Weekly Patent Update (July 2021)

Force majeure in Asian patent legislation and its impact on the patent system

When something unexpected happens, the world around us can change in unforeseen ways and with unforeseen consequences. Indeed, the word “happen” is often associated with feelings of unease and powerlessness, and with the desire to know what will “happen” next.

Most patent offices immediately recognised that the COVID-19 pandemic was “happening”, that it was something beyond our control, and began to do what they could to help. They extended deadlines, waived fees, and offered the restoration of lapsed rights when an applicant or patent owner missed a deadline because of the pandemic. While some of these provisions are implemented automatically, most patent offices require applicants to formally invoke force majeure, and to provide justification and the relevant documents.

These measures certainly provide relief to the applicant or patent owner in the event that something is happening. But for patent searchers trying to assess the legal status of a patent application, they might lead to even more uncertainty. We will illustrate this with examples from major Asian patent offices.

Examples from Japanese and Chinese applications 

The first example deals with the period for filing examination requests. In China, Japan and South Korea, applicants have three years from filing (or priority) to submit a formal request for substantive examination. If this deadline is missed, the application is deemed to be withdrawn.

For patent searchers, this prolongs the period of uncertainty: a competitor who is monitoring an application cannot be sure whether the applicant will continue the application procedure by filing an examination request or not. As already mentioned, with extensions granted in times of crisis, these periods can grow.

The screenshot provides an overview of legal events for a Japanese patent application in the JPO’s J-Plat Pat database. The application was filed on 28 March 2018. Even though it has been over three years since the application was filed, there is still no further information available – relating either to a request for examination or to a final statement that NO request has been filed and that the application is therefore deemed to have been withdrawn.

• J Plat Pat

• In the next example we look at the time allowed to respond to patent office deadlines. This Chinese application was filed in 2014. The only legal event we can see – also in the source documents provided by the CNIPA – is the request for substantive examination from 2016.

• CNIPA’s Online Gazette

If we use the CNIPA’s CPQuery database to look at the electronic file wrapper data, we can see that CNIPA sent several preliminary rejections to the applicant, the last one on 24 February 2020. At that time, the COVID-19 pandemic was gaining momentum, and this is likely to have made communication between the European applicant and her Chinese representative more difficult. This might qualify as a valid ground for invoking force majeure in the event of a missed deadline.

• CPQuery

As it turns out,the applicant did not reply to the preliminary rejection. CNIPA then issued a notification on 18 June 2020 stating that the application was deemed to have been withdrawn.

This is not necessarily the end of the story, however: the applicant may still invoke force majeure to request restoration of rights. According to Chinese law, this must be done within a period of two months from the end of the force majeure conditions and at the latest two years after the original deadline.

As these examples show, it is absolutely necessary to consider these additional periods of uncertainty when monitoring the legal status of a patent or patent application at a time when something is “happening”.

Further information on patent systems in Asia, including a comprehensive guide to searching Asian data sources, is available on the EPO’s Asian patent information webpages.”

Technologies such as AI (artificial intelligence) and big data have been booming in recent years, and the number of patent applications for computer software-related inventions has increased accordingly. The Examination Guidelines for Computer Software-Related Inventions has thus been updated by TIPO and came into effect on July 1st, serving as a guide for examiners to handle related cases and reference for applicants.

The key points of the amendment include:

1. Introduced examination procedure and flow chart for computer software inventions evaluations, supplemented by case examples, as a principle for assessing the eligibility of inventions.
2. In line with the principle of TIPO’s assessment of inventive step in the current examination basis, sections “Factors Denying Existence of Inventive Step” and “Factors Determining Inventive Step” are introduced.
3. Added AI-related examination instructions and application cases for reference.”

The Enlarged Board of Appeal of the European Patent Office issued decision G 4/19 (Double patenting) today, in which it held that a European patent application can be refused by reason of the prohibition on double patenting.

Background

The Enlarged Board of Appeal is the highest judicial authority under the European Patent Convention (EPC). Its main task is to ensure the uniform application of the EPC.

The principle of the prohibition on double patenting excludes two patents being granted to the same applicant for one invention. The examining division applied this principle and refused European patent application 10718590.2 under Articles 97(2) and 125 EPC on the ground that the applicant already had a patent for the same invention.

The applicant appealed and Technical Board of Appeal 3.3.01 referred three questions on the prohibition on double patenting to the Enlarged Board of Appeal (T 318/14, OJ EPO 2020, A104). The referring board doubted that there was a legal basis for the prohibition in the EPC. In particular, the referring board did not consider Article 125 EPC suitable for that purpose.

Article 125 EPC provides:

Reference to general principles
In the absence of procedural provisions in this Convention, the European Patent Office shall take into account the principles of procedural law generally recognised in the Contracting States.

Key considerations

The Enlarged Board of Appeal interpreted Article 125 EPC in line with the principles set out in Articles 31 and 32 of the Vienna Convention on the Law of Treaties. It applied the grammatical and systematic interpretation methods and took the preparatory works of the EPC (travaux préparatoires) into account as a supplementary means of interpretation.

The Enlarged Board of Appeal held that the term “procedural provisions” in Article 125 EPC may extend to provisions requiring a substantive examination of the subject-matter claimed. It stated that the prohibition on double patenting constitutes a principle of procedural law within the meaning of Article 125 EPC and is generally recognised in the Contracting States.

The Enlarged Board further held that the prohibition on double patenting is not limited to applications directed to the same subject-matter which were filed on the same day. It also extends to parent and divisional applications, and to applications claiming the same priority. The Enlarged Board also confirmed that the prohibition only applies where the application under examination and the patent already granted have common designated Contracting States.

The Enlarged Board of Appeal answered the referred questions as follows:

1. A European patent application can be refused under Articles 97(2) and 125 EPC if it claims the same subject-matter as a European patent which has been granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC.

2.1 The application can be refused on that legal basis, irrespective of whether it
a) was filed on the same date as, or
b) is an earlier application or a divisional application (Article 76(1) EPC) in respect of, or
c) claims the same priority (Article 88 EPC) as
the European patent application leading to the European patent already granted.
2.2 In view of the answer to Question 2.1 a separate answer is not required.”

As from 30 June 2022, the International Bureau (IB) will end its development, distribution and support of the PCT-SAFE software; the final scheduled release will be in April 2022, and no further updates to the software will be provided after that date. It is recalled that since 1 July 2021, the International Bureau as receiving Office (RO) has no longer been accepting international applications filed in electronic form using the PCT-SAFE software. It is expected that the few remaining ROs that currently accept PCT-SAFE filings will notify the IB that they will no longer accept PCT-SAFE filings after 30 June 2022.

Any remaining PCT-SAFE users are strongly advised to transition to ePCT-Filing as soon as possible, if accepted by their competent RO1. For the list of ROs which accept ePCT-Filings (currently 72 Offices2), please refer to: https://pct.wipo.int/ePCTExternal/pages/EFilingServers.xhtml

The IB strongly advises applicants, as from 1 July 2022, not to prepare and file PCT applications using any existing versions of the PCT-SAFE software, even if an RO has not yet formally notified the IB by that date that it will no longer accept PCT-SAFE filings. Filers who use PCT-SAFE as from 1 July 2022 will do so at their own risk.

Very few applicants still file their international applications using PCT-SAFE, as the majority have already switched to using ePCT-Filing in order to benefit from its many safeguards and other advantages. The main benefits of ePCT-Filing are listed in PCT Newsletter No. 10/2020, page 3 at: https://www.wipo.int/edocs/pctndocs/en/2020/pct_news_2020_10.pdf

For details on all the features available in ePCT, please refer to: https://pct.wipo.int/ePCTExternal/pages/landing.xhtml

A number of webinars have been given recently on the subject of ePCT-Filing. You can listen to the webinar recordings by entering your name and e-mail address, and access the PDF version of the presentations, at: https://www.wipo.int/pct/en/seminar/webinars/index.html

Further information on switching from PCT-SAFE to ePCT, with a particular emphasis on PCT applicants filing with the USPTO (which uses ePCT in combination with the USPTO’s EFS-Web system) can be found at: https://www.federalregister.gov/documents/2020/09/30/2020-18743/facilitating-the-use-ofthe-world-intellectual-property-organizations-epct-system-to-prepare

the “Practical Advice” published in PCT Newsletter No. 01/2021, page 8, at: https://www.wipo.int/edocs/pctndocs/en/2021/pct_news_2021_1.pdf

PCT Newsletter No. 10/2020, page 2, at: https://www.wipo.int/edocs/pctndocs/en/2020/pct_news_2020_10.pdf

“Filing at RO/US using ePCT in combination with EFS-Web”: https://www.wipo.int/pct/en/epct/learnmore.html?N=452

Furthermore, a webinar about electronic filing with the USPTO (“ePCT-Filing with RO/US in combination with EFS-Web”) will take place from 16:00 to 17:30 CEST (Central European Summer Time) (10:00 to 11:30 EDT (New York time)) on 5 August 2021. If you would like to attend, please register at:

https://wipo-int.zoom.us/webinar/register/WN_c9-RykbQTsqDlCSqnr8kDA

Finally, a wealth of information is available on the WIPO website to help users get started using ePCT. Please refer to:

https://pct.wipo.int/ePCTExternal/pages/landing.xhtml

https://pct.wipo.int/pct/en/epct/pdf/pct_wipo_accounts_faq.html

“Filing an application”: https://www.wipo.int/pct/en/epct/learnmore.html?N=196

“Getting started”: https://www.wipo.int/pct/en/epct/learnmore.html?N=588

“eOwnership, eHandshakes and Access Rights”: https://www.wipo.int/pct/en/epct/learnmore.html?N=693

The IB is providing support for applicants and Offices throughout the transition from PCT-SAFE. For further information and assistance with the transition from PCT-SAFE to ePCT-Filing, please contact the PCT Operations Customer Support Section at: pct.eservices@wipo.int

Brief history of PCT-SAFE

PCT-SAFE was first developed as a limited pilot in 2002 and was based on its precursor, PCT-EASY, which had been in use by an increasing number of applicants since its release on 1 January 1999. WIPO worked in collaboration with the European Patent Office (EPO) on the development of PCT-SAFE, based on the latter’s experience with the epoline® software and their epoline® receiving servers. Initially, PCT-SAFE filings were accepted by the IB and the EPO, but other Offices started accepting such filings as from 1 January 2004. PCT-SAFE soon overtook PCT-EASY in terms of numbers of users as it enabled applicants to file their applications in fully electronic form.3 By 1 January 2013, 27 ROs were accepting PCT-SAFE filings.

With the development of ePCT-Filing (the first international application filed using ePCT was filed under its pilot phase in May 2013), and given the many advantages and safeguards that ePCT has compared with PCT-SAFE, an increasing number of ROs have enabled ePCT-Filing. The majority of the PCT-SAFE ROs have already stopped accepting PCT-SAFE filings in favor of ePCT.”

National Institute of Industrial Property (France)

The National Institute of Industrial Property (France), which is already a depositing Office of the WIPO Digital Access Service for Priority Documents (DAS) for certified copies of patent and utility model applications as priority documents, including PCT applications filed with it on or after 1 October 2019, has notified the IB that it has extended the scope of its DAS digital library to trademark and industrial design applications with effect from 5 July 2021.

For further information, see: https://www.wipo.int/das/en/participating_offices/details.jsp?id=11651

A list of the DAS participating Offices is available at: https://www.wipo.int/das/en/participating_offices.html”

The following parts of the PCT International Search and Preliminary Examination (ISPE) Guidelines have been modified with effect from 1 July 2021:

– Chapter 10 on unity of invention; and

– Paragraph 15.09 relating to the responsibilities of the examiner during the international search.

For further information on the above-mentioned modifications, please refer to PCT Circulars C. PCT 1610 and C. PCT 1624 at, respectively:

https://www.wipo.int/pct/en/circulars/2020/1610.pdf and

https://www.wipo.int/pct/en/circulars/2021/1624.pdf

Revised consolidated versions of the ISPE Guidelines (document PCT/GL/ISPE/11) are available in English, French and Spanish at, respectively:

https://www.wipo.int/pct/en/texts/gdlines.html

https://www.wipo.int/pct/fr/texts/gdlines.html

https://www.wipo.int/pct/es/texts/gdlines.html”

Due to the fact that Thursday, 9 September 2021, will be a non-working day at WIPO, the PCT applications (as well as any Official Notices (PCT Gazette)) which would normally have been published on that day will be published on Friday, 10 September 2021. The date of completion of technical preparations for that publication will, however, remain unchanged, and any changes that should be taken into account for the purposes of international publication should be received by the International Bureau by midnight (Central European Summer Time (CEST)) on Tuesday, 24 August 2021.”

The National Institute of Industrial Property (Chile) has clarified that that no fee for priority document is payable to it as receiving Office where, as a depositing Office participating in the WIPO Digital Access Service (DAS), it has made a certified copy of the priority document available through DAS.”

The Internet address of the Industrial Property Office of the Czech Republic has changed, as follows:

Internet: https://www.upv.gov.cz”

The Internet address of the Israel Patent Office has changed, as follows:

Internet: https://www.gov.il/en/departments/ilpo”

Further to the information published in PCT Newsletter No. 06/2021, the Icelandic Patent Office has informed the International Bureau (IB) that, since 1 January 2021, it accepts the filing of documents by e-mail and the original of the document is not required.”

The Turkish Patent and Trademark Office (TURKPATENT), in its capacity as designated (or elected) Office, has notified a change in the time limit for furnishing a translation of the international application – the translation of the international application should now be furnished within two months from the date of entry into the national phase.”