DEVELOPMENTS IN IP
- Update on the Community Patent and European Patent Litigation System
- New UK Trade Mark Examination Practice
- New UK Trade Mark Opposition Requirements
- Co-operation between UK, Japan and USA to speed up patent process
- More referrals to the Enlarged Board of Appeal
- Indian Statements of Working
- New addition to the European Patent system
- Progress made on translation agreement
- Public consultation on inventive step
Update on the Community Patent and European Patent Litigation System
Whilst we still await real progress towards an EU Community Patent and a unified jurisdictional system for litigating patents in Europe, there do at least continue to be discussions about such systems.
At the Cyprus Chamber of Commerce earlier this year, European
Commissioner Charlie McCreevy, who is responsible for the
Internal Market and Services, stressed the importance of reforms
to the Patent system in strengthening Europe’s single market,
stating: “We are working with governments and businesses
across the European Union to secure agreement to a Community
Patent, which would grant innovators IP protection throughout
the single market”.
This followed Commission Vice-President Günter Verheuegen’s comments to the European Patent Forum, at which he said he expected the Community Patent to become reality “in the next five years”.
Meanwhile, Portugal, which recently took over the EU
presidency, has outlined plans to progress discussions on a
European Patent Litigation System and the Community Patent.
The document “Towards an enhanced Patent Litigation System
and a Community Patent - How to take discussions further” was
presented to the Working Party on Intellectual Property and has
been published by the Council of the European Union. It
includes proposals for holding four Council Working Parties
during the second half of 2007 to try and progress these issues.
New UK Trade Mark Examination Practice
As reported in our recent News Release, UK Trade Mark examination practice will change significantly with effect from 1 October 2007.
The UK-IPO will no longer refuse Trade Mark Applications if they are considered too similar to existing UK or Community Trade Mark Applications or Registrations. It is now the responsibility of proprietors to police such earlier rights by filing oppositions or approaching the Applicants at the appropriate time.
Assuming that the subject Trade Mark is inherently registrable, the UK-IPO will now accept an Application for publication regardless of the existence of earlier conflicting rights. Before publication, the Applicant will still have the opportunity to limit or withdraw the Application in an effort to avoid the perceived conflict.
However, if the Application is maintained, and the Examiner believes that the conflict remains, the Application will be accepted and published for opposition purposes. At that time, any prior rights holders may be notified of the opportunity to file oppositions.
In this regard, prior UK rights holders will be notified
automatically, but Community Trade Mark (CTM) owners must “opt-in” and pay an accompanying fee in order to receive such
notifications. Inevitably, many CTM owners will prefer to cover
the UK as part of a broader Watching Service rather than opt-in
simply for the UK.
Therefore, a key point to note is that CTM rights holders must either “opt-in” or subscribe to a Watching Service if they are to be made aware of subsequently filed conflicting UK Trade Mark Applications and given the opportunity to oppose the same.
Please contact your usual Trade Mark Attorney for more information on this subject.
New UK Trade Mark Opposition Requirements
As part of its new examination practice, which comes into force on 1 October 2007, the UK-IPO has now changed the opposition requirements such that only the owner of an earlier Trade Mark or right can oppose a UK Trade Mark Application. However, a licensee may intervene in the proceedings once they have commenced. It is, therefore, even more important to ensure that the current owner is recorded on the Register.
For further information regarding the recordal of changes of name or assignment, please contact your usual Trade Mark Attorney.
Co-operation between UK, Japan and USA to speed up patent process
A pilot scheme of co-operation between the UK Intellectual Property Office (UK-IPO) and the Japanese Patent Office was launched in July to attempt to speed up the processing of Patent Applications in both countries.
The 12-month scheme will allow for accelerated examination on request in Japan or the UK if there has been an examination report issued on a corresponding Patent Application in the other country. When requesting the accelerated process, the Applicant will need to submit the search and examination reports issued on the corresponding Patent Application.
An equivalent scheme of co-operation between the UK-IPO and the US Patent and Trademark Office was launched in September. The pilot schemes follow the initial success of a similar scheme between the US and Japan.
The development of work sharing arrangements between the UK-IPO and other patent offices was a key recommendation of the Gowers Review of Intellectual Property, which was reported in our Spring 2007 Newsletter.
More referrals to the Enlarged Board of Appeal
Two more sets of questions have been passed to the European Patent Office’s Enlarged Board of Appeal (EBA), which issues definitive guidance as to how points of law should be interpreted.
The first referral, G1/07, related to the exclusion from patentability of methods of treatment by surgery.
The questions raise the issue of whether a method relating to a
diagnostic purpose, but which includes a step of physical
intervention practised on the human or animal body, is excluded
from patent protection as a “method for treatment of the
human or animal body by surgery” if that step does not per se
aim at maintaining life and health. In the referring case, the
method involved the injection of a contrast agent into the heart,
which therefore involved surgical intervention, but the purpose
of the method was to obtain data, which in itself did not treat
the human or animal in question.
The second referral, G2/07, related to another exclusion from
patentability, in this case the exclusion of plant and animal
varieties and essentially biological (except microbiological)
processes for the production of plants or animals.
The questions for referral to the EBA related to the relevant
criteria for distinguishing whether a given non-microbiological
plant production process is excluded or non-excluded. In
particular, the question was raised as to whether the inclusion of
an additional feature of a technical nature, in a claim to a nonmicrobiological process for the production of plants that
contains the steps of crossing and selecting plants, allows the
claim to escape the exclusion from patentability.
We will of course report when these decisions are issued from Enlarged Board of Appeal.
Indian Statements of Working
There has been a longstanding requirement for filing an annual
statement of working in respect of Indian Patents, but until
recently there had been little enforcement of this requirement
and it was therefore often overlooked. However, a law change
in India has increased the penalty for not filing a statement of
working to 1 million rupees (approximately £12,000). There are
also increased penalties for the filing of incorrect statements of
working.
It is therefore important that an accurate statement of working
is filed annually for granted Indian Patents, providing
information about whether the patented invention is utilised in
India, the value of patented product manufactured in or
imported to India, as well as details of the licences granted
under the Patent and whether public demand is being met.
New addition to the European Patent system
Norway is set to sign up to the European Patent Convention, becoming the 33rd member state.
As a participant and signatory at the 1973 Munich diplomatic conference that began the present European Patent system, Norway has been entitled to join since the European Patent Office was founded - in contrast, other countries have to be invited to accede. However, until now, Norway’s parliament has not taken the necessary action to bring the European Patent Convention into force in its country.
A majority vote in the parliament has now approved the accession. It is understood that Norway will deposit the instruments of ratification in October, so that it will become a member on 1 January 2008.
The accession will not be retroactive and therefore only European Patent Applications with a filing date on or after the accession date will be able to designate Norway.
Progress made on translation agreement
France has passed a bill authorising ratification of the London
Agreement, which was drawn up with the aim of creating a
more cost attractive post-grant regime for European Patents.
The Agreement reduces the requirement for full translations
when bringing granted European Patents into force in the states
of interest.
The London Agreement will come into effect no later than four months after eight signatories, including France, Germany and the UK, have ratified the Agreement. As there are already sufficient countries signed up, including Germany and the UK, the ratification by France will cause the Agreement to come into force, with a likely date of effect during the first half of 2008.
The countries in which the London Agreement would be
expected to take effect are France, Germany, the UK, the
Netherlands, Switzerland, Liechtenstein, Iceland, Latvia,
Monaco, Slovenia, Sweden and Denmark. In non-signatory
countries the translation requirements will remain unchanged.
Public consultation on inventive step
The UK Intellectual Property Office (UK-IPO) recently carried out a survey regarding the way in which inventive step is examined in the UK, in order to ascertain whether any improvements can be made. Patent Offices examine Patent Applications for compliance with a number of criteria; one of these being that the claimed invention has an inventive step over what is known. The conclusions of the consultation were that:
• No change to the basic UK patent practice as it relates to
inventive step is required;
• There is possible inconsistency of application of the inventive
step test in high technology subject areas - this will be
investigated further;
• Continuing professional development for examining staff at
the UK-IPO will emphasise the need to keep technological
knowledge up to date, and to refine searching skills continually;
• Use of the facility to make third party observations on
patentability will be encouraged.
A more detailed article is available on request
