News Release
- Final registration fee to be abolished for Community trade mark application
- Timeframe for filing European divisionals to be restricted
- New burdens placed on applicants for European patent applications
Final registration fee to be abolished for Community trade mark application
Until now, in addition to the official filing fee paid on filing a Community trade mark (CTM) application, a final registration fee has also been payable. This registration fee is expected to be abolished with effect from 1 May 2009.
The aim of the associated transitional provisions is to minimise the burden on proprietors of applications that have already been filed, whilst providing an early financial advantage to all new applicants. Hence upon implementation, it is proposed that no registration fee will be demanded so long as an existing applicant has not been asked to pay the final registration fee at the time the new system comes into force.
When the new fee system comes into force, the official filing fee will be marginally increased to partially compensate for the abolition of the registration fee. Nonetheless, the proposed changes will bring about an overall reduction in the costs of obtaining a CTM registration, making such an even more attractive proposition than a bundle of national EU filings.
For further information on the new costs for filing and registering a CTM, please contact your usual trade mark attorney.
Timeframe for filing European divisionals to be restricted
With effect from 1 April 2010 there will be a dramatic change to European practice relating to divisional applications. From that date European law will only permit the filing of divisional applications within strict time limits, meaning that decisions about whether further subject matter should be pursued will need to be made at a much earlier stage in proceedings.
Currently, a European divisional application may be filed at any time while the parent application is still pending, i.e. up until the day before the parent patent grants. Further generations of divisional applications can, in turn, be filed out of each pending divisional application.
However, the President of the European Patent Office (EPO) has been looking to apply
more restrictive time limits as there have been feelings expressed that the system of
divisional applications has been abused by applicants. It is not uncommon for divisional
applications to be filed with the same claims as the parent case, leading to the work of
the EPO effectively being duplicated. Also of concern is the issue of a number of
cascading divisionals being filed over the twenty year term of a patent, creating long
term legal uncertainty for third parties as to the rights that will be granted. The Enlarged
Board of Appeal, in G1/05, commented on the “unsatisfactory” situation and indicated
that if administrative measures were not adequate, a rule change might be necessary.
The Administrative Council of the EPO has now approved a proposed change put forward by the President. Under this change in law the deadline for filing divisional applications will normally be 24 months from the Examining Division’s first communication on the original parent application. However, if an objection of lack of unity of invention is raised by the Examining Division, then the deadline for filing divisional applications is extended to 24 months from the communication in which the Examining Division first raises the unity of invention issue.
It may therefore be possible to re-start the clock after the initial 24 month period has expired, by making an amendment that provokes an objection of lack of unity. However, it should be borne in mind that the applicant can only make voluntary amendments as of right at an early stage in the proceedings; subsequent amendments require discretion to be exercised unless they clearly have been made to address an objection of the Examining Division.
Therefore, it would seem advisable, under the new system, to consider all potentially patentable subject matter within the original application, and to file one or more divisional applications to cover this subject matter within the 24 month timeframe.
When the new system comes into effect on 1 April 2010 we understand that there will be a six month grace period within which divisional applications may still be filed from any pending patent applications, even if the 24 month deadline has expired. However, even at this early stage, applicants may wish to start reviewing their applications with a view to whether a divisional application might be needed, rather than deferring the decision.
New burdens placed on applicants for European patent applications
With effect from 1 April 2010 significant changes will occur relating to the searching of European patent applications. For all search reports issued from that date, a response must be filed to the written opinion accompanying the search report if the application is not to be deemed withdrawn.
For directly filed European patent applications, divisional applications and regional phase applications from a PCT application where the European Patent Office (EPO) did not carry out the International search, then the applicant will be set a term for response equivalent to the deadline for requesting examination or confirming the examination request.
If, however, the application is a regional phase application from a PCT application where
the EPO carried out the International search, then this International search is deemed to
be the European search and a response to the issues raised in the written opinion
accompanying the International search report must be filed shortly after the regional
phase filing. The response term will be set by the voluntary amendments communication,
which has a one month deadline for response. This will apply for any cases where the
voluntary amendments communication has not issued before 1 April 2010. Therefore, for
PCT applications where the EPO is the International Search Authority, if the applicant
wishes to avoid being compelled to respond to the Examiner shortly after filing in
Europe, then consideration should be given to filing the European regional phase
application at least a few months before 1 April 2010.
Additionally, the changes will mean that the ability to file amendments as of right will end with the filing of a response to the written opinion; all subsequent amendments will be at the Examiner’s discretion. This is a significant change from current practice which permits voluntary amendments by the applicant up until the response to the first substantive examination report.
The law change will also make it a requirement to identify all amendments made and their basis in the application as filed; if this requirement is not complied with the Examiner may set a one month term for this information to be provided.
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