The abolition of the ten-day rule is not the only procedural change being made at the European Patent Office (EPO) in November 2023.

With effect from 1 November 2023, the EPO will no longer send Form 1201 to representatives and applicants of International (PCT) patent applications. Form 1201 provides the European Application Number that has been assigned to the international application and offers instructions for entering the European Regional phase.

As a result of the abolition of Form 1201, the European Application Number assigned to PCT applications must be accessed via the EPO register by searching for the International Application Number or International Publication Number. Further, the instructions and information for entering the European phase can now be accessed at any time via the EPO website, here.

The EPO expects that this change will allow them to save over 500,000 sheets of paper per year, helping to achieve their ongoing environmental goals.

It is anticipated that this change will not have any noticeable, adverse impact on the International or European Regional phase of a patent application, especially since the European Patent Application number is not required when completing online Form 1200E for European phase entry. However, to prevent confusion, applicants should be aware of the change, in case it affects their internal monitoring of international applications intended for European Regional Phase entry.

The first referral of 2023, case G1/23, has been made to the Enlarged Board of Appeal (EBA) of the EPO, seeking clarification on the enablement test in relation to prior use of a product. In particular, the question raised is whether the non-enabling prior use of a product exclude only the composition of the product from the prior art, or is product itself is also excluded? While the referring case relates to chemical compositions, the findings could be more widely applied to devices which can be analysed to determine their internal structure and function such as mechanical devices, or systems made of multiple components.

The prior art is defined as being everything made available to the public by means or written or oral description, by use or in any other way before the date of the filing of the application. This includes prior use. However, for a disclosure to be prior art, it must also be enabling. Under established case law from the EBA (G1/92), prior disclosures of a product are only considered as being made available to the public if the skilled person would have been able to analyse and reproduce the product using common general knowledge.

The referral comes from T0438/19 which relates to polymers for coating and protecting cells within solar panels. The case hinged on whether prior use of the polymer ENGAGE 8400 was considered prior art. This polymer was commercially available prior to the filing date of the application, so the issue was whether this was an enabling disclosure of the product. It was argued that the skilled person could not reverse engineer the product, as it would be an undue burden to determine the specific catalysts and reaction conditions required to make the polymer.

For 30 years under established European case law, a commercially availability product has been considered prior art if it meets certain requirements:

1) the product must be available to the public;
2) the skilled person must be able discover the composition or internal structure of the product; and
3) the skilled person must be able to reproduce the product using common general knowledge without undue burden.

If all these criteria are met, then both the product and its composition or internal structure become prior art. In cases where the product cannot be analysed or reproduced, there have been diverging decisions on how the decision in G1/92 should be interpreted. In some cases only the internal composition of the product is excluded from the prior art, but in others both the product and its internal composition are excluded from the prior art.

The issue of whether only the composition, or both the product and its composition should be excluded from the prior art has practical consequences in situations where the issue of inventive step is being considered. If the product itself is excluded, then it cannot be used as a starting point for assessing inventive step in combination with other prior art documents.

The Board of Appeal has referred the following questions:

1. Is a product put on the market before the date of filing of a European patent application to be excluded from the state of the art within the meaning of Article 54(2) EPC for the sole reason that its composition or internal structure could not be analysed and reproduced without undue burden by the skilled person before that date?

2. If the answer to question 1 is no, is technical information about said product which was made available to the public before the filing date (e.g. by publication of technical brochure, non-patent or patent literature) state of the art within the meaning of Article 54(2) EPC, irrespective of whether the composition or internal structure of the product could be analysed and reproduced without undue burden by the skilled person before that date?

3. If the answer to question 1 is yes or the answer to question 2 is no, which criteria are to be applied in order to determine whether or not the composition or internal structure of the product could be analysed and reproduced without undue burden within the meaning of opinion G 1/92? In particular, is it required that the composition and internal structure of the product be fully analysable and identically reproducible?

The decision of the EBA is not likely to be issued before 2024. However, it would be a major shift in practice if a product was completely excluded from the prior art solely because some part of it was difficult for the skilled person to analyse or reproduce. Some clarity on the threshold or test for enablement to establish if a product is part of the prior art for assessing novelty and/or inventive step is expected, but we wait to see how the EBA deal with this tricky issue.

In the meantime, the EPO has now issued a Notice that the President has decided to stay all examination and opposition proceedings where the decision depends entirely on the outcome of this referral. The examining or opposition division will inform the applicants where a stay is applied. Any outstanding deadlines on a stayed case will be withdrawn.

In 2021, the UK Intellectual Property Office (IPO) began a transformation programme to update its system and services. Through these transformations, the IPO intends to create a user-focussed and world-leading system for all UK IP rights. The new system and services are intended to move away from the paper-based style of working, which has been used until now, to a single digital system.

The new system is called “One IPO” and will include the following services:

• Manage IP – new IPO user accounts to view, manage and track all IP transactions.
• Secure IP – a new digital IP applications service that will allow users to secure IP more quickly and efficiently.
• Research IP – a new IP search service that will make finding information about UK IP easier and more powerful.
• Challenge IP – a new digital service for IP hearings and tribunals.

This year, we will see the first fruits of their labour as new patents services and pilot programmes are rolled out before a full launch for all IPO users.

In September 2023, the new search service will launch, replacing the current patent searching service Ipsum. The new service will give users more options on how to search for patents, including keywords, owner(s) of the IP right, date of registration, and the status of the IP right. New data will be also available, including the IPO’s full library of Supplementary Protection Certificates (SPCs). Users also will be able to save searches, monitor patents and build their own “patent journal”. Trade marks and designs will be added to the search service in 2025, creating one place to search all registered UK IP.

In addition, the Patents Pilot will be launched, giving a small group of patents users early access to the One IPO system. This pilot programme is intended to assist users to set up their IPO account to test and refine the system before launch. The pilot programme is expected to run for six months from September 2023 to April 2024 and users will include participants from small to large private practice firms, in-house attorneys and private applicants.

In Spring 2024, the new One IPO system will launch for all patents users, including the Manage IP and Secure IP services to manage and track all patents, and draft and submit new applications. The first APIs (application programming interfaces) will also become available, which will allow providers of IP software to link their products directly to the IPO’s new systems. APIs will allow users to view their IP, get details of applications and request renewals, with new features to be rolled out in the future.

A trade marks and designs pilot will run in Spring/Summer of 2025, before the full launch of these services in Autumn/Winter 2025. The new digital hearings and tribunals service will also launch at this time.

There are some notable changes that will occur with the introduction of One IPO. In particular, the EPO’s Electronic Online Filing (eOLF) service for filing new PCT (international) applications at the UK IPO will no longer be used from Spring 2024. eOLF will still be available for ongoing PCT applications and new GB patent applications for a further three months, before eOLF is disabled for all UK IPO filings in summer 2024. All new GB patent filings will then have to be made through One IPO.

There will also be changes in One IPO regarding how patent applications are to be filed. Each part of a patent specification (description, claims and drawings) will need to be uploaded as separate documents in DocX or ODT format, although it will be possible to upload drawings in machine-readable PDF format. The IPO commented that it has always examined parts of patent specifications separately, so this change increases efficiency and accuracy for the IPO, which often has to divide up new applications. Furthermore, as the required document formats are machine-readable, the IPO hopes that the examination process will become more efficient.

Options to restrict access to certain applications or client information will be available, allowing organisations to establish ethical walls to avoid conflicts of interest.

Finally, many users will be happy to hear that deposit accounts will be built into One IPO. However, the IPO has indicated that over the long term it plans to move away from deposit accounts to an alternative digital payment service.

Overall, these are welcome changes to the services offered by the UK IPO, benefitting all users who wish to obtain, search and litigate IP in the UK.

The concept of “bad faith” has no definition under the UK Trade Marks Act 1994 (“the Act”).  It has however been the subject of discussion in various cases and is understood to have “moral overtones”[1] and at its core “includes dishonesty”[2] which “involves conduct which departs from accepted standards of ethical behaviour or honest commercial and business practices”.[3]

The UK Registry examines trade mark applications based on the criteria set out under the provisions of the Act and as part of its examination may raise absolute grounds of refusal ex officio, including under s.3(6) of the Act which states that any “trade mark  shall not be registered if or to the extent that the application is made in bad faith”. However, in practice the UKIPO only raises bad faith objections where the mark applied for contains the name of a famous individual and even then only if an overall assessment is made that the application rebuts a presumption of good faith. The evidence intensive nature of proving bad faith does not lend itself well to Registry examination.  For this reason, bad faith matters have often been left to inter partes opposition and cancellation proceedings as the burden of proof is on the party alleging bad faith because good faith is presumed otherwise (T-136/11 Pelikan).

In a decision last year issued by Mr. Geoffrey Hobbs QC (as he then was) sitting as the Appointed Person in HENRY/RONALDINHO (Appeal No. BL O/264/22)[4], the Registry’s ability to raise bad faith grounds ex officio at the examination stage was called into question. The applicant (Global Trade Mark Services Ltd) had applied to register 4 trade marks containing the names of famous footballers. The Registry initially refused all of the applications under s.3(6) of the Act on grounds that they had been applied for in bad faith which was later upheld by the Registry’s Hearing Officer for 2 of the marks, namely

Mr. Hobbs held that the Registry was wrong to refuse the trade mark applications on the ground that they contained the name of famous persons and had therefore been filed in bad faith. According to Mr. Hobbs, the Registry was not entitled to arrive at this conclusion ex officio as the finding was for all intents and purposes based on conflicts with earlier unregistered rights in famous names which the individuals in question (Ronaldinho & Henry) could have successfully raised themselves on relative grounds under s.5(4)(a) of the Act. The Registrar had “metaphorically speaking.. acted as ‘investigator-prosecutor-judge-jury-executioner’ in relation to a serious accusation which he himself had raised against a person entitled to the benefit of a rebuttable presumption of innocence” for which reason Mr. Hobbs found that the approach taken was “legally deficient” and “procedurally unacceptable”.

Following this decision, the UKIPO has now issued a practice amendment notice, namely “PAN 1/23: Practice for raising bad faith objections at the examination stage”: https://www.gov.uk/government/publications/practice-amendment-notice-123/pan-123-practice-for-raising-bad-faith-objections-at-examination-stage. This PAN amends the Registry’s previous practice for the raising of bad faith objections which was set out at paragraph 5.11 of the Examination Guide in the Manual of Trade Marks Practice. However, rather than follow the direction of Mr Hobbs, it seems that the amendment (copied below) is to merely give notice that the UKIPO will wait until the Supreme Court’s decision is issued in the Skykick case following the appeal from the Court of Appeal’s decision. The Supreme Court is due to hear the case later this month; the eagerly awaited judgment could have a significant impact on the law of bad faith as we know it.

“The IPO is aware that the decision of the Court of Appeal in the Skykick case referred to above has been appealed to the Supreme Court. This practice will be updated to the extent required following the Supreme Court’s judgment.”

We will keep you advised of developments as they arise.

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[1] Hobbs QC in DEMON ALE Trade Mark [2000] RPC 345 at [356].

[2] Lindsey J in Gromax Plasticulture Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367 at [379].

[3] Floyd LJ in Skykick UK Ltd and Another V Sky Ltd and Others [2021] EWCA Civ 1121 at [67].

[4] Decision available here

The EPO’s Enlarged Board of Appeal (EBA) has recently announced the eagerly awaited decision in respect of the G 2/21 (“Plausibility”) referral made in 2021. The decision can be found here and our original article reporting the referral can be found here.

The referral included three questions relating to the use of post-published evidence to support a technical effect, and what plausibility standard is required if post-published evidence is relied upon. Specifically, if the acknowledgement of an inventive step relies on post-published evidence:

     1) Should an exception to the principle of free evaluation of evidence (see e.g. G 3/97, Reasons 5, and G 1/12, Reasons 31) be made in that post-published evidence must be disregarded if proof of the technical effect is exclusively provided by the post-published evidence?

     2) If the answer to (1) is yes, can the post-published evidence be taken into consideration if the skilled person would have considered the technical effect plausible at the filing date (ab initio plausibility)?; or

     3) If the answer to (1) is yes, can the post-published evidence be taken into consideration if the skilled person would have seen no reason to consider the technical effect implausible at the filing date (ab initio implausibility)?

As regards the first question, in line with the principle of free evaluation of evidence, the EBA held that evidence cannot be disregarded solely because it is post-published. In this regard, the EBA decision states that:

“Evidence submitted by a patent applicant or proprietor to prove a technical effect relied upon for acknowledgement of inventive step of the claimed subject-matter may not be disregarded solely on the ground that such evidence, on which the effect rests, had not been public before the filing date of the patent in suit and was filed after that date.”

Although the first question was effectively answered with “no”, the EBA did not find that this rendered questions 2 and 3 to be irrelevant and provided some important guidance in relation to plausibility.

However, the EBA avoided the debate relating to “ab initio plausibility” and “ab initio implausibility” and rather pointed out that “plausibility” does not amount to a distinctive legal concept or a specific patent law requirement under the EPC, but rather a “generic catchword” used as a criterion for the reliance on a technical effect.

In this regard, the EBA noted that when assessing if a technical effect may be relied upon in support of inventive step, the relevant standard concerns the question of whether the skilled person with their common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention.

The EBA acknowledged the “abstractness” of these criteria but concluded that it has provided “guiding principles” to allow the deciding body to take a decision as to whether or not post-published evidence may or may not be relied upon.

It will be interesting to see how the referring Technical Board of Appeal applies the EBA’s criteria to the case in question.

Mauritius has filed instruments of accession to the Madrid Protocol with the World Intellectual Property Organization (WIPO) in Geneva, resulting in the Madrid System of International Trade Marks now covering 130 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 6 May 2023, applicants for International Trade Mark Registrations will be able to list Mauritius 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.