WIPO
New Multilingual Interface for ePCT:
WIPO launched the multilingual interface of ePCT, marking a major expansion of its global gateway for online filing and management of international patent applications. read more
Nine More Languages Now Supported in International Patent Application Filing and Management. The ePCT user interface is now available in Arabic, Chinese, French, German, Japanese, Korean, Portuguese, Russian and Spanish.
Lebanon
New Requirement for Powers of Attorney.
The Lebanese Ministry of Economy & Trade recently issued new a memorandum requiring that all powers of attorney of foreign applicants must be legalized by the Lebanese Consulate abroad. read more
The ruling affects all IP matters related to Trademarks, Patents and Industrial Designs (including renewals, changes of name, address and assignments).
UAE
Increase in Official Fees:
On 29 May 2015, the announced increase in Official Fees comes into effect. Pursuant to Ministerial Resolution no. 9 of 2015, the official fees for trademark matters have doubled almost across the board in comparison with their current level. read more
The increase will also affect patent filings and title updates but annuity maintenance fees will not be subject to any change.
China
New guidelines on application of the Anti-Monopoly Law to intellectual property rights.
China's State Administration for Industry and Commerce finally has released its guidelines on the application of the PRC Anti-Monopoly Law ("AML") to intellectual property rights ("Guidelines"). read more
The Guidelines will come into force on August 1, 2015. Among other things, it rules on safe harbor for technology agreements, it prohibits specific contractual clauses, it includes a list of conducts that are prohibited for patent pools with a dominant position and contain specific provisions dealing with the standard essential patents context.
Brazil
On March 16, 2015, the INPI published in the Official Gazette the draft guidelines for patentable subject matter and patentability requirements for substantive examination:
The draft rules on patentable subject matter, patentability requirements and their examination by the INPI per se, with specific provisions in relation to novelty, read more
inventive activity, industrial application, as well as definition of prior art and the person skilled in the art, non-patentable subject matter and Markush formulas. These guidelines are subject to public consultation until May 14, 2015.
Kazakhstan
Developments in IP legal issues
The IP legal framework was amended on 7 April 2015, coming into effect on 20 April 2015. read more
This Law introduced amendments regarding exhaustion of rights and parallel import, it simplifies the process to register the assignment and license of trademarks, reduces the timing for trademark registration and changes the list of absolute grounds to reject a trademark registration.
Qatar
Changes on the payment of patent annuity fees:
The Qatar IP Office stated that annuity fees must be paid along with the filing fees for all new PCT patent applications. Annuities shall be calculated as of the International filing date and not the actual filing date in Qatar. read more
Consequently, in addition to the filling fees, the 2nd and, if applicable, the 3rd annuity fees will need to be paid at the time of filing the national application.
Venezuela
Increase in Official Fees:
On May 5, 2015, the Venezuelan PTO published the new increased fees for all IP matters in Venezuela. read more
The new increased fees are exorbitant and the local association of Industrial Property Agents filed an appeal with the Supreme Court hoping to block the increase in official Fees. As of May 28, 2015, foreign applicants/owners will have to pay such fees in US Dollars directly to the PTO's account.
Taiwan
Deferment of substantive examination:
As of April 1st, 2015, the TIPO accepts requests for deferment of substantive examination of an invention patent application at the same time of requesting such examination or thereafter but, in any case, within 3 years of the application filing read more
For applications which claim priority, the first date for calculation of this time limit is the date on which the application concerned is filed with the TIPO.
China - Singapore
Memorandum to promote Trademark registration cooperation:
On 18 May 2015, China and Singapore signed a Memorandum of Understanding on trade mark cooperation enhancing exchanges on trade mark registration, examination practices, protection and enforcement. read more
Among other things, pursuant to this memorandum Singapore and China will exchange information and best practices related to trade mark registration and protection, develop capacity-building activities such as training on the examination of trade marks, oppositions, and dispute resolution, proceedings, Facilitate exchanges of IP officials and experts and conduct joint activities such as conferences on developments in the field of trade mark.
British Virgin Islands
New Trade Marks Act and a last chance to file UK-based applications.
A new Trade Marks Act comes into force on 1 September 2015. Among other things, a new scale of official fees will be introduced read more
and the present "dual" registration system, which permitted an application to be filed independently or based on a UK registration, will be omitted.
Egypt - Japan
Patent Prosecution Highway.
Egypt and Japan began a two-year PPH agreement pursuant to which applications accepted to be granted in Japan may be subject to an accelerated examination in Egypt if the applicants request it. read more
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Phillipines - Korea
Patent Prosecution Highway program.
The Intellectual Property Office of the Philippines (IPOP) and the Korean Intellectual Property Office (KIPO) have started a 2 year pilot Patent Prosecution Highway (PPH) program. read more
The PPH allows applicants to a fast-track examination by using the examination conducted by the office or vice versa.
Australia - China
Signature of Free Trade Agreement:
The Governments of Australia and China signed on June 17th, 2015, signed a Free Trade agreement with a number of IP implications. read more
Among other things, both countries agree to cooperate to protect registered trademarks as well as collective marks or marks that acquire protection through use and applicants will be provided with the opportunity to amend or correct applications.
WIPO
PCT - Amendments for restoring the right of priority.
Effective July 1st, 2015, a requirement has been introduced, for applicants making an express request for early national phase entry, to file any request for the restoration of the right of priority at the designated or elected Office... read more
within one month from the date of receipt of the request for early national phase entry (rather than one month from the expiration of the normal period for entering the national phase);
Korea - Taiwan
Memorandum of understanding for patent cooperation in PPH.
Under the PPH Program, if one of the claims of an invention application is determined to be allowable in either Patent Office, read more
the application will be eligible for accelerated examination in the counterpart Office. In accordance to this memorandum, the applicability of PPH does not limit to the scenario where office actions from the Office of First Filing should be issued prior to those from the Office of Second Filing. Additionally, both offices will also exchange priority documents by electronic means.
Japan - Taiwan
Guidelines for Cooperation on the Deposit of Biological Materials in Relation to Patent Procedure.
Japan and Taiwan agreed on a Cooperative Program which serves the purpose of saving patent applicants - redundant efforts to deposit multiple duplicates of the biological materials, or microorganisms, read more
in each respective country where the application is filed. The Guidelines provide a procedural standard for a series of measures for depositing biological materials under the Cooperative Program.
Singapore
Intellectual Property Office of Singapore to Begin Operating as ISA, SISA and IPEA:
Following the appointment, at the 46th session of the Assembly of the PCT Union which was held in September 2014, of the Intellectual Property Office of Singapore (IPOS) as International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the PCT read more
(see PCT Newsletter No. 10/2014), the Office has notified WIPO that it will begin operating as ISA and IPEA with effect from 1 September 2015. Furthermore, it will also act as an Authority specified for supplementary search (SISA).
WIPO
PATENT PROSECUTION HIGHWAY: More Offices join the Global PPH pilot:
On 6 July 2015, the Estonian Patent Office and the German Patent and Trade Mark Office joined the Global PPH (GPPH), bringing the number of Offices that have signed up to the pilot to 21. It is recalled that under this pilot, it is possible for a request for accelerated processing to be made at any participating office based on work products read more
(including, where applicable, a PCT written opinion from either the ISA or the IPEA, or an international preliminary report on patentability (IPRP) (Chapter II)), from any one of the other participating offices, provided that at least one claim has been found to be patentable by the office of earlier examination, and that any other applicable eligibility criteria are met. The pilot uses a single set of qualifying requirements and aims to simplify and improve the existing PPH network to make it more accessible to users.
Argentina
Increased official fees.
The Argentine Patent and Trademark Office has increased the official fees. A first increase will become effective on August 8, 2015, while a second increase is scheduled to become effective on October 1, 2015. Here follows a list of the current and future official charges for the main items. Kindly note that the specific amounts may vary depending on the actual rate of exchange read more
Item Current Aug 8, 2015 Oct 1, 2015
Trademark Application USD 65 USD 75 USD 83
Trademark Renewal USD 82 USD 94 USD 104
Trademark Opposition USD 52 USD 60 USD 67
Design Application USD 65 USD 75 USD 83
Design Renewal USD 65 USD 75 USD 83
Basic Patent Application
- up to 10 claims USD 196 USD 225 USD 248
- each claim in excess of 10 USD 9 USD 10 USD 11
Expedited Publication USD 33 USD 38 USD 41
Substantive examination request
- up to 10 claims USD 163 USD 188 USD 207
- each claim in excess of 10 USD 9 USD 10 USD 11
Annuities 1-3 (each) USD 65 USD 75 USD 83
Annuities 4-6 (each) USD 163 USD 188 USD 208
Annuities 7-20 (each) USD 326 USD 375 USD 413
Europe
EPO announces Top 4 fee schedule for unitary patents.
The EPO has now answered this question with an announcement on 24 June 2015 that unitary patent renewal fees will be set using the so-called 'Top 4' fee schedule, which will be reviewed in four years' time. read more
It seems reasonable to expect that the fee schedule will increase ahead of inflation over the next decade as more countries joint the system. A detailed analysis of renewal costs needs to be made to evaluate the potential costs, depending on the number of countries interesting for the applicant, with the corresponding risks of using the unitary system.