DEVELOPMENTS IN IP
- New Addition to the European Patent System
- Community Trade Mark - Official Searches are now Optional
- Dramatic EPO Fee Increases
- Reduced Translation Costs for European Patents
- Fast Track UK Trade Mark Applications
- International Registered Design System
New Addition to the European Patent System
Croatia has joined the European Patent Convention (EPC), becoming the 34thmember state, with effect from 1 January 2008. Croatia was previously an extension state of the EPC.
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 Croatia as a full member state.
Norway also became an EPC member state from the start of this year, as referred to in our Autumn 2007 Newsletter.
Community Trade Mark – Official Searches are now Optional
The national searches that are conducted during a Community Trade Mark (CTM) application have recently been made optional by the CTM Office.
Whilst the Office will continue to produce a search report from the CTM Register, national searches will no longer be carried out unless they are explicitly requested. In the case of an application filed directly, the searches must be requested at the time of filing. In instances where the CTM has been designated via an International application, the searches must be requested within one month from the date of receipt of the application by the Office.
The official fee for the national searches is 192 Euros, covering the 16 countries that presently offer the service.
Although the national searches are not very comprehensive, particularly in the case of device marks, they remain a cost effective way of seeking to identify potential conflicts in the countries that offer this service.
Dramatic EPO Fee Increases
In what some have seen as a continued attempt by various Patent Offices to deter too many claims and large applications, the EPO has made changes to its fee structure. The first change came into effect on 1 April 2008, and the second is due to follow a year later.
Previous EPO practice required that an excess claims fee of 45 Euros be paid for each claim over 10. As of 1 April 2008, claims 1 to 15 do not attract a claims fee, but an excess claims fee of 200 Euros per claim is payable for claims 16 and above.
Further, from 1 April 2009, claims from 16 to 50 will still have a fee of 200 Euros per claim, but for claims above 50 the excess claims fee will be 500 Euros per claim. Clearly, this is quite a stinging increase for cases with a large number of claims. It may even be cheaper to file two applications, rather than have many claims over 50.
Many other EPO fees were also changed on 1 April 2008. Whilst many of these were increases of the order of about 5%, renewal fees for the 4th year onwards have been increased by at least 17% each, with a massive 56% increase for the5th year renewal fee. Additionally, the surcharge for late payment of renewal fees, during a six-month grace period, has increased from 10% to 50%.
Finally, it should be noted that, from 1 April 2009 there will also be an extra fee due on filing if the application exceeds 35 pages. 12 Euros will be incurred for each page above 35 pages (excluding sequence listing pages). This will replace the fee currently due on grant for printing patents having over 35 pages. Therefore, there will be greater motivation to ensure that, from the outset, patent applications are not unnecessarily long.
Reduced Translation Costs for European Patents
Further to our Autumn 2007 Newsletter, the requirements for the London Agreement to enter into force have been completed, following ratification by France in January 2008, and the Agreement came into force on 1 May 2008.
The London Agreement reduces the need for translations of the full granted patent when bringing European patents into force in the required countries through the validation procedure. For signatory countries that have a national language of English, French or German, no translation will be required as part of the validation procedure – although the claims must still be translated so as to be in all three of these languages during the grant procedure. For all other signatory countries, English, French or German is nominated and, if the granted European patent is in this nominated language, then no more than the claims need be translated as part of the validation procedure. So far, all signatory countries have included at least English as their nominated language.
The countries that have ratified the London Agreement are France, Germany, the UK, the Netherlands, Switzerland and Liechtenstein, Iceland, Latvia, Monaco, Slovenia, Denmark, Sweden, Croatia and Luxembourg. For countries that have not ratified the Agreement, the translation requirements for the validation procedure will remain unchanged.
For more information about how the London Agreement will affect your European patents, please contact your usual Patent Attorney.
Fast Track UK Trade Mark Applications
The UK Intellectual Property Office (UK-IPO) is now offering a “fast track” option for UK Trade Mark registration. This system will provide for the examination of an application within 10 business days of receiving the application form and accompanying fees. All other aspects of the prosecution of the application remain unchanged.
The following conditions apply for fast track applications:
• The application must be filed electronically
• The fees (to include an additional official fee of £300) must be paid at the time of filing
• Only one Trade Mark can be identified – an application for a series of marks cannot be fast tracked
Early examination of an application under this system may be desirable if the applicant is close to launching the associated goods or services or to issuing legal proceedings.
The UK-IPO is also taking steps to reduce the length of time it takes to examine standard Trade Mark applications to 4 weeks but, at present, selecting to fast track an application could help reduce the time taken to register a mark in the UK by a number of weeks.
International Registered Design System
Further to the report in our Spring 2007 Newsletter, the EU is now a member of the Hague Agreement on Industrial Designs. This provides for the filing of a single International application to obtain Registered Design protection in those countries that have signed up to the same Act of the Hague Agreement.
An International application is centrally examined for formal requirements and, once registered, the designs are also renewed centrally. However, substantive matters fall under the remit of each national office. In this regard, provided that the design is not refused by a member country for failing to meet its national requirements within a specified period after publication, the design is automatically given protection in that country.
The EU signed up to the Geneva Act of the Hague Agreement with effect from1 January 2008. Therefore, parties based in an EU member country may now file Registered Design applications under this system, which will have effect in those countries that are also signed up to the Geneva Act.
Many of the current signatories to the Geneva Act are countries in central and Eastern Europe, as well as some countries in Africa and central Asia. Additionally, it is understood that the US will sign up to the Geneva Act of the Hague Agreement later this year, following a vote in the US Senate in December2007 to ratify this Act.
