Bulletin - IP Updates

Weekly Patent Update – Sept 2021 (1 of 3)

JURISDICTION: China
CHANGE: IP in China

“Information to help you protect, manage and enforce your intellectual property (IP) rights in?China.

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

Please note that the page relates to mainland China only; Hong Kong has a separate IP system.

The China IP Attaché team based in Beijing and Shanghai is also available to support UK businesses in navigating the Chinese system.

The China National Intellectual Property Administration (CNIPA) is the authority for IP rights including patents, designs, trade marks and geographic indications.

The National Copyright Administration of China (NCAC) is the authority for copyright.

Trade marks

The Chinese trade mark system is similar to the UK’s. Trade marks protect symbols, colours or other devices used to identify a business’ products or services. A trade mark is valid for ten years, then may be renewed indefinitely for further ten-year periods.

To protect a trade mark in China you have two options:

  1. Apply yourself or through a representative (e.g. a trade mark agent) directly to the CNIPA. On average it takes 7-8 months for a trade mark to be granted.
  2. Make an international trade mark application and select China as a designated country. This can reduce the cost and effort of applying for trade marks in multiple countries, but will take longer than applying direct to CNIPA. More information on international trade mark can be found in the protecting your trade mark abroad page.

Good to know

You will need to consider whether to register in Chinese characters and pinyin (the Romanised alphabet).

China has a systemic problem with ‘bad-faith’ trade marks – see the relevant factsheet in the ‘More Information’ section for further support.

Patents

Like in the UK, patents for inventions can be protected for up to 20 years in China. China also provides protection for utility models (for up to 10 years) and design patents (for up to 15 years). Utility models are sometimes called “mini-patents” and require a lower level of inventiveness. Design patents protect the look of a products and are much like the UK’s registered design rights. All patent rights in China are subject to the payment of annual fees after they’ve been granted.

To protect your innovation with a patent in China you have two options:

  1. Apply yourself, or (recommended) through a representative (e.g. a patent agent), directly to the CNIPA.
  2. For inventions and utility models, you can also apply under the terms of the Patent Cooperation Treaty (PCT), which is usually easier and quicker.

Good to know

China operates a ‘first to file’ principle. If two people apply for a patent on an identical invention, the first one to file the application will be awarded the patent. Ensure that your patent application is translated accurately into Chinese when filing in China. Submission of faulty translations could make it harder to get your patent granted or enforce it in the future.

China allows you to apply for both invention and utility model patents for the same invention. You might want to consider filing an invention patent and a utility model patent simultaneously for the same subject matter. Utility models are cheaper to apply for and often quicker to get granted.

Designs

Designs are covered by the Chinese Patent Law with protection for a maximum of 15 years.

To protect the appearance, shape or configuration of your product, you can apply for a design patent yourself, or (recommended) through a representative (e.g. a patent agent), directly to the CNIPA.

Good to know

As of 1 June 2021, China has introduced partial design protection though until the change is fully implemented applications can only be made in paper form or offline.

Copyright

China’s copyright framework provides all of the basic protections required by international law. Copyright owners do get automatic protection through Chinese law. However, it is recommended that copyrighted work is filed (known as ‘copyright recordal’) at the Copyright Protection Centre of China for a fee. Copyright recordal is voluntary but helps to provide evidence of copyright ownership before a court or relevant enforcement authority.

Good to know

For software, parts of source code may be redacted (obscured) in the copyright recordal to protect trade secrets.

Enforcing your rights

The main options for enforcing your IP rights in China include administrative action, customs seizure and civil litigation. The State may prosecute offenders under the Criminal Law for several types of severe infringement.

Administrative action – the first step is to file a complaint with the local office of the appropriate administrative organisation. Trade mark and counterfeiting cases are often straightforward, especially where the infringement itself is unambiguous. For those involving patents and copyrights, however, the administrative authorities’ enforcement powers are less clear-cut. You will also need to collect evidence in order to trigger a raid.

Civil litigation – an action may be started in a local court. There are several advantages to this, including the deterrent effect of a high-profile court case and the potential for the award of damages. However, civil cases usually mean a longer timescale and greater bureaucracy.

The customs system in China is unusual for its ability to intercept fakes on export as well as import. China Customs relies on the intelligence it receives about illegal shipments. You can help them by pre-filing recordal of your IP rights with Customs, and passing on the names of known counterfeiters, routes and the details of genuine goods.

More information

The IPO provides more specific information on registering and protecting your IP in China.

Visit the exporting to China pages for more information about doing business in China.

The China Britain Business Council (CBBC) offers intellectual property protection advice, enforcement support and access to IP professionals, to businesses entering and growing in the China market.”

SOURCE: UKIPO
IMPLEMENTATION DATE: 31 Aug 2021

JURISDICTION: Brazil
CHANGE: IP in Brazil

“Information to help you protect, manage and enforce your intellectual property (IP) rights in Brazil.

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

If you plan to do business in Brazil, or if you are already trading there, it is essential to know how to manage and enforce your IP as private property rights.

British businesses looking for access to intellectual property advice and support should contact our Brazil IP Attaché, based in the Consulate General, Sao Paulo.

The National Institute of Industrial Property (INPI) is the body responsible for operating the patent, utility model, industrial design and trade mark system in Brazil.

The Copyright Office of the National Library is the main registration authority of copyright.

The information on these sites, however, is predominately in Portuguese.

Trade marks

The Brazilian trade mark system is similar to the UK’s. Trade marks protect symbols, colours or other devices used to identify a business’s products or services. A trade mark is valid for ten years, then may be renewed indefinitely for further ten-year periods.

To protect a trade mark in Brazil you have two options:

  1. Apply through a representative (e.g. a trade mark attorney) directly to INPI. Any applicant from outside Brazil must apply through a qualified attorney.
  2. Make an international trade mark application and select Brazil as a designated country. The international application route can be quicker in Brazil as it imposes an 18 month deadline to evaluate your request. More information on international trade mark can be found in the international trade mark protection page.

Good to know

Documents submitted to INPI must be in Portuguese or provide a translation within 60 days.

Patents

Like in the UK, patents for inventions can be protected for up to 20 years in Brazil. Brazil also provides protection for utility models for up to 15 years. Utility models are sometimes called “mini-patents” and require a lower level of inventiveness. All patent rights in Brazil are subject to the payment of annual fees after they’ve been granted.

To protect your innovation with a patent in Brazil you have two options:

  1. File an application through a representative (e.g. a patent agent) directly to INPI.
  2. File an international patent application and select Brazil as a designated country. This can reduce the cost and effort of applying for patents in multiple countries. More information on international patents can be found in the international patent protection page.

Good to know

Brazil operates a ‘first to file’ principle. If two people apply for a patent on an identical invention, the first one to file the application will be awarded the patent.

Ensure that your patent application is translated accurately into Portuguese when filing in Brazil.

INPI currently has a large backlog of patent applications, this can lead to significant delays in granting patents.

Designs

In Brazil, you can protect the appearance, shape or configuration of your product by applying for an industrial design right at INPI. If your application meets the legal requirements (for novelty, originality and is able to be reproduced at scale), it will be registered immediately.

Good to know

The registration for an industrial design is valid for 10 years from the filing date and can be extended for three consecutive five-year periods.

Copyright

As in the UK, copyright is an automatic right under Brazilian law.

Copyright in Brazil protects original artistic, literary and scientific expressions, text, music, works of art such as paintings and sculptures, as well as technological works, for example, computer programs and electronic databases.

As a general rule, the Copyright Law sets the duration of economic rights for a period of 70 years counted from 1 January of the year following the author’s death.

Good to know

Although protection is automatic, you may want to register your work with the Copyright Office of the National Library in Brazil. Registration is voluntary but helps to provide evidence of copyright ownership before a court or relevant enforcement authority.?

Enforcing your rights

If you believe that someone is using or benefitting from your IP rights without your consent, it is advisable to seek legal advice at an early stage.

Issues with IP infringement can often be dealt with directly with the alleged infringer. For example, using mediation, ‘cease and desist’ letters or through a licensing arrangement. If you do choose to take legal action, there are two main levels at which IP rights may be enforced in Brazil:

(a) Civil action – a legal expert will be able to help you navigate the court system and build a civil case against someone infringing your IP rights. You may be able to use this route to stop the person or business using your IP and seek compensation for damages. Brazil has no specialist IP courts, so ordinary civil courts deal with IP cases.

(b) Criminal prosecution – some infringement actions may also constitute a criminal offense under Brazilian law. A criminal complaint must be preceded by a search and seizure action, which aims to collect evidence rather than halt the infringement. You may wish to seek legal advice for further information on the process.

More information

The IPO provides more specific information on registering and protecting your IP in Brazil.

Visit these pages for more information about doing business in Brazil and to report a market access barrier on IP in Brazil. “

SOURCE: UKIPO
IMPLEMENTATION DATE: 31 Aug 2021

JURISDICTION: China
CHANGE: IPR Protection Centers Expand the Work Related to Rapid Patent Confirmation

“To further strengthen the one-stop intellectual property rights (IPR) protection services of IPR protection centers covering rapid patent examination, confirmation, and protection, and implement the requirements of the Leading Party Members’ Group of the China National Intellectual Property Administration (CNIPA) of the whole-chain expansion from rapid examination to invalidation, reexamination, confirmation, and protection, CNIPA recently launched a pilot project of the multi-mode trial of patent reexamination and invalidation cases to promote the expansion of rapid patent rights confirmation.

China (Beijing), China (Pudong), China (Nanjing), and China (Zhejiang) Intellectual Property Protection Centers will undertake the pilot work. During the one-year pilot period, prioritized examination channels for patent reexamination and invalidation cases will be opened, and judicial hearings will be conducted via remote video links for invalidation cases. In addition, efforts will be made to promote the joint trial of patent confirmation cases and administrative adjudication cases.

Steady efforts have been made to advance the rapid patent confirmation, a key business of IPR protection centers to be expanded. In the early stage, an evaluation report pilot of utility model and design patent rights has been carried out in some IPR protection centers. Next, CNIPA will further expand the business functions of IPR protection centers, reinforce the whole-chain protection capabilities, and step up efforts to build a versatile talent team, so as to better support the creation of a favorable business environment and serve the high-quality economic development.(Translated from CNIPA Website Chinese Version)”

SOURCE: CNIPA
IMPLEMENTATION DATE: 31 Aug 2021

JURISDICTION: India, Japan
CHANGE: JPO Further Increases Its Competence to Act in the Capacity as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for PCT International Applications

“Updates

The JPO to act as a competent International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for India.

1. Purpose:

With an increasing number of Japanese companies creating their R&D centers in emerging markets such as ASEAN member states, their intellectual property activities in these countries are becoming more important than ever. As a result, the need is rising for Japanese businesses to ensure that their inventions are appropriately acquired and protected as patent rights in these countries.

The JPO has held international discussions to increase its competency to act as an ISA and IPEA for PCT applications received by IP offices of other countries or filed with the International Bureau (IB) by such countries’ nationals or residents, so that it could contribute to facilitating the development of global business activities.

2. Usage and JPO’s competence (As of July 2021)

When choosing the JPO as ISA:

When applicants file their applications with IP offices, which act as receiving Offices listed below, or the IB, they are required to indicate “the Japan Patent Office (ISA/JP)” in Box No. VII International Searching Authority in their PCT requests (Form PCT/RO/101).

When choosing the JPO as IPEA:

Applicants must file their PCT demands (Form PCT/IPEA/401) directly with the JPO. In this connection, however, such requests are limited only to PCT applications for which the JPO prepares or has prepared international search reports.

Receiving Offices/Countries Languages accepted by the receiving Office Languages where the JPO is a competent?ISA and IPEA Procedures for filing with each office acting as the receiving Office (To WIPO website)
International Bureau of the World Intellectual Property Organization (IB) Any language Depending on the residence and nationality of the applicant <PDF>( External link )
Japan Patent Office (JPO) Japanese or English Japanese or English <PDF>( External link )
Korean Intellectual Property Office (KIPO) Japanese, Korean or English Japanese <PDF>( External link )
Intellectual Property Office of the Philippines (IPOPHL) English or Filipino English <PDF>( External link )
Department of Intellectual Property (DIP) (Thailand) English or Thai English <PDF>( External link )
Intellectual Property Office of Viet Nam (IP VIET NAM) English or Russian English <PDF>( External link )
Intellectual Property Office of Singapore (IPOS) English English <PDF>( External link )
Intellectual Property Corporation of Malaysia (MyIPO) English English <PDF>( External link )
Directorate General of Intellectual Property
(DGIP)(Indonesia)
English English <PDF>( External link )
United States Patent and Trademark Office (USPTO) English English <PDF>( External link )
Brunei Darussalam Intellectual Property Office (BruIPO) English English <PDF>( External link )
Lao People’s Democratic Republic (Lao PDR) * English <PDF>( External link )
Department of Industrial Property (DIP) , Ministry of Industry, Science, Technology and Innovation (MISTI)?Cambodia? English or Khmer English <PDF>( External link )
Indian Patent Office(IPO) English or Hindi English <PDF>( External link )

*: The JPO acts as a competent ISA and IPEA in respect of international applications filed at the IB by nationals or residents of the Lao PDR because its national IP office is not competent as a receiving Office. The applicants can refer to the procedure for filing with the IB acting as the receiving Office.

With regard to competence to act as an ISA and IPEA for PCT international applications worldwide, please refer to the WIPO website.( External link )

Date of update Updated content Note
Jul. 1, 2021 The JPO to act as a competent International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for India Started on:
Jul. 1,2021
Dec. 8, 2016 The JPO to act as a competent International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for Kingdom of Cambodia Started on:
Dec. 8, 2016
Dec. 21, 2015 The JPO to act as a competent International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for Lao People’s Democratic Republic (Press Release on the METI Web Site, Japanese page only) Started on:
Jan. 1, 2016
Sep. 29, 2015 The JPO to act as a competent International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for Brunei Darussalam Started on:
Oct. 1, 2015
May 22, 2015 JPO to Commence the Collaborative Search with the USPTO Started on:
Jul. 1, 2015

SOURCE: JPO
IMPLEMENTATION DATE: 01 Jul 2021

JURISDICTION: China, Japan
CHANGE: JPO-CNIPA Examiner Exchange Program Held

“From July 26 to 30, 2021, *Examiner Exchange Program was held between the Japan Patent Office (JPO) and the China National Intellectual Property Administration (CNIPA).

For more than 10 years, the JPO and the CNIPA have held the program by dispatching patent examiners to each other’s offices, and this time the program was held online as last year. Three patent examiners from the JPO and four from the CNIPA participated in the program.

The participants deepened mutual understanding of examination practices between the two offices through the exchange of information on the utility model system in addition to the information on prior art document search methods, prior art search systems and the operation of examination standards in two technical fields(Cooling Equipment and Business-related Inventions).

The JPO will continue to cooperate on patent examination with the patent offices of other countries.

*Examiner Exchange Program is designed to foster a relationship of trust and deepen mutual understanding between the examiners of the JPO and the examiners of overseas IP offices through discussions on each other’s prior art search methods and examination practices, and to promote mutual use of prior art search results and examination results.”

SOURCE: JPO
IMPLEMENTATION DATE: 31 Aug 2021

JURISDICTION: Japan
CHANGE: Oral Proceedings for Trials/ Appeals using Video-Conferencing System

“The revised Patent and other Acts introduce online oral hearing in trials/appeals.

In trials for invalidation of patents, for instance, oral proceedings have been conducted while parties concerned appear in the Trial Court on our premise. After the effective date of the revised article, however, the parties may attend via video conference at the discretion of the chief administrative judge, insofar as they participate within the confines of our country.

The renewed approach conforms with the recent trend of digitization and networking in socioeconomic activities and enables both parties’ oral allegations to be heard by the administrative judge panel even in the midst of pandemic like the COVID-19.

The amendment is scheduled to come into force in October. The Trial and Appeal Department (TAD) is proceeding with the preparations for the implementation!

SOURCE: JPO
IMPLEMENTATION DATE: 21 May 2021

JURISDICTION: United States of America
CHANGE: Transitioning to the Sponsorship Tool in Patent Center

“On September 15, 2021, the standalone Sponsorship Tool will no longer be available.

Please use the Sponsorship feature in Patent Center to view and manage support staff sponsorships for EFS-Web, Private PAIR, and Patent Center. Use your USPTO.gov account information to sign in to all filing systems. After signing in, you can access the sponsorship tool under the Manage > Sponsor Users menu option.

See our Patent Center Sponsorship Guide for more information.

If you have questions or need assistance, please contact the Patent Electronic Business Center at 866-217-9197 during their operating hours of 6 a.m. to midnight ET, Monday through Friday, or email ebc@uspto.gov

SOURCE: USPTO
IMPLEMENTATION DATE: 15 Sep 2021

JURISDICTION: European Patent Office
CHANGE: Decision of the Vice-President Legal and International Affairs of the European Patent Office (Directorate-General 5) dated 19 August 2021 concerning the conditions for participating in the user area pilot

“In accordance with Article 12 of the decision of the President of the European Patent Office (EPO) dated 11 March 2015 concerning the pilot project to introduce new means of electronic communication in EPO proceedings (OJ EPO 2015, A28) the user area pilot is launched. Pilot participants will receive notifications in the Mailbox, may submit procedural requests, perform other procedural acts and file accompanying documents in the web-based user area, subject to the applicable regulations of the European Patent Convention (EPC) and Patent Cooperation Treaty (PCT) and the provisions of this decision.

Article 1

Scope of the user area pilot

1. By logging into the user area, access to the following services is provided:

(a) electronic notification via the Mailbox,

(b) electronic filing, as specified in Article 5 below,

(c) viewing of the application portfolio,

(d) upon further announcement, further services.

2. The user area pilot will start with a number of functionalities within the services under Article 1(1) above. Upon further announcement, functionalities may be added.

3. The availability of services provided in the user area may be limited to specific categories of pilot participants. At the start of the pilot access to the Mailbox is available for professional representatives, legal practitioners (Article 134(8) EPC) and applicants who have their residence or place of business in an EPC Contracting State, provided they have activated an EPO Mailbox. At the start of the pilot viewing the application portfolio and the electronic filing services are available for European professional representatives.

Article 2

Start of the user area pilot

The user area pilot starts on 2 November 2021.

Article 3

Conditions for participation

Any user with a smart card and activated Mailbox may participate in the user area pilot upon registration and invitation by the EPO.[ 1 ]

Article 4

Electronic notification

1. Electronic notification is effected by electronic communication to the Mailbox. Pilot participants may access the Mailbox via the user area or through the existing Mailbox service.

2. Article 9 of the decision of the President of the European Patent Office (EPO) dated 11 March 2015 concerning the pilot project to introduce new means of electronic communication in EPO proceedings (OJ EPO 2015, A28) applies mutatis mutandis to electronic notification to the Mailbox and access via the user area.

Article 5

Electronic filing

1. Via the user area, pilot participants may perform procedural acts in reply to a communication from the EPO within a prescribed period (?tasks?), file procedural requests (?actions?) and submit accompanying documents. The list of pending tasks will be displayed in the task menu and will indicate the final date for performing each of them.

2. Any accompanying documents must be filed in PDF, TIFF, or DOCX format. Documents in PDF or TIFF format must comply with the definition of these formats provided in the Administrative Instructions under the PCT, Part 7 and Annex F[ 2 ]. Documents in DOCX format must comply with the specifications in the format definition published by the European Patent Office[ 3 ].

3. Procedural acts performed by pilot participants will be reflected in an electronic document automatically generated within the submission session.

4. The document referred to in Article 5(3) and any accompanying documents must be authenticated by the pilot participant by pressing the unique button foreseen for authentication and submission. The documents authenticated in such way are deemed to meet the legal requirement of signature.

5. The document referred to in Article 5(3) and any accompanying documents will be inserted into the file and will be made available for public file inspection according to Article 128 EPC.

(6) From the start of the pilot project, pilot participants will first only be able to reply to the communication about the intention to grant (Rule 71(3) EPC). This includes requests for correction of errors in the bibliographic data of the application following verification under Rule 71(5) EPC.

7. Upon further announcement, additional tasks and actions may be added, including but not limited to:

(a) the reply to a communication under Article 94(3) EPC,

(b) the reply to the extended European search report (Rule 70a EPC),

(c) submissions in preparation for oral proceedings during substantive examination (Rule 116 EPC),

(d) requests for correction or update of bibliographic data,

(e) requests for the registration of transfers of rights (Rule 22 EPC), and

(f) notices of withdrawal from representation.

8. The inclusion of a procedural act on the task menu is a service of the EPO. The pilot participants may not invoke the omission of a task.

9. Receipt of documents filed via the user area is acknowledged electronically by the EPO following successful submission. The acknowledgment of receipt is provided digitally signed by the EPO within the submission session.

10. The regulations concerning the electronic filing of documents apply mutatis mutandis to any filing in accordance with paragraph 1.[ 4 ]

Article 6

Viewing of the application portfolio

Viewing of the application portfolio in the user area allows European professional representatives to inspect the files in respect of the European patent applications and granted European patents for which they are appointed, including unpublished European patent applications, in accordance with Article 128 EPC and Rule 144 EPC. Access to the My Files service is unaffected by the participation in the user area pilot project.

Article 7

Formal and technical requirements

The formal and technical requirements to be complied with are provided in the user area and the accompanying documentation made available to the users.

Article 8

Existing methods of filing documents, notification and file inspection

Services within the user area pilot are without prejudice to the existing methods of filing documents, electronic notification and file inspection.

Article 9

Changes to the user area pilot project

Upon further announcement, the EPO may change the starting date of the user area pilot project, limit its scope or otherwise change it, in whole or in part, as well as discontinue it.

Done at Munich, 19 August 2021″

SOURCE: EPO
IMPLEMENTATION DATE: 02 Nov 2021

JURISDICTION: European Patent Office
CHANGE: Notice from the European Patent Office dated 19 August 2021 concerning the user area pilot project

I. Introduction

1. Under its Strategic Plan 2023 the EPO is working towards a digital transformation that will deliver new online tools to better address user needs. In particular, as part of Key initiative 3 under Goal 2 – Develop new online user engagement – the EPO is creating a web-based user area: a secure portal for registered users bringing several online services together in one place. It is designed to improve the exchange of digital information, simplify procedures and enable more direct interaction with the EPO.

2. The user area will provide a single point of access to a user’s patent application portfolio and to electronic notifications in EPO proceedings (Mailbox), along with a contemporary, simplified approach to making procedural submissions. It will offer an interface that is more user-friendly, intuitive and accessible to all kinds of users. Functionalities will be progressively added.

3. In view of these plans, a pilot project is being launched to gather user feedback, which will enable the EPO to refine the user area services before their general release. See also the decision of the Vice-President Legal and International Affairs (Directorate-General 5) of the European Patent Office dated 19 August 2021 concerning the user area pilot project.

4. The user area services are intended to eventually replace the My Files service and become the only point of access to Mailbox. Users will be given sufficient advance notice to prepare for these changes.

5. This notice provides further information on the user area pilot.

II. Services included in the pilot

Electronic notification

6. Almost all EPO correspondence in European proceedings can already be notified electronically. The access to Mailbox provided in the user area will incorporate and improve the functionalities of the current access to Mailbox. Pilot participants will be able to access Mailbox via the user area or in the existing way. Electronic notification via Mailbox will therefore cover the same decisions, summonses, notices and communications, regardless of how it is accessed. A list of communications notified electronically via Mailbox is available on the EPO website.[ 1 ]

Viewing of the application portfolio

7. Viewing of the application portfolio will incorporate the functionalities of the current My Files service as well as offering improvements, such as a contemporary design and a simpler user experience and interface. The portfolio will provide an overview of, and enable inspection of the files belonging to, the patent applications and granted patents for which the European professional representative accessing the service is appointed, regardless of the stage of the proceedings before the EPO.

8. When viewing the content of the electronic file, pilot participants will be able to see documents in the original data format in which they were filed. This means for instance that, if these documents in their original data format contain parts in colour, these parts will be displayed in colour in the user area. Functionalities may be added as the pilot progresses. Initially, viewing of the application portfolio will be available to European professional representatives only. Further categories of users may be added over the course of the pilot. In future, international agents and applicants may also be able to work in the user area.

Electronic filing

9. Pilot participants will be able to perform procedural acts within the prescribed period in reply to a communication from the EPO (“tasks”); file procedural requests which are not subject to a period and not in reply to a communication from the EPO (“actions”); and submit documents accompanying these tasks and actions. Initially, pilot participants will only be able to reply to the communication about the intention to grant (Rule 71(3) EPC). Actions and further tasks may be added as the pilot progresses. They will be announced in a dedicated section of the EPO website[ 2 ] and communicated to pilot participants before being added.

10. Unlike other EPO filing tools, the electronic filing service in the user area will not be form- and document-based. It will enable interaction focused on content, controlled by an electronic workflow. This new approach will make it simpler for participants to perform procedural acts while reducing the risk of error. It will also enable the EPO to capture and process all submissions as structured data. Users will be guided through the submission process with the aid of relevant procedural information.

11. The electronic filing service is a complementary service offered to the pilot participants. Other electronic filing tools will remain available to all users.

12. Communications from the EPO to be replied to within a prescribed period will be both notified via Mailbox and reflected in a menu containing the tasks to be performed by the pilot participant that is displayed in the user area. The final date for completing a specific task will be indicated. This date will reflect the ten-day rule under Rule 126(2) EPC and the closure days of the EPO filing offices under Rule 134(1) EPC.

13. In the exceptional situation where a task is missing from the task menu but the corresponding EPO communication has been validly notified via Mailbox, pilot participants should file their reply using one of the existing means of filing to avoid any loss of rights. In addition, any subsequent, complementary submissions to be made during the period for a procedural act – for example corrections to the amendments submitted in reply to the communication under Rule 71(3) EPC – will also have to be filed using other means during the pilot.

14. A task will be automatically removed from the task menu once it has been performed or – if the task is not performed by the date indicated (i.e. within the period to be observed) – once a notice of loss of rights under Rule 112(1) EPC has been issued. See also point 17 below.

15. When performing tasks or actions, pilot participants will be able to upload accompanying documents as attachments – for example grounds in support of a request or amendments to the application documents. The admissible formats for these attachments will be PDF, DOCX and TIFF.

16. As a final step in the filing process, pilot participants will be invited to confirm the filing on the basis of an automatically generated document reproducing the electronic filing in its entirety (i.e. a request or reply to an EPO communication together with any accompanying documents). Upon confirmation of the submission, it will immediately be added to the file of the corresponding patent application or patent and made available for public inspection in accordance with Article 128 EPC.

17. As far as replying to the communication about the intention to grant in the user area is concerned, pilot participants will be able to perform any acts, submit any requests and act on any follow-up communication directly linked to that reply. For example they will be able to submit a translation of the claims, file amendments to the text proposed for grant or request the correction or update of the application’s bibliographic data. If they fail to observe the four-month period for reply, they will be able to file a request for further processing and for a decision under Rule 112(2) EPC until the corresponding notice of loss of rights under Rule 112(1) EPC has been dispatched. Once this notice has been issued and notified via Mailbox, any request for further processing or a decision must be filed using other means of filing (see also points 13 and 14 above).

18. The further tasks that may be added as the pilot progresses include the reply to the extended European search report (Rule 70a EPC), the reply to a communication in examination under Article 94(3) EPC and submissions in preparation for oral proceedings in examination (Rule 116 EPC). The actions that may be added include requesting the correction or update of an application’s bibliographic data, requesting the registration of a transfer of rights (Rule 22 EPC) and giving notice of withdrawal from representation.

19. During the pilot, fees can be paid via one of the existing online tools (Central Fee Payment, Online Filing or Online Fee Payment). Where a procedural act requires the payment of a fee, pilot participants will be informed accordingly. As an intermediate solution, and to facilitate payment, a link to Central Fee Payment will be displayed after confirmation of the submission. For information on Central Fee Payment, see the notice from the European Patent Office dated 13 July 2021 concerning Central Fee Payment (OJ EPO 2021, A61).

III. Formal and technical requirements

20. The user area has been designed to be as intuitive as possible by including contextual help and information. The EPO website will provide more information on the formal and technical requirements to be met while using the user area services.

IV. Other EPO services

21. Pilot participants may continue to use My Files and access Mailbox in the existing way after the launch of the user area pilot. The other EPO online filing services remain unaffected by the pilot.

V. Duration of the pilot and next steps

22. The pilot will commence on 2 November 2021 and is planned to last for at least six months. Its scope may be changed or limited at any time. The EPO will use the feedback received from the pilot participants to refine the services offered in the user area. Any changes to the pilot under Article 9 of the decision of the Vice-President Legal and International Affairs (Directorate-General 5) of the European Patent Office dated 19 August 2021 concerning the user area pilot project will be announced on the EPO website.[ 3 ]

SOURCE: EPO
IMPLEMENTATION DATE: 02 Nov 2021

JURISDICTION: Israel
CHANGE: Updated presentation summarizing the study of patent opposition proceedings

The following update has been machine-translated from Hebrew.

“We would like to update that today an updated version of the presentation summarizing the study of the patent opposition proceedings conducted by the Authority, as well as the table of data collected in the study, was uploaded to the Authority’s website.

The new version includes bug fixes that fell in the data table and presentation.

The main corrections made in the presentation are in slides relating to the duration of the proceedings and in slides summarizing the results of the proceedings.

The updated files are available on the Authority’s website..”

SOURCE: ILPO
IMPLEMENTATION DATE: 26 Aug 2021

JURISDICTION: United Kingdom
CHANGE: UK IPO launches new IP support scheme

The government will pay up to £5,000 to help SMEs protect and commercialise their IP as part of a new strategy to support a post-pandemic recovery.

Available to SMEs and innovative businesses, the IP Access grants can be put towards a number of costs including professional fees for IP services and management of IP assets.

The scheme intends to provide businesses with the confidence and financial support to invest in their IP, allowing them to develop and grow securely.

This is an extension of the UK IPO IP Audits Plus programme. It provides businesses with additional funding to take forward some of the recommendations provided within the IP audit report.

Companies that have completed a part-funded IP audit between April 2020 and March 2022 with an IP audit plus partner are eligible to apply. This money can be used to cover service costs related to:

  • The management of IP assets
  • Commercialisation of IP
  • Licensing and franchising agreements
  • IP insurance
  • IP valuation
  • Tax relief advice
  • Professional fees for IP services in the UK and abroad

It cannot be used for the official fees for filing trade mark, registered design or patent applications.

Applications for IP Access are now open and will remain open until 12pm on the 31st March 2022.

For more information, please contact ipaccess@ipo.gov.uk

SOURCE: CITMA
IMPLEMENTATION DATE: 31 Mar 2022

JURISDICTION: Czechia
CHANGE: IPO CZ HAS STARTED THE TRANSFER OF ITS EMAIL ADDRESSES

“IPO CZ has started the transfer of its email addresses to a new domain, upv.gov.cz. Clients may receive email messages from addresses in that domain. The change will be gradual until the end of 2021.

We would like to ask the public to primarily communicate with the Office using the domain upv.cz.”

SOURCE: IPO CZ
IMPLEMENTATION DATE: 31 Aug 2021

JURISDICTION: Guatemala
CHANGE: Electronic Window of the Intellectual Property Registry -VERPI- from August 20, 2021

“The Intellectual Property Registry makes available the new electronic notification service, through the electronic window of the VERPI Intellectual Property Registry.

The purpose is to facilitate and expedite communication between the user and the Intellectual Property Registry.

With this tool you can notify from any device connected to the internet and from anywhere. You can register at ventanilla.rpi.gob.gt .

This is another advance in the line to achieve digital transformation in intellectual property services for the benefit of users of this registry.”

SOURCE: RPI
IMPLEMENTATION DATE: 20 Aug 2021

JURISDICTION: Spain
CHANGE: The SPTO signs four new collaboration agreements on industrial property with the following platforms and technological associations: AIMPLAS, PLATECMA, PTECO2 and SOLAR CONCENTRA – PROTERMOSOLAR

The following update has been translated from Spanish.

“The Spanish Patent and Trademark Office OA (OEPM) has recently signed four collaboration agreements, each lasting four years, with the following platforms and technological associations:

  • Research Association of the Technological Institute of Plastic ( AIMPLAS )
  • Spanish Technological Platform for Manufacturing Sectors ( PLATECMA )
  • Association of the Spanish Technological Platform of the CO? ( PTECO2 )
  • Technological Platform for Concentrated Solar Energy ( Solar Concentra ) and Spanish Association for the Promotion of the Thermosolar Industry ( PROTERMOSOLAR )

The purpose of these agreements is to promote the competitiveness of Spanish industry in the field of innovation and its protection through Industrial Property (hereinafter, IP). For this, the corresponding resolutions contemplate carrying out joint activities, such as training sessions on IP rights, which aim to publicize the use of the technological information services offered by the SPTO, the mechanisms for the protection of results research and technological development, in addition to offering each Platform the necessary support in the protection of its intangible assets in order to facilitate, promote and stimulate the knowledge and use of IP rights.

This collaboration with AIMPLAS, PLATECMA, PTECO2, Solar Concentra and PROTERMOSOLAR will allow to boost the competitiveness of the Spanish industry in the field of innovation and protection of the same in the corresponding sectors, and to establish bidirectional channels of institutional communication between the SPTO and each Platform specific.

On the other hand, the different platforms and associations that sign these agreements undertake to disseminate the importance and usefulness of IP, as well as its observance and the need to combat counterfeiting within their programs of activities.

The agreements thus signed are a cooperation tool for the promotion of IP and its benefits in the scientific, economic and social development of our country.

More information:
Resolution of the OEPM-AIMPLAS agreement published on July 3, 2021
Resolution of the OEPM-PLATECMA agreement published on July 5 , 2021 Resolution of the OEPM-PTECO2
agreement published on July 5, 2021
Resolution of the OEPM-SOLAR CONCENTRA agreement and PROTERMOSOLAR published on July 5, 2021

SOURCE: SPTO
IMPLEMENTATION DATE: 31 Aug 2021

JURISDICTION: Switzerland
CHANGE: Modernising the patent examination procedure

“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.

You can find further information in the Federal Council’s media release and the FAQs on our website.”

SOURCE: IGE
IMPLEMENTATION DATE: 31 Aug 2021
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