IP Updates

Recent developments in the world of IP

These are very brief summaries of recent developments which may be of interest to our direct clients. Last updated: 28 November 2024.

New Design Law Treaty (DLT) adopted by WIPO

On 22 November 2024, the Design Law Treaty (DLT) was adopted following negotiations at WIPO. The DLT aims to harmonise many procedural aspects of design protection worldwide, making design protection more accessible and affordable, particularly for individuals and SMEs. This new treaty, alongside the recent EU design law reform, highlights the importance of design protection globally. [November 2024]

EU design law reform

On 10 October 2024, the European Council adopted two legislative acts to update the current design legislation. Changes include allowing for multiple design applications to be filed regardless of Locarno classification and the incorporation of new defences to infringement such as a now permanent “repair clause”. The current terminology of Registered Community Design (RCD) and Unregistered Community Design (UCD) will also be replaced with Registered European Union Design (REUD) and Unregistered European Union Design (UEUD). [October 2024]

Teva fined €462.6m for playing divisional game and leading disparagement campaign

Teva - the pharmaceutical company behind the blockbuster drug Copaxone used to treat multiple sclerosis - has been fined €462.6m by the European Commission. The Commission decided that Teva had misused the EPO’s divisional patent application filing provisions, creating uncertainty for entry to the market of generic drugs. The decision was supplemented by the company spreading misleading information about competitor products. [October 2024]

EPO Board of Appeal concludes no legal basis for requiring description amendments

Nearly a year after the Board of Appeal first considered appeal case T56/21 and the requirement to amend the description in line with the claims prior to grant, the Board have decided not to refer this case to the Enlarged Board of Appeal. The Board decided that “In examination of a patent application, neither Article 84 nor Rules 42, 43 and 48 EPC provide a legal basis for requiring that the description be adapted to match allowable claims of more limited subject-matter.” This decision is binding only on the examining division that issued the decision under appeal. It is not binding for other cases and there has been no update to the Guidelines for Examination regarding this. It will therefore be interesting to see whether a change in practice as regards description amendments is taken by other EPO examiners as a result of this decision. [October 2024]

Romania joins the Unitary Patent

On 1 September 2024, Romania joined the Unitary patent. Romania is now covered in new registrations of Unitary patents and the jurisdiction of the Unified Patent Court more directly relates to Romania. [September 2024]

Update to UK IPO guidelines for examining patent applications for Artificial Intelligence (AI) inventions.

The UKIPO has updated its guidelines for examining patent applications for Artificial Intelligence (AI) inventions. The updates come in light of the Emotional Perception AI Ltd v Comptroller-General of Patents, Designs, and Trade Marks [2023] EWHC 2948 (Ch) judgement from November 2023. In particular, the updates to the guidance confirm that inventions involving an artificial neural network (ANN), whether implemented in hardware or software, are not excluded subject-matter for consisting of a computer program as such. It is noted that the Emotional Perception judgement is subject to appeal and UK patent law could develop further pending the outcome of the appeal. [May 2024]

Ireland to delay Unitary Patent/Unified Patent Court referendum

It had been hoped that Ireland would soon become the 18th EU country to join the Unitary Patent and Unified Patent Court. However, Ireland has determined that it's participation should be decided by a referendum and the referendum has been deferred from its originally planned date of 8 June 2024. [April 2024]

Update to electronic signatures accepted by the EPO for registering assignments and licences

Registering the recordal of an assignment or licence of a European application/patent involves providing the EPO with evidence of the transaction – typically a document signed by the parties involved.

From 1 April 2024, the EPO have simplified the signature requirements to accept a broader range of electronic signatures – namely digital signatures (e.g., an electronic signature using public key cryptography), facsimile signatures and text string signatures. This change also applies to the recordal of transactions involving unitary patents. [March 2024]

New European Patent Office Microenterprise Fee Reduction

The European Patent Office has announced a new 30% discount on official fees for micro-enterprises, starting from 1 April 2024. This coincides with the date when the EPO is putting through a fee increase of about 4% for most fees - but 30% for the first two renewal fees. There are rules that define which organisations may count as micro-enterprises, for example, they must have fewer than 10 staff. The discount is also available to private individuals, and non-profit organisations, universities and public research organisations. However, applicants may only benefit from this discount if they have filed no more than 5 European patent applications in the preceding five years. The new discount will be welcomed by micro-enterprises who are entitled to it. Please see our more detailed article on the EPO official fee discount for micro-enterprises for further information. [February 2024]

Accelerated opposition proceedings at the EPO

In November 2023 the EPO announced that opposition proceedings before it would be subject to accelerated processing where an infringement or revocation action relating to a European patent or to a Unitary Patent has been instituted before the Unified Patent Court or before a national court or competent authority of a contracting state. Specific acceleration measures, which will be applied by the EPO with immediate effect, also to pending proceedings, have now been published on the EPO website. One effect of these measures is that parties to the proceedings will be subject to rather stringent response deadlines. The mean processing time for an opposition procedure is currently below 20 months. It is to be expected that the newly introduced measures will significantly cut down the time taken for the EPO to issue a decision on an opposition case. [February 2024]

Validation agreement between EPO and Georgia enters into force

From 15 January 2024, a validation agreement between the European Patent Office and Georgia will enter into force. European applications filed on or after that date may be validated in Georgia. [January 2024]

EPO 10-day rule discontinued

From 1 November 2023, the so called 10-day rule has been discontinued. EPC rule 126 has been amended to remove this provision by which certain communications from the European Patent Office were deemed to be received 10 days after the date specified on the communication, which had the effect of extending various deadlines by 10 days. Reflecting the change to electronic communication methods, from 1 November 2023, all communications are deemed to be received on the date specified on the communication. There will remain a safeguard provision that if a communication is not received within 7 days of the date specified on the communication, certain deadlines will be extended by amount by which receipt is further delayed beyond the 7 days. [November 2023]

EPO Form 1201 ("Entry into European Regional Phase") discontinued

From 1 November 2023, the European Patent Office will discontinue the form 1201 letter sent to PCT applicants to inform them of the deadline to enter the European regional phase and to inform them of the European patent application number. This letter has been thought to be extraneous for some years and has caused confusion to applicants who were not expecting to receive a letter from the European Patent Office. [August 2023]

English language options before UPC extended

The German, French and Italian Courts have announced that English may be used as a language of proceedings before the Local Divisions of the Unified Patent Court in their countries. This will greatly assist the accessibility of the Courts as English is very widely spoken amongst representatives before the Court. A list of language options before Local and Regional Divisions is provided here. In actions before the Central Division (e.g. revocation actions) the language of proceedings will however be the language in which the patent was granted (English, French or German). [June 2023]

The UPC goes live!

The long-awaited new Unitary Patent and Unified Patent Court (UPC) came into effect on 1 June 2023. This is an exciting development for European businesses. Although the Unitary Patent and UPC do not cover the United Kingdom, we are pleased to be fully involved, including being representatives before the UPC, due to our status as European patent attorneys. [June 2023]

Change to UK Divisional Patent Application Compliance Deadlines

UK divisional patent applications with a filing date on or after 1 May 2023 will no longer inherit the compliance deadline of the parent application if that deadline has been extended under Rule 108(2)/Rule 108(3). Instead, the divisional application will always inherit the original compliance deadline of the parent application set out in Rule 30(2). Any extensions to the compliance deadline of the divisional application will need to be requested separately, even if the compliance deadline of the parent application was extended before the divisional application was filed. This increases time pressure towards the end of UK patent application procedure where divisional applications are contemplated [May 2023]

European Patent Office fee increases

The European Patent Office increased its official fees by 5% on 1 April 2023 due to inflation. Usually, the EPO only review their fees in even-numbered years and so this additional cost increase was not expected. [April 2023]

Change to UK trade mark opposition cost schedule

The UK IPO has increased the scale of costs which may be awarded to the successful party in oppositions and other inter partes matters before the Trade Mark Registry. Despite this increase, the scale remains relatively low compared to the costs which parties face in practice and are designed to be contributory rather than compensatory. [February 2023]

The Unitary Patent will come into effect from 1 June 2023

Germany deposited its instrument of ratification of the Unitary Patent agreement on 17 February 2023, triggering the commencement of the Unitary Patent and the Unified Patent Court from 1 June 2023. Unitary Patents may be registered from this date although note that there is already a mechanism to file an early request for Unitary effect for European patents granted since 1 January 2023. A sunrise period commences on 1 March 2023. Holders of existing European patents may elect to opt their patents out of the jurisdiction of the Unified Patent Court during this sunrise period should they wish to do so. We have published guidance on the UP and UPC and are happy to answer questions on these topics. [February 2023]

European Patent Office starts to accept new Unitary Patent related requests

From 1 January 2023, the EPO has started to accept forms to (1) request Unitary effect of a European patent and (2) delay grant of a European patent until the Unitary patent system has come into effect, currently expected to be from June 2023. These forms may be filed if a Rule 71(3) (notification of acceptance) letter has been issued. For option (2) the form should be filed before or at the time of responding to the Rule 71(3) communication. [1 January 2023]

USPTO Reduces Small and Micro Entity Fees

In a welcome departure from ongoing inflation, the US Patent and Trademark Office has increased the fee discount for small entities from 50% to 60% (and for micro entities from 75% to 80%) from 1 January 2023. [1 January 2023]

The European Patent Office "10 day rule" is to come to an end

The European Patent Office has indicated that it will stop the long-standing "10 day rule" under which many deadlines have been calculated from a notional receipt date, 10 days after the actual date of the communication. The expectation is that for any communications issued by the EPO on or after 1 November 2023, deadlines which are calculated from the date of the communication will no longer have any additional period of time added (except in rare circumstances where there is an actual disruption in communication).

Montenegro joins the European Patent

Montenegro has become a contracting party of the European Patent Organisation and will be designated in new European Patent Applications filed on or after 1 October 2022. A European Patent Application can now designate 39 states and there are also four validation states and one extension state to which a European Patent may be extended. Montenegro is not part of the European Union and so cannot participate in the EU Unitary Patent.

The European Unitary Patent and Unified Patent Court are expected to come into existence in early 2023

The long-awaited European Unitary Patent - and the associated Unified Patent Court - are, finally, expected to start operation in early 2023, without the UK (or Spain, for that matter). Austria depositing its instruments of accession has triggered the so-called period of provisional application and the European Patent Office has announced transitional measures to help applicants who wish to obtain Unitary Patents. We have written more about this important development here.

Australia to introduce grace period for designs

For a number of years, the UK and European Union have had a grace period which allows the proprietors of design rights to make an application for protection up to a year after first disclosure of their design (although there are risks in using this grace period). This grace period has been useful for many UK and EU businesses but others have been caught out by failing to appreciate that most territories do not have corresponding grace periods. Australia has for some time had a grace period for patents but, surprisingly, this did not apply to registered designs. It has now been announced that a grace period for registered designs, of up to a year, will begin from 10 March 2022. Note that all disclosures prior to 10 March 2022 will not be covered as the grace period is not being applied retrospectively.

China to join Hague Agreement

The Hague Agreement provides for a centralised application for design registration through WIPO which may give rise to protection in many territories around the world. This process was very rarely used by UK and EU companies until the US and Japan joined the Hague scheme in 2015 following which there has been some light use of the system and the UK joined the Hague Agreement independently of the EU just before Brexit. It has now been announced that China will join the Hague Agreement from 5 February 2022. Thisx may further increase use of the Hague system for design registration as single application through WIPO could, in theory, give rise to rights in the UK, EU, China, Japan, Korea and the US as well as various other territories. However, the system remains difficult to use, with individual countries applying very different examination systems and formal requirements. This development will make the Hague Agreement more popular with regular users of the system who can afford to take risks but it will remain risky for applicants for whom design registration is critical.

EPO Board of Appeal does not support strict requirements to amend patent description for consistency with claims

There has always been a requirement that the description of a European patent application should be consistent with the claims. In late 2021, the Guidelines for Examination were amended to introduce particularly strict rules including that claim-like clauses that are not identical to claims be deleted or amended, and that examples which were not within the scope of the claims should be deleted or marked to explain that. Furthermore, the Guidlines indicated that unless these requirements were complied with, a summons to oral proceedings would be issued. The Guidelines have been negatively received by users of the patent system because they require time-consuming (and therefore costly), difficult and legally risky amendment work for reasons which appeared purely formal or clerical.

Although the Guidelines remain in place, a Board of Appeal has ruled that there is no basis in the European Patent Convention for many of these requirements. Thus, applicants may be emboldened not to fully comply with the more onerous aspects of these provisions. Interestingly, the Board of Appeal decision was not marked for distribution within the EPO; perhaps this remains a sensitive topic.

EPO to accept electronic signatures in evidence of transfer of ownership of patent rights

From 30 November 2021, the EPO will accept a Qualified Electronic Signature, in addition to handwritten signatures, in respect of evidence filed in support of requests for registration of a transfer of rights and for registration of a licence or other rights. The requirements for obtaining a Qualified Electronic Signatures are defined in Regulation (EU) No 910/2014. The requirements are not trivial and it remains to be seen whether applicants will decide to make use of this possibility. Given that electronic signatures are not accepted as legally binding on a party throughout the world, it is still likely to be the case that a handwritten signature on an assignment will be preferred in many situations.

United Arab Emirates joins the Madrid Protocol

From 28 December 2021, it will be possible to designate the UAE in new applications (and subsequent designations) under the Madrid Protocol, a centralised mechanism for obtaining international trade mark protection. This is important because the UAE has always been an extremely expensive territory in which to obtain trade mark protection by the filing of direct applications. Nevertheless, the official fee for designating the UAE is expected to be large relative to the majority of other countries.

Period to file Comparable UK Trade Marks and Designs came to an end

With a limited exception for some international trade mark registrations, 30 September 2021 was the final date for proprietors of EU trade mark and design applications which were pending on 31 December 2020 to apply for comparable rights in the UK. The EU and UK trade mark and design registers are now entirely separated.