EPO Announce Transitional Measures For Early Uptake of Unitary Patent

Author: Matthew Ng
IP News

With the recent announcement of the delay to the implementation of the UPC Agreement to 1 June 2023, and the start of the “Sunrise Period” to 1 March 2023, the EPO has announced that two transitional measures previously signaled at the start of 2022 will come into force on 1 January 2023.

The transitional measures are designed to assist applicants with the early uptake of the UPC Agreement and apply to applications for which a Notice of Allowance (the so-called Rule 71(3) Communication) has already been issued.

The first measure allows applicants to make an early request for unitary effect before the UPC Agreement formally comes into effect. The second measure allows applicants to request for a delay in the issuance of the Decision to Grant until the UPC Agreement formally comes into effect.

For applicants that have already decided to adopt the new Unitary Patent System, these measures will enable them to start their preparations well ahead of time. However, for those that are still uncertain or do not wish to use the new system, the additional delay to grant may not be helpful. If you have any questions in this regard, please do not hesitate to contact us.

The measures in full can be found here.

Belize Joins International Trade Mark System

IP News

Instruments of accession to the Madrid Protocol were filed by Belize on 24 November 2022 with the World Intellectual Property Organization (WIPO) in Geneva, taking the number of countries covered by the Madrid System of International Trade Marks to 129 countries.

The Madrid System makes it possible for people and businesses to apply for trade mark protection in numerous jurisdictions at the same time and in a single application. Subject to certain exceptions, applicants can elect for their application to cover one, some or all of the territories which are members of the system. These so-called ‘International Applications’ are usually based on an earlier application or registration in the applicant’s home jurisdiction, and remain dependent on the life of that ‘basic’ application or registration for the first five years of their lives.

If certain formal requirements are met, International Applications are formally registered by WIPO, who forward them on to the national Registries of each of the countries the applicant listed in the International Application, who decide whether or not to grant protection in their territories under their own national laws. If objections or issues arise, local counsel usually needs to be engaged to address the matter.

Whilst an International Application does not itself guarantee protection in all of the countries it lists, or that costs of engaging local counsel around the world can always be avoided, it provides a streamlined, cost-effective means for applicants to file, renew and transfer rights to a trade mark in many jurisdictions around the world, without the need to file separately on a territory-by-territory basis.

From 24 February 2023, applicants for International Trade Mark Registrations will be able to list Belize as one of the countries in which they wish to seek protection for their marks.

Beck Greener are experts in the Madrid System, and have been successfully filing, administering, and prosecuting International Trade Marks around the world for decades. If you are interested in protecting your trade mark in multiple jurisdictions, we would be happy to assist.

Adjustment of the Unified Patent Court timeline – Start of the Sunrise Period on 1 March 2023

The roadmap for the UPC has been postponed by two months.

The Sunrise Period will now start on 1 March 2023, with entry into force of the UPC Agreement on 1 June 2023. The additional time will allow for software to be finalized and tested. Further information is available here.

EPO: VICO Oppositions are Here to Stay

The EPO has decided, following completion of a pilot project, that from 1 January 2023 video conference (VICO) will be the default format for Oral proceedings in opposition. The practice of recent months and years is here to stay.

When the Covid pandemic swept the planet in early 2020, the business world adapted quickly, adjusting to online meetings and interactions. The EPO, already experienced at the running of Examining Division hearings with VICO, adopted similar ways of doing things in oppositions.

In April 2020 an EPO pilot project was launched for oral proceedings before opposition divisions. Under the pilot, VICO was made the default mode for conducting opposition hearings.

In a just published final report on the pilot project the EPO, based on significant user feedback, has concluded that VICO will become the default format for opposition hearings. The report notes that 77% of respondents found oral proceedings in opposition by VICO to be good or very good. The environmental benefits were noted by the EPO with an indication that the default use of VICO has saved thousands of journeys every year, with obvious consequential reduction in CO2 emissions.

The report is generally consistent with the opinion of the EPO Enlarged Board of Appeal in G1/21. This decision found that during a general emergency impairing the parties’ possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a VICO is compatible with the EPC even if not all of the parties to the proceedings have given their consent to this form. G1/21 does not comment on whether this would be the case in the absence of a period of general emergency. Accordingly, the recent report on the pilot seems to go further than the Enlarged Board’s decision.

There have been voices of dissent. Some have commented that best justice flows from face-to-face interactions between parties and division. However, the statistics in terms of results in oppositions have shown little difference in dependence on the format of the hearing.

The EPO will allow on-the-premises hearings if necessitated by serious reasons. These could be the needs of a participant, such as an individual with visual impairment that prevents them from following the proceedings on screen. The subject-matter of the proceedings could also be important, e.g. when it involves the demonstration or inspection of an object involving haptic features. These are very specific examples that have been given by the EPO. It has cautioned that sweeping objections to VICO based on the reliability of videoconferencing technology or the non-availability of videoconferencing equipment will, as a rule, not qualify as serious reasons for conducting a hearing on the premises.

A formal decision of the President is scheduled for publication imminently. It will include more detail regarding the rules of procedure going forward.

If you need more information on this development please get in touch.

EPO to Abolish the 10-day Rule

IP News

The EPO has announced that it has updated its mailing period rules. The update will end the current mailing period arrangements with effect from 1 November 2023.

Those familiar with the EPO will be aware that under the current rules, official communications are deemed to be delivered to the recipient 10 days from the date printed on the communication, to allow for them to reach the addressee by mail. This means that deadlines for responding to official communications notified by the EPO are calculated from the end of the 10-day period. Following the update, official communications will be deemed to be delivered on the actual date of the communication, and so deadlines will start from that date. This is part of the EPO’s “digital transformation” and reflects the fact that EPO communications are now usually sent electronically.

Safeguards will be available in the event of a delay between the mailing and receipt of a communication from the EPO. In cases where there is a dispute concerning the delivery of a document, the burden of proof will lie with the EPO to prove that the communication was delivered and the date of its delivery.

Whilst this change will take some time to get used to and will effectively shorten the period for responding to many EPO communications, it will simplify the calculation of deadlines and remove uncertainty when reporting deadlines to attorneys outside of Europe.

We will of course keep you full informed as this change comes into effect.

Could a grace period for patent filings be introduced into the EPC?

Author: Richard Sulston
IP News

Any publicly available, enabling disclosure that occurs before the filing or priority date of a patent application before the European Patent Office (EPO) is currently novelty destroying (unless there has been a breach of confidence). A grace period in which a patent application can still be filed following a disclosure of the invention by the applicant itself exists in a number of countries but there is no equivalent provision in the European Patent Convention (EPC). In June 2022, the EPO released a report reviewing the impact that implementing a grace period in Europe would have for applicants. The purpose of the review was to provide an evidence-based assessment for the potential economic impact of the introduction of a grace period in Europe.

Grace periods exist in many national patent systems including the USA, Canada, Japan, Korea and Australia, with Europe and China having no grace period and therefore a very strict assessment of novelty. There is little harmonisation amongst countries which have a grace period, with variations in length of the period, the date from which the grace period is calculated and the extent to which the grace period can be used. Presently, some EPC member states already operate a grace period; these are Estonia, Latvia, San Marino, and Turkey.

In the review, the EPO identified three major reasons why an applicant might make use of a grace period; these are:

• A safety net allowing for filing of a patent application following an accidental disclosure of an invention
• The ability to publish scientific research results before a patent application is filed
• Proactive use of the grace period to use or sell an invention for business purposes prior to filing a patent application

As part of the review, European and international applicants were surveyed to assess their attitudes and motivations regarding grace periods. Nearly half of respondents in Europe cited the safety net against accidental disclosure as being their main motivation for desiring a potential grace period. Conversely, respondents in the USA and Japan showed greater motivation to use the grace period for publication of research and proactive use or sale of an invention. This result is likely reflective of the current attitudes of European applicants who have had issues with accidental disclosures precluding patent applications. Should a grace period be introduced in Europe, it appears likely that applicant attitudes would shift to mirror those in the USA and Japan.

The main motivation for introducing a grace period in Europe would be to generate economic benefits. For example, European universities would be free to develop and commercialise science-based inventions without the fear that disclosures may prevent subsequent patent applications. However, whilst grace periods are generally useful to an applicant, they also increase legal uncertainty and complexity when evaluating freedom to operate and when engaging in litigation. Over 40% of respondents expected that the introduction of a grace period would increase the costs of both freedom to operate opinions and litigation.

The impact of the strict novelty requirements in Europe was assessed in the review by surveying small and medium sized enterprises (SMEs) versus larger companies. It was found that more than a third of SMEs and more than half of other companies reported cancelation or postponement of a disclosure in the past three years to prevent the disclosure destroying the novelty of an unfiled patent application. The cancellation or postponement of a disclosure was mostly commonly reported to have had no serious consequence, however 15% of businesses reported lost commercialisation opportunities and 13% of SMEs reported loss of financial opportunities.

Research institutions were also surveyed as part of the review, including both universities and private research organisations (PROs). For both universities and PROs, academic publications and conferences comprised the majority of prefiling disclosures made by these organisations. Over two thirds of research institutions reported having to postpone or cancel a disclosure to comply with the novelty requirements before the EPO, with reputational damage being reported as the major consequence of this postponement or cancellation.

Over 50% of PROs and over 60% of universities reported that they had been prevented from filing a patent application due to a pre-filing disclosure, with the major consequence of this being the prevention of commercialisation of an invention or preventing further development of an invention.

It was estimated that if a grace period were to be introduced in Europe, it would result in approximately 10,000 applications annually using the grace period, half of these being as a result of an accidental disclosure and the other half following a deliberate and proactive use of the grace period. It was also estimated that applicants from the USA would be the largest group using the grace period, followed by applicants from Europe.

A number of options for implementing a grace period were assessed, including a US style system. This was predicted to predominantly benefit applicants from outside Europe whilst also having the largest impact on freedom to operate within Europe. Therefore, balancing mechanisms to regulate the use of a grace period were evaluated, including a declaration requirement as found in Japan and Korea or a prior-use rights model used in Australia. It was found that any balancing mechanism would reduce the legal uncertainty within Europe but would also reduce the number of applicants making use of the grace period.

There is clearly a desire from applicants for the introduction of a grace period in Europe, particularly applicants from the USA. However, the review also revealed significant apprehension amongst European applicants that a grace period would introduce much greater legal uncertainty and costs. There was particular emphasis from a number of EPO user associations that the first-to-file system must not evolve into a first-to-publish system. As such, the EPO concluded that any grace period in Europe should be tempered by significant balancing measures. Such measures might make the grace period available to only a specific sector of applicants such as those conducting academic research and clinical studies, which would appear to have the greatest scope to benefit from such a change.

In summary, the review found that the benefits of the introduction of a grace period in Europe would include greater international patent law harmonisation and a potentially improved patent system for applicants. However, a grace period would decrease legal certainty for businesses and individuals operating in Europe. Accordingly, any grace period introduced in Europe would likely be designed to include several balancing measures to protect European stakeholders and benefit only the applicants most in need. No introduction of a grace period has been formally proposed for the EPC and so any changes that might be made cannot be expected to occur any time soon. As such the need remains for strict avoidance of prefiling disclosures in Europe, at least for the time being.

The full report can be found here.

ST.26 – A new standard for sequence listings

IP News

A new global sequence listing standard came recently came into force, replacing the existing WIPO ST.25. As of 1 July 2022, sequence listings in all new PCT and national/regional applications must comply with ST.26.

Most patent offices require patent applications disclosing nucleotide or amino acid sequences to be filed with a formal sequence listing. A sequence listing is a list of all disclosed biological sequences in a standardised electronic format that allows for easier processing and searching by patent offices worldwide.

The aim of ST.26 is to harmonize sequence listing practice across all patent offices, reflect advances in biotechnology, and meet international sequence database requirements. The full text of ST.26 can be found here.

What are the key changes from ST.25 to ST.26?

The major change between the two formats is that ST.26 requires sequence listings to be in electronic XML format rather than the “plain text” TXT format required by ST.25. The use of XML format is intended to facilitate searching and transfer of the sequences to international sequence databases.

WIPO has developed its own software (WIPO Sequence) for the generation and editing of ST.26 compliant sequence listings. The new software may also be used to convert old ST.25 sequence listing into the new ST.26 XML format.

Other key changes are summarised below:

  • Sequences having fewer than 10 specifically defined nucleotides or fewer than four specifically defined amino acids are not permitted. Undefined residues (place holder residues ‘Xaa’ for amino acids, ‘n’ for nucleic acids) do not count towards the new minimum length requirement.
  • It is now mandatory to include and annotate D-amino acids, linear portions of branched sequences and nucleotide analogues (e.g. PNA or GNA) in sequence listings.
  • Each sequence must have not only a “moltype” indication (e.g. DNA, RNA, AA), but must also include a “moltype” qualifier to further define the molecule (e.g. “genomic DNA”, “other DNA”, “genomic RNA”, “mRNA”, “viral RNA”, “transcribed RNA”).
  • Amino acids must be represented by their one letter code, instead of their three letter code.
  • Both uracil and thymine must be represented by “t”, rather than “u” for uracil and ‘t’ for thymine.
  • Further options/qualifiers for the annotation of sequences are available.

Key Considerations

It is important to note that the patent application filing date (and not the priority date) will be the reference date that determines if an application falls under ST.25 or ST.26 sequence rules. There is no transition period between the standards so all new applications comprising sequence listing must now comply with the ST.26 standards.
With regard to PCT applications, the relevant date is the international filing date. Therefore, if a PCT application filed before 1 July 2022 enters the EP regional or GB national phase after that date, the relevant standard is ST.25.

As regards divisional applications, implementation of the new standard may vary between patent offices. For example, the UKIPO does not require ST.26 compliant sequence listings for divisional applications if the parent application has a filing date before 1 July 2022, whereas the EPO requires conversion of the parent ST.25 sequence listing into ST.26 format.

The EPO recently came under fire from the Institute of Professional Representatives before the European Patent Office (epi) for its approach to implementing the new sequence listing rules. The main concern was in relation to divisional applications and the risk of added matter problems since the ST.26 standard requires more information than ST.25. In its response to epi, the EPO provided the following advice to avoid added matter:

“The applicant may choose to file a sequence listing in PDF on the filing date, or to file the divisional application by reference to the description of the parent application, and thus to file the ST.26 sequence listing only for search purposes under Rule 30(3) EPC. This prevents added subject matter issues from arising but an additional fee may fall due, reflecting the additional burden on the side of the EPO.”

The EPO’s response also confirmed that its approach for divisional applications is in-line with that of the USA, Japan, Germany, Denmark and Norway. This divergence in practice between jurisdictions means that clients should provide instructions with sufficient time to allow for the potential conversion into the new format prior to filing a divisional application.

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