be expanded to include green technologies such as energy-saving, carbon emission reduction, and resource-saving technologies.

In addition, applications on the grounds of “essential  to commercial exploitation” and ” inventions related to green technologies” will have their accelerated examination results issued within 6 months instead of 9 after filing all necessary documents, expediting the examination process of relevant cases.

The amended Accelerated Examination Program is published on the TIPO website for reference by the public.”

“Examination efficiency and quality can be improved  by enhancing patent examiners’ ability to quickly grasp technical concepts in patent applications that pertain to advanced technology. Intending to provide applicants  with  swift  and smooth patent rights application experience, TIPO has formulated the Industry Collaborative Patent Interview Pilot Program for a trial period of one year starting from November 1, 2021. The decision on whether to adjust and renew the program will be determined by evaluations subsequent to the trial period.

In this program, if the examiner determines that an application pertains to advanced technology and an interview can lead to a better understanding of the technical content  in an application, the examiner may act upon their own initiative and notify the applicant of an interview. Applicants may explain the technical content of their patent applications if they so wish. As a general rule, there is a limit of 10 applications per interview. Applicants of patent applications that pertain to advanced technology may also proactively submit a letter of intent in paper or electronic form after TIPO has notified the applicant of a substantive examination and before receiving office action or a written decision of patent examination. There is no application fee for said interviews.

The aforementioned “advanced technologies”  in this  pilot program include stem cell regenerative medicine, medical care informatics, micro-LED display, neural network, quantum computer, 3nm semiconductor manufacturing process, artificial intelligence, Internet of Things, big data, blockchain, and 5G mobile communication technology. For details of this program, please refer to the TIPO website.”

“The launch of Next Generation of Digital Post is postponed to first quarter of 2022. This means that the digital communication with the Danish Patent and Trademark Office will not, as previously annouced, close in the period 26-29 November 2021.

You can therefore, as normal, use digital post to communicate with us.

Read more about the background for the postponement on the website of the Danish Agency for Digitalisation (information available in Danish).

“Our office will be closing for Christmas at 5.00 pm AEDT on Friday, 24 December 2021. We will re-open at 9.00 am AEDT on Tuesday, 4 January 2021. Our call centre will also be closed during this time.

While you won’t be able to speak to us on the phone during the break, our online services will still be available. This means you will still be able to file new applications and manage your existing rights online.

We wish you all a safe and enjoyable festive season and a happy new year.”