Weekly Patent Update – Nov 2021 (3 of 3)

“The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of Jamaica, on November 10, 2021, of its instrument of accession to the Patent Cooperation Treaty (PCT), done at Washington on June 19, 1970, amended on September 28, 1979, modified on February 3, 1984, and on October 3, 2001.

The Treaty will enter into force, with respect to Jamaica, on February 10, 2022.”

This change will be reflected in the system’s country table on 10 February 2022.

“From 1 July 2022 a new global standard will apply to all new patent applications containing biological sequence listings. The new standard, World Intellectual Property Organisation (WIPO) ST.26, applies to biological sequences with ten or more defined nucleotides or with four or more defined amino acids. This change is being adopted by all WIPO contracting states including the UK Intellectual Property Office (IPO). Details of WIPO ST.26 are available.

New software, WIPO Sequence, is available for applicants to compile sequence listings. It is available to download.

Details of the IPO’s new requirements and procedures for Changes for patent applications with biological sequence listings are available.

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

“The Secretary-General of the International Union for the Protection of New Varieties of Plants (UPOV) presents his compliments and has the honor to notify the deposit by the Government of the Republic of Ghana, on November 3, 2021, of its instrument of accession to the International Convention for the Protection of New Varieties of Plants of December 2, 1961, as revised at Geneva on November 10, 1972, on October 23, 1978, and on March 19, 1991.

The said International Convention, will enter into force, with respect to the Republic of Ghana, on December 3, 2021.  On that date, the Republic of Ghana will become a member of the International Union for the Protection of New Varieties of Plants, founded by the said International Convention.

For the purpose of determining its share in the total amount of the annual contributions to the budget of UPOV, one-fifth (0.2) of one contribution unit is applicable to the Republic of Ghana.”

“The President of the European Patent Office, having regard to Articles 10(2)(a) and 116 of the European Patent Convention (EPC), has decided as follows:

Article 1

Further extension of the pilot project

The pilot project for oral proceedings by videoconference before opposition divisions, as set out in the decision of the President of the European Patent Office dated 10 November 2020 concerning the modification and extension of the pilot project for oral proceedings by videoconference before opposition divisions (OJ EPO 2020, A121) and extended by the decision of the President dated 14 May 2021 concerning the further extension of the pilot project (OJ EPO 2021, A41), is further extended to run until 31 May 2022.

Article 2

Entry into force

This decision enters into force on 1 February 2022.

Done at Munich, 23 November 2021″

“On 1 October 2021, Seychelles deposited its instrument of accession to the Harare Protocol on Patents and Industrial Designs within the Framework of the African Regional Intellectual Property Organization (ARIPO). Therefore, Seychelles will become a member State of ARIPO with effect from 1 January 2022, and the Harare Protocol will enter into force with respect to Seychelles with effect from that date, bringing the number of member States of ARIPO to 21, and the number of States party to the Harare Protocol to 19.

This means that any international application filed on or after 1 January 2022 will include the designation of Seychelles for an ARIPO patent, as well as for a national patent. Furthermore, as from 1 January 2022, it will be possible for nationals and residents of Seychelles to file international applications with ARIPO as receiving Office, in addition to the Registration Division, Department of Legal Affairs (Seychelles) and the International Bureau of WIPO.

ARIPO’s announcement regarding the accession by Seychelles has been published at: https://www.aripo.org/accession-of-the-republic-of-seychelles-to-the-harare-protocol/“

“The State Patent Bureau of the Republic of Lithuania in its capacity as receiving Office has notified the International Bureau under PCT Rule 89bis.1(d) that, with effect from 15 January 2022, it will be prepared to receive and process international applications in electronic form which have been filed using ePCT-Filing. The Office already receives and processes international applications in electronic form that have been filed using EPO Online Filing. It is recalled that the applicable electronic filing fee reductions listed in item 4 of the Schedule of Fees are indicated in Fee Table I(a).

The notification containing the requirements and practices of the above-mentioned Office with regard to the filing of international applications in electronic form has been updated and will be published in the Official Notices (PCT Gazette) on 25 November 2021 at: https://www.wipo.int/pct/en/official_notices/index.html”

“It is recalled that WIPO digital certificates are used as a strong authentication method for filing and managing international applications using ePCT. As Internet Explorer will be discontinued in the near future, WIPO is no longer enabling ePCT users to enroll for WIPO digital certificates using that browser. WIPO will send a notification to current digital certificate holders 30 days before the two-year validity expires, informing them of the expiration date and providing links to information about other options. A further reminder will be sent seven days before the expiration date of each certificate. It will still be possible to enroll for digital certificates using Google Chrome, Mozilla Firefox or Microsoft Edge. WIPO’s digital certificates page at: https://www.wipo.int/pct-safe/en/certificates.html contains general information on digital certificates, as well as user guides on performing the following actions using the above-mentioned browsers:

– how to enroll for your certificate;

– how to pick up your certificate;

– how to import your certificate to the browser and save a back-up copy; and

– how to remove your certificate from the browser.

Further information on WIPO digital certificates as well as other strong authentication methods for filing and managing PCT applications using ePCT is contained in the Practical Advice in this issue.”

“With effect from 1 January 2022, Sections 102(h), 705bis, 705ter, 709, 713(b) and Annex F of the Administrative Instructions under the PCT have been modified, and a new Section 5.1bis has been added to Annex F. The main purposes of these modifications are:

– to provide Offices with more flexibility to design their online filing interfaces for the means of communication with the applicant that they specify (Section 102(h));

– to clarify that Section 705bis applies to the case of “scanning” a document filed on paper into electronic form while new Section 705ter applies to the case of “conversion” from one electronic format to another electronic format (Section 705bis);

– to provide a legal basis for permitting international applications to be converted from one electronic format (for example, PDF) to another electronic format (for example, XML) and processed on that basis, in order to authorize receiving Offices, the International Bureau (IB) and International Searching Authorities to convert international applications into XML format and use the resulting XML version as the home copy, record copy, or search copy (Section 705ter);

– to provide a legal basis for an Office to transmit notifications or other documents to the applicant by making them available for retrieval by the applicant through a dedicated electronic system, and to enable an Office, if agreed by the IB, to request the IB to transmit documents to the applicant by electronic means on its behalf

? details in this respect would be left to the Office concerned and the IB to discuss if such a request would arise (Section 709);

– to provide a legal basis for applying Sections 705bis(b) to (e) to notifications, communications, correspondence or other documents relating to international applications filed, processed or communicated in electronic form that are capable of applying, but do not expressly apply, under Section 713(b) (Section 713(b));

– to set out the technical requirements for how an Office may transmit documents to the applicant by making them available for online retrieval (Annex F, Section 5.1ter); and

– to prepare for the future decommissioning of PCT-SAFE (Section 703(b)(iv) Editor’s Note; and Annex F, section 6).

The revised consolidated versions of the Administrative Instructions containing these modifications, as in force from 1 January 2022, are available in English and French in PDF format at, respectively: https://www.wipo.int/pct/en/texts/index.html https://www.wipo.int/pct/fr/texts/index.html“

“The non-working days at the International Bureau (IB) during December 2021 and January 2022, in addition to the weekends, will be: Friday, 24 December 2021

Friday, 31 December 2021 and

Monday, 3 January 2022

The IB will therefore be open for business over the holiday period from Monday, 27 December 2021 to Thursday, 30 December 2021, inclusive, and will then be open as usual from Tuesday, 4 January 2022.

The dates of operation of the PCT Information Service, the PCT eServices and the PCT Operations Division, as well as information on the publication schedule, are given below.

PCT Information Service 

The PCT Information Service will be closed from Friday, 24 December 2021 to Monday, 3 January 2022, inclusive. It will reopen on Tuesday, 4 January 2022. Please note, however, that if you call the PCT Information Service (telephone number: (41-22) 338 83 38) during the holiday period, there will be a recorded message providing a telephone number for cases requiring urgent attention.

It is recalled that the PCT Information Service answers general inquiries about the filing of international applications and the procedure to be followed during the international phase of the PCT (questions relating to specific applications should be addressed to the PCT Operations Division). For further information, please refer to:

https://www.wipo.int/pct/en/infoline.html

PCT Operations Customer Support Section (PCT eServices) and PCT Operations Division 

The schedule for the PCT Operations Customer Support Section and the PCT Operations Division during the end-of-year holiday period will be as follows:

Friday, 24 December 2021: closed

Monday, 27 December to Thursday, 30 December 2021: open as usual, from 9:00 to 18:00 CET

Friday, 31 December 2021 to Monday, 3 January 2022: closed

Tuesday, 4 January 2022, onwards: open as usual, from 9:00 to 18:00 CET

It is recalled that:

– the PCT Operations Customer Support Section responds to inquiries related to services for the purpose of preparing, filing and managing applications electronically: ePCT (https://pct.wipo.int), PCT-SAFE (https://www.wipo.int/pct-safe/en/index.html) and the WIPO Digital Access Service (DAS) (https://www.wipo.int/das/en/);

– the PCT Operations Division answers specific application-related inquiries. Please note that the PCT Operations Division is under the responsibility of 10 teams. In order to find out the generic e-mail address and telephone number of the competent team, please either check Form PCT/IB/301 or refer to: https://pct.wipo.int/ePCTExternal/pages/TeamLookup.xhtml“

“PATENTSCOPE now includes the national patent collection of Poland, with 294,000 patent applications and utility models, among which over 46,000 documents are Polish full-text (OCR) documents. Patent family information and one-click access to patent documents in the Polish national database are also available for this new collection. The addition of the national collection of Poland brings to 73 the number of national/regional collections available in PATENTSCOPE. The collection is available at: https://patentscope.wipo.int/search/en/advancedSearch.jsf”

“The Intellectual Property office of Ireland (IPOI) will be closed for the transaction of business on the following dates:

Friday 24th December 2021

Monday 27th December 2021

Tuesday 28th December 2021

Monday 3rd January 2022

Due to the COVID 19 pandemic, the Intellectual Property office of Ireland (IPOI) is closed to the public and to personal callers until further notice.  Clients and customers are asked to continue to use our online e-filing and payment services, and to continue to communicate with us by email whenever possible.

While the Office remains unable to facilitate personal callers to its premises until further notice, telephone enquiries are being accepted on 00- 353- 56 7720111 between 9.30 a.m. and 4 p.m. Monday to Friday.”

“In order to prepare for the transition to MitID and NDGP, communication via digital post between authorities and private individuals as well as companies will close in the period 26-29 November 2021. All users of digital post have been informed of this by the Danish Agency for Digitalisation. The closure also has consequences for digital communication to and from the Danish Patent and Trademark Office.

Post from the Danish Patent and Trademark Office

Post from the Danish Patent and Trademark Office, which you should have received in the period 26 – 29 November 2021, will be delivered when digital post is reopened on 30 November 2021. This means that you will have 1-4 days less to respond to our letters. This is less than normal, but still on average a smaller time loss than if we send by physical post, which takes least 5 days.

Post to the Danish Patent and Trademark Office

You must meet the deadlines stated in the letters which we have sent to you, and which fall on the days of the closure. This means that you must use alternative communication channels during the period where digital post is closed.

If you have questions about digital post in the period 26. -29. November 2021, you are most welcome to contact customer service on +45 43508301 or via email.”

“On November 22, 2021, the delegation of the Eurasian Patent Office (EAPO) took part in the ceremony of signing the Agreement in relation to the functioning of the EAPO as the International Searching Authority (ISA) and the International Preliminary Examining Authority (IPEA) under the PCT which was held at the World Intellectual Property Organization (WIPO).

The draft Agreement, which was signed by the EAPO President Saule Tlevlessova and WIPO Director General Daren Tang, was approved by the PCT Union Assembly at the Fifty-Third (23rd ordinary) session in October 2021.

Daren Tang congratulated the EAPO on obtaining a new status under the PCT and welcomed the expansion of the geography of international authorities by appointing the Office as an ISA / IPEA. Mr. Tang stressed that the EAPO member countries represent one of the largest regions in the world, and the appointment will help to strengthen the role of the Russian language in the PCT system.

The WIPO Director General highlighted the achievements of the EAPO in the digitalization of its activities and the development of electronic services. He invited the EAPO to participate in its new capacity in various initiatives held under the auspices of WIPO and assured the full support of WIPO in exploring the Eurasian Office’s new functions under the PCT.

Saule Tlevlessova expressed her thanks to Daren Tang for supporting all efforts to complete the EAPO appointment procedure as an International Authority under the PCT, which was implemented despite the restrictions caused by the pandemic. The EAPO President also thanked WIPO for advising the EAPO at all stages of this procedure, noting that the Eurasian Patent Organization had been waiting for this historic event for over 25 years.

In the course of the subsequent meeting with heads and staff of the WIPO Patent and Technology Sector units, the EAPO delegation discussed the procedural matters related to the entry into force of the signed agreement and the specific activities required for the successful launch of the EAPO operations as the ISA/IPEA.

Much attention was devoted to the organization of training for EAPO employees in the field of relevant procedures and regulations of the PCT system, substantive examination and use of WIPO electronic services, including mastering in the EAPO the functionality available in the ePCT system for International Authorities. As a result of the meeting, the parties agreed on the implementation and coordination of these measures at the working level.”

“This update to the Guidelines includes extensive changes to the chapter on Second Medical Use, and also significant changes in the following chapters: Therapy, Surgery, Diagnosis, Multi-step methods involving a surgical, therapeutic or diagnostic step, Apparatus and devices for surgery, therapy or diagnosis, First medical use, and Claims to pharmaceutical compositions.”

The updated article can be found here.