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WIPO

New Treaty on genetic resources and associated traditional knowledge

After more than 20 years of negotiations, the consensus reached on May 24 in Geneva (Switzerland) by the diplomatic conference of the World Intellectual Property Organization has made it possible to sign a new International Treaty that regulates genetic resources and the traditional knowledge associated with ...

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HIGHLIGHTED NEWS




NEWS JANUARY 2024 - DECEMBER 2024

BRAZIL

BRAZIL: BRPTO reaches its annual limit for PPH applications

The Brazilian Patent and Trademark Office (BRPTO) announced on July 16th, 2024 that the annual limit of 800 applications to participate in Phase IV of the Patent Prosecution Highway (PPH) pilot project has been reached for 2024. This milestone reflects the growing interest and commitment to Brazil's streamlined patent prosecution initiative.

As stated in Article 5, item V, of INPI/PR Ordinance No. 78/2022, BRPTO will not accept new PPH applications for the remainder of this year. The PPH program will resume in 2025 and new updated rules covering the examination results of new participating Offices in the Global Patent Prosecution Highway (GPPH) are also expected.

BRAZIL

Brazilian PTO joins Global Patent Prosecution Highway (GPPH)

The Brazilian Patent and Trademark Office (BRPTO) has announced its involvement in the Global Patent Prosecution Highway (GPPH), which started on July 6, 2024, and is extending collaboration with over 10 new partner Offices.

The GPPH, coordinated by the Japan Patent Office (JPO), is a multilateral cooperation program involving 27 Intellectual Property Offices worldwide with the aim to expedite patent prosecution by allowing the sharing of examination results among participating Offices, including those from the Patent Cooperation Treaty (PCT).

Currently, the BRPTO has bilateral Patent Prosecution Highway (PPH) agreements with 23 national and regional Offices. With the addition of the GPPH, this network expands to 35 partner Offices.

The existing rules under the PPH, as defined in INPI/PR Ordinance No. 78/2022, will remain in force until the publication of the updated rules covering the examination results of the new partner Offices, and will be applicable as from their official inclusion.

The implementation of the GPPH is consistent with the 2023-2025 Action Plan of Brazil's National Intellectual Property Strategy (ENPI), reinforcing the commitment to streamline patent procedures and foster innovation.

WIPO

New Treaty on genetic resources and associated traditional knowledge

After more than 20 years of negotiations, the consensus reached on May 24 in Geneva (Switzerland) by the diplomatic conference of the World Intellectual Property Organization has made it possible to sign a new International Treaty that regulates genetic resources and the traditional knowledge associated with them, and their protection against abuses by third parties through Intellectual Property rights.

International law already protected genetic resources and traditional knowledge before the signing of this Treaty. In the face of "biopiracy", the 2010 Nagoya Protocol established certain rules, whereby "users" of genetic resources and associated traditional knowledge are obliged to obtain permission and enter into agreements with the "providers" of such resources and the holders of traditional knowledge, in order to share the results of their research and development activities. However, although this Protocol establishes general lines of good intentions, it does not cover Intellectual Property rights at any time.

In order to access the full text of our newsletter, please click on the link below, "Complete bulletin in PDF".

BRAZIL

BRPTO launches new platform to fight trademark counterfeiting

On June 17, 2024 the Brazilian Patent and Trademark Office (BRPTO) launched a new platform to fight trademark counterfeiting.

This platform introduces a functionality that allows regulatory authorities to quickly access the contact information of trademark representatives.

This new feature is intended to improve the timeliness and effectiveness of anti-counterfeiting activities across the country by immediately identifying the representative of potentially affected trademarks. This is crucial, as the involvement of trademarks is necessary to proceed with the administrative process of seizing counterfeit products.

EUROPE

Sports Piracy and Counterfeiting this summer

The European Union Intellectual Property Office (EUIPO) has recently released alarming data indicating a concerning increase in the illicit consumption of sports broadcasts and the sale of counterfeit sports equipment across Europe. This summer, major events such as the UEFA European Football Championship, the Tour de France, and the Paris Olympic and Paralympic Games are expected to attract significant viewership. However, these events also present a substantial opportunity for piracy and counterfeiting activities.

The EUIPO estimates that approximately 12% of the EU population, meaning 54 million Europeans, will resort to illegal sources to watch sports. This percentage increases significantly among younger viewers aged 15 to 24, reaching 27%. Spain stands out as a particularly high-risk market, with 42% of its young population admitting to consuming pirated content, only surpassed by Bulgaria.

The financial implications are severe. The sale of counterfeit sports equipment results in losses exceeding €850 million annually for manufacturers. Furthermore, the illicit distribution of live sports events has a detrimental impact on the financial stability of the sports industry. Intellectual Property rights are a vital source of revenue to support athletes and sports organizations.

The fight against sports piracy and counterfeiting is of critical importance, not only for the protection of economic interests, but also for the assurance of the safety and quality of sports equipment. It is often the case that counterfeit products fail to meet the necessary safety standards, thereby posing a significant health risk to consumers.

As we enjoy this summer’s sporting events, let us pledge to support only legitimate sources and maintain the integrity of the sports industry.

EUROPE

Financial Times publishes 2024 ranking of Europe's Leading Patent Law Firms

UNGRIA has been recognized by the Financial Times as one of Europe's 2024 Leading Patent Law Firms for the second consecutive year.

We have also been especially recommended in all 6 areas of industrial expertise that the ranking covers:

(i) Biotechnology, Food & Healthcare,

(ii) Chemistry & Pharmacy,

(iii) Electrical Engineering & Physics,

(iv) IT & Software,

(v) Materials & Nanotechnology, and

(vi) Mechanical Engineering.

Behind this achievement is our leading patent team of 11 European Patent Attorneys, 4 UPC Qualified Patent Litigators, 8 Spanish Patent Attorneys and 30 Patent Engineers who provide our clients with highly-qualified advice in order to firmly file, prosecute and protect their intangible assets in Europe and Latin America.

We would like to sincerely thank our clients for their continued trust in us. UNGRIA continues growing based on our strong belief about the importance of high-quality, commitment and honesty in our services.

Finally, we would like to thank the Financial Times for this recognition.

Please click on the following link to access the ranking:Financial Times

URUGUAY

Accession to the Patent Cooperation Treaty (PCT)

Yesterday, June 11, 2024, the Uruguayan Senate unanimously approved the country's accession to the Patent Cooperation Treaty (PCT) with the reservation of Chapter II.

BRAZIL

BRPTO publishes a technical note on industrial design examination procedures

On May 27, 2024, the Brazilian PTO issued Technical Note #01/2024, describing procedures for conducting substantive analysis of industrial designs. The technical note addresses the official correction only of formal data in industrial design applications in order to expedite prosecution procedures. The note establishes that the elements in the Substantive Examination must follow the current Industrial Design Manual.

MEXICO

The Ongoing Challenges in the Implementation of Mexico's Intellectual Property Law: Divisional patent applications originating from another divisional application

As members of the Boston Intellectual Property Law Association (BIPLA), we are honored to share UNGRIA's contribution to its Winter/Spring 2024 Newsletter. Victoria Mejía, Director of UNGRIA MEXICO, authored the following article: «The Ongoing Challenges in the Implementation of Mexico's Intellectual Property Law: Divisional patent applications originating from another divisional application».

The latest edition of BIPLA's newsletter is now available for your perusal. We cordially invite everyone to read and explore its contents by clicking the following link: https://newsletter.bipla.org/winter-spring-2024

UNGRIA

Five-year strategic and development plan, April 2024

Last April, we held the presentation of our five-year strategic and development plan at the Thyssen-Bornemisza National Museum, in which all members of our Spanish offices participated.

It was a unique opportunity to reaffirm our commitment to excellence, innovation and dedication to our professional activity. Together, we continue to work to be at the forefront of change so that we can continue to provide our clients with high quality technical and legal advice.

The work and commitment of our team in the protection and defense of our clients' intangible assets and their trust in us have allowed us to continue growing since 1891 in Spain and Europe as well as in the United States, Argentina, Brazil and Mexico.

On behalf of UNGRIA we thank all those who are part of our history and we hope to continue building a promising future together.

EUROPE

New Artificial Intelligence Regulation

Last March, by means of a Legislate Resolution of the European Parliament, dated March 13th, 2024, the new European Regulation on Artificial Intelligence (Artificial Intelligence Act) was approved. The European Union takes a major step to get ahead in the race to regulate artificial intelligence. The referred rule was created with the primary goals of:

- Ensuring that artificial intelligence systems used in the European Union and introduced in the European market are safe and guarantee the protection of fundamental rights.

- Encourage investment and innovation in the field of artificial intelligence in Europe.

The approved text refers to an artificial intelligence system (AI system) as “a machine-based system, designed to function with diverse levels of autonomy, that can exhibit post-deployment adaptability and that, for explicit or implicit objectives, infers from the input information it receives, how to generate output information, such as predictions, content, recommendations, or decisions, that can influence physical or virtual environments.”

In order to access the full text of our newsletter, please click on the link below, "Complete bulletin in pdf".

WIPO

World Intellectual Property Day

In 2015, all Member States of the United Nations adopted 17 goals as part of the 2030 Agenda for Sustainable Development.

"The Sustainable Development Goals (SDGs) are a call to end poverty, protect the planet and improve the lives and prospects of individuals around the world".

The World Intellectual Property Day is celebrated every year on April, 26th. This year, the chosen slogan by the World Intellectual Property Organization – WIPO is "IP and SDGs: Our common future is forged with innovation and creativity".

BRAZIL

BRPTO extends the deadline suspension for filing divisional design applications

On April 16th, 2024, the Brazilian Patent and Trademark Office (BRPTO) issued Ordinance No. 15/2024, published in Official Bulletin No. 2780. This Ordinance extends the deadline suspension for filing divisional design applications (BR 32) in response to an office action. The extension period started on April 1st and will end on April 30th, 2024.

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EUROPE

Amendments to the Rules of Procedure of the EUIPO’s Boards of Appeal

On December 22nd, 2023, the Official Gazette of the European Union published Regulation (UE) 2023/2437, amending the Rules of Procedure of the Boards of Appeal of the EUIPO - European Union Intellectual Property Office. This Regulation entered into force on March 1st, 2024.

One month after its entry into force, we analyze the main amendments introduced by the new Regulation, highlighting its implications for the parties and their representatives.

These modifications aim to improve procedural efficiency, transparency and accessibility within the European Union Intellectual Property (IP) framework.

We summarize in our newsletter the main changes, which refer to: (I) extensions of time; (II) suspension of proceedings; (III) alternative dispute resolution at the appeal stage; and (IV) quality control of decisions.

Overall, the amendments introduced by Regulation (EU) 2023/2437 reflect a significant step in strengthening the appeals procedure, facilitating inter partes agreements and eventually improving the protection of IP rights. It also promotes, at the same time, a more accessible and transparent system.

Regulation (EU) 2023/2437 represents a comprehensive effort to improve the procedural framework regulating the resolution of European Union Trademarks and Community Designs disputes within the European Union. By focusing on simplifying proceedings, improving transparency, promoting accessibility and inter-party agreements, as well as quality assurance, this Regulation seeks to strengthen the efficiency and effectiveness of the appeals procedure within the EUIPO.

In order to access the full text of our newsletter, please click on the link below, "Complete bulletin in PDF".

EUROPE

The European Patent Office (EPO) publishes the Patent Index 2023 report

On March 19th, the European Patent Office (EPO) published the Patent Index 2023 report.

During 2023, patent filings at the EPO increased by 2,9%, reflecting a dynamic landscape of innovation, particularly in digital and green technologies. This growth underscores Europe's enduring appeal in the global technology market, as evidenced by remarkable increases in filings from China and Korea.

The EPO received a record-breaking 199.275 patent applications in 2023, indicating a rising focus on innovation to address global challenges, with advancements in digital and green technologies at the forefront.

Notably, European applicants remained consistent in their contributions, while the influx of applications from outside Europe highlights the continent's attractiveness to innovators worldwide.

Furthermore, a noteworthy portion of patent applications from Europe stemmed from individual inventors and small to medium-sized enterprises, underscoring diverse sources of innovation.

Eight of the top ten patent-active fields experienced growth, with notable increases in electrical machinery, apparatus, and energy (+12,2%), digital communication (+8,6%), and biotechnology (+5,9%).

These sectors are pivotal in shaping a more sustainable and interconnected world, with technologies like clean energy solutions and artificial intelligence driving innovation.

Digital technology fields, including artificial intelligence and battery technology, exhibited robust growth, while some areas in chemistry and mechanical engineering experienced stagnation or decline.

European applicants continued to show steady growth, with Germany leading the pack, while notable increases were observed from countries such as Finland, Spain, and the UK. Additionally, filings from China and Korea surged, reflecting the growing prominence of these regions in the global innovation landscape.

Over 104.600 patents were granted in 2023 – 17,5% of these patents requested the new Unitary Patent. European patentees were particularly keen, with 25,8% opting for the Unitary Patent, accounting for nearly two-thirds of all Unitary Patents.

The 2023 statistics underline the increasing global appeal of Europe's technology market. With a wide and diverse range of sectors experiencing growth and the introduction of the Unitary Patent, the EPO continues to play a pivotal role in promoting innovation and technological advancement.

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BRAZIL

BRPTO updates its guidelines for filing patent appeals

The Brazilian PTO recently updated its Guidelines for Filing Appeals and Post-Grant Oppositions to appeals. These guidelines are set in BRPTO's Ordinance No. 10, published in Official Gazette No. 2774 on March 4, 2024, which replaces previous Ordinance No. 7. They have taken effect on March 19, 2024.

These updates specifically address cases in which the required amendment brief, as outlined in the BRPTO's presidency order published in the Official Gazette No. 2764 on December 26, 2023, was not filed. These changes apply to appeals involving patent applications that received their initial technical opinion (publication code 6.1) or acknowledgement of technical opinion (publication code 7.1) before April 1, 2024. The General Coordination of Appeals (CGREC) has issued an office action requiring appellants to demonstrate and substantiate the technical impossibility of adhering to the Guidelines for Filing Appeals and Post-Grant Opposition Proceedings.

The new guidelines are effective immediately

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BRAZIL

BRPTO implements new rules on amendments to patent applications during the appeal stage

On February 27th, 2024, the Brazilian Patent and Trademark Office (BRPTO) published in the Official Bulletin No. 2773, new rules on amendments to patent applications during the appeal stage.

In summary, when amending rejected claims, applicants may make restrictive adjustments aimed at addressing objections raised during the initial examination, subject to certain criteria:

A. Amendments should directly address the reasons for rejection. Those unrelated to the rejection grounds will not be considered.

B. Changes should impose logical constraints on rejected claims. Subject matter removed during the initial examination cannot be reintroduced.

C. Restrictive changes must be consistent with dependent claims or result from a combination of independent/interconnected claims. Limitations based solely on the specification and not included in the rejected claims will not be accepted.

D. Changes to the application's nature are not permitted unless discussed during the initial examination. For instance, a patent application cannot be converted into a utility model application during an appeal without prior consideration.

The BRPTO will accept petitions to amend previously filed appeals until April 2nd, 2024.

In order to access the full text of our newsletter, please click on the link below, "Complete bulletin in PDF".

EUIPO

Balancing Practicality with Good Faith

The practice of refiling trademarks in unused classes presents a fascinating legal dilemma. While it offers practical advantages, recent interpretations suggested it could be deemed fraudulent if used to circumvent legal requirements. This note delves into this issue through a specific case: Cancellation No C 52 111, where an application to declare a trademark invalid due to alleged bad faith refiling was rejected.

The applicant argued that the owner, Benetton Group S.R.L., refiled the trademark in unused classes to avoid proving use of an earlier mark and evade potential revocation. However, the Cancellation Division of EUIPO - European Union Intellectual Property Office ultimately ruled against the applicant due to:

- No explicit prohibition on refiling: Current legislation does not explicitly prohibit refiling.

- Insufficient evidence of bad faith: The applicant failed to demonstrate that the owner's sole intention was to avoid legal obligations or prevent third-party competition.

- Legitimate reasons for refiling: Refiling can be justified for maintaining opposition rights against similar trademarks and preventing unauthorized use in unused classes.

This case highlights the complexities surrounding trademark refiling. While not inherently illegal, it requires careful consideration to avoid accusations of bad faith and ensure compliance with the spirit and letter of trademark law.

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CHINA

Amendments to the Rules for the Implementation of the Patent Law

Amendments to the Rules for the Implementation of the Patent Law, issued by the National Intellectual Property Administration (CNIPA), have become effective last January 20th. These modifications bring the regulations more in line with those in force in the most relevant Intellectual Property jurisdictions. Among them, we can highlight some of the most interesting ones, such as the elimination of the 15-day post time for official communications delivered electronically; new deadlines for the restoration, addition or correction of priority; possibility of correction through incorporation by reference; introduction of the principle of good faith as a ground for rejection; recusation of examiner in reexamination; possibility of deferred examination; new rules for partial designs; or the introduction of patent term adjustments and patent term extensions.

You can access the new regulations through the following link:

Complete bulletin.

EUROPE

Headquarters Agreement signed between Italy and Unified Patent Court

On January 29, 2024, the Italian Foreign Ministry and the President of the Court of Appeal of the Unified Patent Court (UPC), Klaus Grabinski, signed in Milan the “Headquarters Agreement” that brings the third seat of the UPC Central Division to Milan. Technology areas under the competence of this section will be less than those originally assigned to London. It will have jurisdiction over patent disputes in the “Human Necessities” sector that have no supplementary protection certificates. This comprises agriculture, foodstuffs and tobacco, personal or domestic articles (footwear, furniture…), medical or veterinary devices, fire-fighting and life-saving devices, and inventions referred to sport and games. It is expected that the Milan seat begins to operate in the summer of 2024.

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EUIPO

Economic impact of counterfeiting in the clothing, cosmetics, and toy sectors in the EU

On January 2024, the EUIPO - European Union Intellectual Property Office released a report titled "Economic Impact of Counterfeiting in the Clothing, Cosmetics, and Toy Sectors in the EU."

This extensive analysis examines the economic ramifications of counterfeiting on sales and employment across three pivotal sectors: apparel (including footwear), cosmetics, and toys. The study focuses on a meticulous evaluation of the decline in sales within the European Union market. Consequently, these diminished sales lead to a direct reduction in employment within the impacted industries.

Previous studies have shown that the drivers of counterfeiting vary by sector. Therefore, the clothing, cosmetics, and toy sectors key findings are identified separately.

Clothing industry:

- The clothing industry experienced an average annual sales loss of almost EUR 12 billion between 2018 and 2021, which accounted for 5.2% of total clothing sales in the EU.

- As a consequence of sales lost due to counterfeiting, the clothing industry experienced a yearly decrease in employment of 160,000 individuals.

Cosmetic industry:

- Counterfeiting in the cosmetics sector results in estimated losses of EUR 3 billion, equivalent to 4.8% of total sales in the EU.

- The EU cosmetics industry is estimated to have experienced a decline in employment of nearly 32,000 individuals.

Toy industry:

- The toy sector experiences the highest percentage of sales lost due to counterfeiting, at 8.7%, which translates to EUR 1 billion.

- Employment in the toy sector decreased by 3,600 individuals due to counterfeiting.

We cordially invite everyone to read the full report which can be found at the following link:

Complete bulletin in PDF.

EUROPE

New fee reduction scheme specifically for micro-entities

As from April 1, 2024, the European Patent Office will introduce a new fee reduction scheme to support the growth and development of smaller and less experienced European entities. This new scheme is compatible with the existing reductions for small entities which have their residence or principal place of business in an EPC contracting state and which file a European patent application or request for examination in an official language of that state other than English, French or German. New Rule 7a(3) EPC will apply to micro-entities only, irrespective of their nationality or domicile, and will include non-profit organizations, universities and public research organizations. The reduction will be 30% of the relevant fee, including the filing fee, the European search and examination fee, the designation fee, the fee for grant and the renewal fees for the European patent application. It is important to note that the fee reduction will only apply if the micro-entity has filed fewer than five applications in the last five years.

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UNGRIA

World Trademark Review (WTR)

We are proud to share that once again UNGRIA has been ranked as Top Tier-1 and Top Tier-3 Intellectual Property firm in Spain for Trademark Prosecution/Strategy and Enforcement/Litigation, respectively, in the recent 2024 edition of the World Trademark Review 1000 (WTR 1000).

We would like to thank our clients for their continued trust in us. UNGRIA continues growing based on our strong belief about the importance of high-quality, commitment and honesty in our services.

Finally, we would also like to thank WTR 1000 for this recognition: https://lnkd.in/dvZSSdA5

EU

New call for aplications for the Ideas Powered for Business SME fund

On January 17th, 2024, the EUIPO - European Union Intellectual Property Office released an announcement regarding a new call for applications for the «Ideas Powered for Business» SME fund.

The Small and Medium Enterprises (SME) Fund provides financial assistance for the protection of Intellectual Property rights to small and medium-sized enterprises established in the European Union.

SMEs can apply for bonds to partially reimburse the official fees paid for registering new IP rights.

Trademarks and Designs:

Applicants may request up to € 1,000.00 for eligible activities:

- Reimbursement of 75% of trademark and design official fees at national, regional and EU levels.

- Reimbursement of 50% of official fees for international trademark and design filings through WIPO's Madrid and Hague Systems.

Patents:

Applicants may request up to € 3,500.00 for eligible activities:

- Reimbursement of 75% of official fees for national patents of EU member states or European patents, up to a maximum of € 1,500.00.

- Reimbursement of 50% of legal fees up to a maximum of € 2,000.00.

Companies established in the EU or Ukraine are eligible to apply.

The submission deadline for the call is from January 22nd, 2024, to December 6th, 2024.

Should you wish to learn more and discover how your company can benefit from this program, please don't hesitate to contact us. We would be pleased to assist you in every step of the process and guarantee the effective protection of your Intellectual Property rights.

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