Bulletin - IP Updates

Weekly Patent Update – Sept 2021 (2 of 3)

JURISDICTION: European Patent Office
CHANGE: Improved availability of citations originating from the examination phase of EP applications

“Citation data is an important source of information for patent searchers. It allows them to find publications that are closely related to patent documents they are interested in. Citation data includes both citations in search reports as well as those occurring in other stages of the application procedure and in the post-grant stage, e.g. citations originating from an opposition procedure.

Until recently, citation data originating from the examination procedure of EP applications was linked in the relevant citation database solely to B1 publications. For this reason, in many of the EPO’s patent information tools and services, citation information from the examination phase was only available in cases where the EP application had led to a patent. So far, this data has been available only via the online file inspection (section “All documents”) in the European Patent Register.

Recognising the demand from users for this important information to be made available as soon as possible, the EPO has adapted its internal data workflows so that citations occurring during the examination stage for EP applications published as of May 2021 will be available in the EPO’s patent information products and services, irrespective of whether or not the EP application leads to a patent. These citations are now public and in the data associated with A1/A2/A4 document kind codes. Users can access this data in the EPO patent information products such as Espacenet, Global Patent Index, PATSTAT, the European Patent Register (sections “Citations” and “All documents”), Open Patent Services as well as the EPO worldwide bibliographic database (DOCDB).

A 30-day delay has been introduced between the loading of these citations to the citation database and their availability to the public. This delay, which can be extended at the request of the applicant or examiner, allows time for the necessary procedural steps to be completed.

For the time being, no changes are foreseen for citations connected to publications prior to May 2021. They will continue to be available in the EPO’s patent information products and services only in cases where the EP application led to a patent.

If you are interested in the coverage of citations at the EPO, have a look at the following tables:


JURISDICTION: United Kingdom
CHANGE: UK IPO lays out ‘transformation’ plans

“Vision is to provide ‘world’s best IP environment’; aims to have ‘fast, flexible and high-quality’ services. Catherine White of Intellectual Property Magazine, reports from CIPA Congress 2021.

Over the next four to five years, the UK Intellectual Property Office (UK IPO) is looking to improve public access to a delivery of its IP services for everyone, with a “vision is to provide the world’s best IP environment”, said the office’s director of transformation Andy Bartlett.

Speaking on the second day of the Charted Institute of Patent Attorneys virtual congress 2021, Bartlett stated that it is the office’s aim to deliver “fast, flexible, high-quality services” as well as “removing barriers to innovation and making the IP system much more accessible and useful to people”.

Bartlett, who has worked in the UK IPO for over 30 years, explained that the office wants to ensure that it does everything it can to “harness the power of IP, to incentivise investment, safeguarding assets, and enable knowledge sharing.

“We think through the improved use of IP, we will enable the UK to forge an unbeatable competitive advantage, building foundations for sustainable economic growth. And that is what government is really concerned with.”

Turning to the office’s transformation programme over the next five years, Bartlett laid out its vision and objectives.

He explained, “We’re not looking just to digitise current processes, our system or services, we’re looking to completely transform what we do, the way we do it, and the value that we add as an organisation to Britain’s economy. So we definitely want to transform our services, our data, and empower our people.”

Bartlett commented, “We want our services to be fast, flexible, high-quality, using a seamless experience across all our different rights. And they’ll be accessed by authenticating customer accounts, this is a new thing for UK IPO… we want our services to be much more adaptable, so that we can respond much more quickly to future needs.

“We’re also looking to reduce bureaucracy, increasing efficiency for customers and our ourselves and doing things like ironing out anomalies between our different services in particular across patents, trademarks and designs, when there’s not a good reason for there to be differences. We’re also really keen to deliver the best tools for our staff. We always say that our staff and their knowledge and expertise is one of our biggest assets that we have. And we need to make sure that they’ve got the right tools available to them, to help them to deliver to our customers.”

He noted that the UK IPO wants to improve the way it delivers its service to customers, such as delivering a single integrated system for all IP rights.

“Customer facing services should be much more joined up so people who need to do transactions with us across all of our rights, patents, trademarks and designs will be able to do so by a single system… a single online UK IPO account… [and we will make] as many of those services as self-service as we can.

“So you don’t have to wait for us to process a transaction unless necessary. And we want all our services to be available digitally. We want to offer paper routes to the customers that need that, but we want everything to be available digitally, making everything quicker and faster for us to be able to deliver.”

Bartlett explained that because the scheme is a “complex transformation and a different way of working”, it will take a number of years to come into fruition.

“We need to migrate all that information and those rights across from our existing systems across onto the new world. The idea is then that once we deploy patents, we will then deploy trademarks and then subsequently designs onto those systems.

“[It will] include doing things like deploying AI and other new technologies for new ways of working to put that all in place going forward, and that becomes the norm for the UK IPO. So, it will take us four to five years to complete that journey in its entirety, it is not as quick as we would like but it does recognise the complexities and that we want to make sure that we get this right.””


JURISDICTION: European Patent Office
CHANGE: Decommissioning of EPO’s filing service CMS with effect from 1 January 2022

“CMS will be replaced by Online Filing 2.0. with effect from 1 January 2022.

Read more about decommissioning CMS

The online filing (CMS) application is now available for filing EP Form 1001 (EP direct), EP Form 1200 (Euro-PCT), PCT/RO/101 and EP Form 1038 (subsequent actions for all EP and PCT procedures, including PCT Chapter II demand, documents in respect of appeal proceedings and notice of opposition (PDF only)).

Accessible from most browsers, online filing (CMS) stores your data and documents on a secure network hosted by the EPO.

Because the application is web-based, there is no software to install — except for the smart card software that allows you to log on in a secure environment. Your smart card must first be activated.”


JURISDICTION: United States of America
CHANGE: USPTO announces extension to the Motion to Amend pilot program

“The United States Patent and Trademark Office (USPTO) today announced plans for the Patent Trial and Appeal Board (PTAB) to extend the Motion to Amend (MTA) pilot program. This program provides additional options for a patent owner who files an MTA in a trial proceeding under the America Invents Act (AIA).

The MTA pilot program will run until September 16, 2022. The USPTO may extend the program (with or without modification) on either a temporary or a permanent basis, or may discontinue the program after that date.

The USPTO has presented preliminary results of the MTA pilot program and continues to track data related to MTAs. The most recent information and statistics related to MTAs are available on the USPTO’s website.

The full text of the notice is available in the Federal Register. Stay current with the USPTO by subscribing to receive email updates via our Subscription Center.”


CHANGE: Update to PCT Applicant’s Guide – National Phase – National Chapter – Albania

Any items that have been updated are in bold.

“AL.07 ANNUAL FEES. The maintenance of the application is subject to the payment of annual fees which are due each year on the anniversary of the international filing date, starting from the first year after the grant of the patent, except where the time limit under PCT Article 22 or 39(1) expires later, in which case the latter time limit applies. Annual fees not paid within the applicable time limit may still be paid within six months from the expiration of that time limit against payment of an additional fee (see Annex AL.I). This time period may be extended by two months by paying an additional fee to postpone the renewal deadline. If the renewal fee has not been paid within the applicable time limit, the Office, within two months from the end of the six-month deadline, notifies the applicant that he/she may postpone the six-month deadline by another two months. Notifications are made only to addresses in Albania.”


JURISDICTION: United Kingdom
CHANGE: One IPO Transformation: stepping up a gear

“Our One IPO Transformation project launched in April 2021. Here are the updates for our transformation activity since then.

We shared the first details of our One IPO Transformation Programme in April. Since then we’ve made good progress and are on track with our plans. From September we will be ramping up the pace further.

But first, if you’re new to our transformation plans, or need a reminder, the video below will bring you up to speed. You can also read our One IPO Transformation prospectus.

One IPO Transformation

Manage IP project commenced

We started work on the first of our transformation projects – Manage IP – in March. This is a single service where customers will be able to view and manage all their intellectual property (IP) in one place. They will also be able to change or update their personal information. As part of Manage IP we’re building the customer account, which is the gateway to the new services.

The ‘discovery’ phase

We started the Manage IP project off with the discovery phase where we interviewed different types of customers. This enabled us to understand what our customers need from the Manage IP service so we build the right thing. It also helped us to map out how our future process could work and create early blueprints for the new service. The discovery phase of this project is now complete.

Acting on the feedback: what did we learn?

Here are the important findings our customers told us in the ‘discovery’ phase:

  • different customers want to access IPO’s services in different ways. Some attorneys want to manage their IP through the IP software they already use. Others need to be able to delegate access to clients or colleagues and filter through large IP portfolios. Then there are the one-time IP filers who want it to be simple, quick and easy
  • in the customer accounts, simple changes, like changing your address, should happen automatically without further checks. More complex changes, such as changing ownership of an IP right, should still need manual checks or approvals
  • we need to find a simple way for customers to link their existing IP to their new IPO account. This is a process we have called ‘claim my right’. People don’t want to enter lots of information about their rights when they register, so we’re thinking about how this could work

What’s next for Manage IP?

We are stepping our transformation programme up a gear. For Manage IP we’re moving to the ‘Alpha’ phase, where we’ll start building and testing the parts of the service that are most challenging. We will:

  • build prototypes to test and trial features of the new service. For example, we’ll build an end-to-end customer transaction, like changing an address. We’ll also test the customer account to work out what information different customers need to see. Finally we’ll look at how the process of giving access to others (eg a paralegal or a client) could work
  • begin to test ideas for how we’ll marry up customer accounts with the IP they own. We don’t currently have all the data we need to automate this fully. We’re looking how we can do this without placing too much of a burden on customers
  • explore how we can use Application Programming Interfaces (APIs). These would allow customers to send data to IPO via their own IP management software

The start of the Secure IP project

In September we also started our second transformation project – Secure IP. Secure IP is where customers can do everything involved in securing their IP rights. This includes applying for it, examination and registration or granting of IP rights.

As with the Manage IP project, we will be starting this with a discovery phase. This will allow us to understand what customers need from this part of the service.

Next steps: we need your help

To ensure our new services meet your needs, we need people to help us with our user research and testing. You can sign up to take part by emailing usertesting@ipo.gov.uk.

Keeping you updated

We expect to provide our next update around the turn of the year. By then, we should have some early prototypes of the Manage IP Service ready for testing. We look forward to moving up a gear and making quick progress over the next few months.

If you would like to receive regular updates on IPO’s Transformation project, please contact transformation@ipo.gov.uk.”


CHANGE: Electronic Filing and Processing of International Applications

Spanish Patent and Trademark Office 

The Spanish Patent and Trademark Office has notified the International Bureau that, with effect from 1 November 2021, it will no longer accept international applications filed in electronic form using the PCT-SAFE software. Consequently, as from that date, the only form of electronic filing available for applicants filing with the Spanish Patent and Trademark Office as receiving Office will be EPO Online Filing.”


CHANGE: AM Armenia (name of Office; location and mailing address; provisions of national law; types of protection; language of filing; criterion applied in respect of requests for restoration of the right of priority; fees)

“The name, location and mailing address of the Intellectual Property Agency of the Republic of Armenia have changed, as follows:

Name of Office: Mtavor Sepakanutyan Grasenyak Intellectual Property Office of the Republic of Armenia

Location and mailing address: Republic Square Government House 3 0010 Yerevan Armenia

There has also been a change to the provisions of the national law of Armenia concerning restrictions applicable to the filing of international applications with the Eurasian Patent Office (EAPO) or the International Bureau (IB) as receiving Office: the applicable provisions are available under the Law on Patents, Article 58.

Furthermore, there has been a change concerning the types of national protection available in Armenia via the PCT – with effect from 1 July 2021, patents and short-term patents are available, and utility models are no longer available. This updates the table of “Types of Protection Available via the PCT in PCT Contracting States” at:


The Office, in its capacity as receiving Office, has notified the IB that, since 1 July 2021, the Office accepts Russian2, in addition to English, as a language in which international applications and request forms may be filed (PCT Rule 12.1(a) and (c)).

The Office has notified the IB under PCT Rules 26bis.3(i) and 49ter.2(g) that, in its capacities as receiving Office and designated (or elected) Office, it applies the “unintentional” criterion instead of the “due care” criterion in respect of requests for restoration of the right of priority, with effect from 1 July 2021.

There has also been a change concerning the claim fee component of the national filing fee, payable to it in its capacity as designated (or elected) Office: since 1 July 2021, an additional fee is payable for each claim in excess of five, instead of for each independent claim in excess of one (the amount of the fee has not changed).”


JURISDICTION: Bosnia and Herzegovina
CHANGE: BA Bosnia and Herzegovina (location and mailing address; fees)

“The Institute for Intellectual Property of Bosnia and Herzegovina has notified the IB of additional information regarding the location and mailing address of its Sarajevo branch office. The address is as follows:

Location and mailing address: Bulevar Meše Selimovi?a 95 Lamela C, 3 sprat 71000 Sarajevo Bosnia and Herzegovina”


CHANGE: GT Guatemala (location and mailing address; telephone numbers; discontinuation of use of facsimile machine)

“The location and mailing address and one of the telephone numbers of the Registry of Intellectual Property (Guatemala) have changed, as follows:

Location and mailing address: 7a. Avenida 7-61 zona 4 primer nivel Guatemala Ciudad, 01004 Guatemala

Telephone: (502) 232 470 70, ext. 105 or 109

Furthermore, the Office has discontinued the use of its facsimile machine.”


CHANGE: KG Kyrgyzstan (name of Office; telephone numbers)

“The name of the State Service of Intellectual Property and Innovation under the Government of the Kyrgyz Republic has changed, as follows:

Name of Office: Kyrgyz Respublikasynyn Ministrler Cabinetine karashtuu Intellektualdyk Menchik jana Innovacialar Mamlekettik Agenttik (Kyrgyzpatent) State Agency of Intellectual Property and Innovation under the Cabinet of Ministers of the Kyrgyz Republic (Kyrgyzpatent)

The Office has also notified an additional telephone number; the numbers to be used are now as follows:

Telephone: (996 312) 68 08 19, 68 10 71”


CHANGE: KZ Kazakhstan (location and mailing address; fees)

The location and mailing address of the National Institute of Intellectual Property (NIIP) (Kazakhstan) have changed, as follows:

Location and mailing address: Mangilik Yel “Avenue 57A 010000 Nur-Sultan Kazakhstan”


CHANGE: VN Viet Nam (requirements concerning agent)

“There has been a change in the requirement of the Intellectual Property Office of Viet Nam (IP Viet Nam) as to whether an agent is required by it as receiving Office and as designated (or elected) Office:

– an agent is not required if the applicant resides in Viet Nam or has a real and effective industrial or commercial establishment in Viet Nam;

– an agent is required if the applicant is a non-resident or, where there are two or more applicants, the first-named applicant on the request form (PCT/RO/101) does not reside in Viet Nam.”

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