Weekly Patent Update – Oct 2021 (1 of 3)

Hi all!

We have now included all official fees for Germany 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!

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“The Ministry of Law (MinLaw) has tabled the Copyright Bill for First Reading in Parliament today.

1. The Copyright Bill (“the Bill”) seeks to repeal and replace the current Copyright Act. It will strengthen the copyright regime in Singapore, by updating the Copyright Act to stay abreast of changes in how content is created, distributed, and used. It will also make the law more accessible by simplifying the language.

Key Features of the Bill

The key features of the Bill are:

a. It will introduce new rights and remedies for creators, to ensure copyright continues to reward the creation of works and incentivise creativity. For example:

• A new right to be identified will require users to ensure that when materials are used in public, including when they are distributed on online, the creator or performer is acknowledged. This will help individual creators and performers build their reputation.
• Creators of photographs, portraits, engravings, sound recordings and films, whether commissioned or otherwise, will by default be the first owner of copyright unless otherwise prescribed by contract. This changes the current position, where the commissioning party owns the copyright by default. Creators will be better positioned to negotiate with the commissioning parties, and can further showcase and commercialise their works for other purposes.
• Copyright works, if lawfully accessed (e.g. without circumventing paywalls), can be used for computational data analysis, such as sentiment analysis, text and data mining, or training machine learning, without having to seek the permission of each copyright owner. This will support research and innovation efforts.
• Teachers and students may use freely available internet materials in their educational activities, including for home-based learning, as long as they acknowledge the source. However, if they are made aware that the source is infringing, they must stop using it. This new exception is timely, since the use of online materials for educational purposes has increased substantially.

1. The Bill will restructure and reword the legislation in plain English, to enhance its clarity and accessibility. The Bill adopts a more intuitive, thematic structure and provides illustrations to show how provisions should be applied in particular situations. This will allow creators, users, and intermediaries to better understand how the law works to both protect and provide access to works.
2. MinLaw and the Intellectual Property Office of Singapore (IPOS) would like to thank all respondents who provided feedback during the several rounds of public consultations culminating in a draft version of the Bill being issued for final consultation in February this year. Responses from the February consultation were taken into consideration in finalising the Bill. MinLaw’s full response to the February consultation can be accessed at https://www.go.gov.sg/copyright-consult-response.
3. If passed, we expect to be able to operationalise most of the provisions in the Bill in November 2021.”

“The Republic of Seychelles has acceded to the Harare Protocol on Patents and Industrial Designs, becoming the 21st ARIPO Member State.

The President of Seychelles, H.E. Wavel Ramkalawan, signed the instrument of accession to the Harare Protocol on 26th August 2021 which the ARIPO Director General received on 1st October 2021.

Seychelles becomes the 19th Contracting State to the Harare Protocol. Pursuant to the Protocol, starting on 1st January 2022, users of the ARIPO system can designate Seychelles in their applications.

The other ARIPO Member States that are Contracting Parties to the Harare Protocol are: Botswana, Kingdom of Eswatini, The Gambia, Ghana, Kenya, Kingdom of Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, Sao Tome and Principe, Sierra Leone, Sudan, Tanzania, Uganda, Zambia, and Zimbabwe.”

“The Federal Council acknowledged the results of the consultation on the partial revision of the Patents Act at its meeting of 18 August 2021 and decided on the further course of action. Modernising the patent examination procedure was, in principle, welcomed in the consultation. The Federal Council has decided to take into account the criticism voiced in individual areas by making adjustments to the contents of the draft bill. It has mandated the Federal Department of Justice and Police (FDJP) to submit a dispatch by the end of 2022.

The partial revision of the Patents Act, which the Federal Council submitted for consultation on 14 October 2020, was aimed primarily at fulfilling the parliamentary mandate to introduce a fully examined Swiss patent together with a utility model as an unexamined IP right (19.3228 Hefti Motion). The consultation, however, revealed that an either-or solution – either a fully examined patent or a utility model – is too rigid, while a flexible patent examination is what is wanted.

The tried and tested ‘unexamined’ Swiss patent is staying

In view of the results of the consultation, the Federal Council continues to support the introduction of a fully examined patent. It decided, however, that a utility model will not be introduced and that it would like to keep the current patent system, to the extent that – according to feedback from the consultation – it has proved its worth. In general, a patent application will therefore still not be examined for novelty and inventive step by the Swiss Federal Institute of Intellectual Property (IPI). As a result, an ‘unexamined’ – but less expensive – IP right will continue to be available to inventors as called for by the motion.

Flexible patent examination – fully examined Swiss patent on request

In future, inventors should also be able to request that all patentability requirements are examined (in particular novelty and inventive step) by the IPI. Such a fully examined Swiss patent is, in particular, for SMEs a valuable alternative to a fully examined European patent granted by the European Patent Office (EPO) with protection extended to Switzerland – a path that is often laborious and expensive for an SME.

More legal certainty with obligatory searches

The Federal Council would also like to create more legal certainty for the ‘unexamined’ IP right, as was called for in both the motion and consultation. As a result, every patent application is to be supplemented with a compulsory patent search. The public search report documents the state of the art from which the invention must be sufficiently different. On the basis of this information, it is therefore possible to better evaluate whether the invention can really be protected by a patent.

Streamlined appeal procedure with a court specialised in patent matters

The Federal Council wants to make the Swiss patent system as lean as possible in order to offer an attractive alternative to the European patent. IPI decisions must be reviewable by a court on appeal. This review is to happen in future directly through the Federal Patent Court, which has the necessary high level of technical expertise. The opposition procedure introduced in 2008 is to be dispensed with altogether. It has never been resorted to since it was introduced”

“Hearings by video conferencing, more generous time limits – DPMA President praises amendments

Munich. The Second Act to Simplify and Modernise Patent Law (Second Patent Law Modernisation Act – 2. Patentrechtsmodernisierungsgesetz) provides for numerous amendments in patent law and in other IP procedures before the DPMA. The new provisions were promulgated in the Federal Law Gazette (part I, p. 3490) on 17 August 2021. “The reform package strengthens the outstanding position of Germany and the German Patent and Trade Mark Office as a location for intellectual property protection in comparison with other countries in Europe and around the world,” commented DPMA President Cornelia Rudloff-Schäffer.

As an important element for procedures before the DPMA, envisaged to be available from next year onwards, the Second Patent Law Modernisation Act provides for the option to participate in proceedings and hearings, and give evidence in IP procedures using image and sound transmission. This means that parties can participate in sessions by video conferencing in suitable cases to be decided by the DPMA. In many cases, this saves costs and time and can accelerate the procedures. However, it is still possible to directly participate on site. “The coronavirus pandemic has once again clearly shown to us how important it is to have flexible and tailor-made solutions at the ready for our customers,” said the DPMA President and added: “By providing the option to participate in proceedings and hearings, and give evidence online via video conferencing, we are expanding our e-government services in keeping with our mission statement as a digital service authority.”

The Second Patent Law Modernisation Act will also create uniform rules on public holidays. In the future, all public holidays applicable at at least one of the DPMA locations will be recognised for the purpose of extending a time limit. As the DPMA locations are in different federal German Länder, different public holidays are applicable there.

Another legislative amendment takes into account a long-standing request of the applicant community: The period for international applications (PCT applications) to enter the national phase at the DPMA as designated office or elected office will be extended from 30 to 31 months. DPMA President Rudloff-Schäffer said that experience had shown that many applicants made full use of the period for entry into the national phase and that a long period of decision-making was very important, especially in the PCT area, in order to assess the chances of success of a patent application entering the national phase, look for possible investors for marketing the invention or prepare formal steps.

The three amendments mentioned above will enter into force on 1 May 2022. The DPMA will first establish the necessary technical infrastructure for participation in proceedings and hearings, and giving evidence by video conferencing.

Furthermore, on 1 May 2022, the annual fees for supplementary protection certificates will be raised and trade mark law will be brought into line with the current legal situation of the Madrid system for international trade mark protection.

The main purpose of further amendments and new provisions in the IP Acts, which have already entered into force on 18 August 2021, pursuant to Article 13(1) of the Second Patent Law Modernisation Act, is to simplify and clarify procedures.

The German Patent and Trade Mark Office

Inventiveness and creativity need effective protection. The DPMA is the German centre of expertise for all intellectual property rights – patents, utility models, trade marks and designs. As the largest national patent office in Europe and the fifth largest national patent office in the world, our office stands for the future of Germany as a country of inventors in a globalised economy. Its staff of just under 2,800 at three locations – Munich, Jena and Berlin – provide services to inventors and companies. They implement federal innovation strategies and develop the national, European and international IP systems further.”

“INPI started the process that will lead to the creation of a database, expected to be available in 2022, of about 3,000 historical patents signed by Presidents at the beginning of the Republic – many of them are centenary and some dates back to the 19th century.

The first step of this process is the diagnosis of the archival situation of the collection, to be made by the company that will perform the service at INPI as a donation, with no cost to the Institute. This service donation model is provided for in Decree No. 9,764/2019 and was approved by the Federal Government.

After the diagnosis, the company will process and digitalize the archive and make the documents available in a safe digital environment. Therefore, over the next year, INPI will provide access to the collection to society as a whole.”