Section Focus

I2P Group News

Samson Helfgott

©2014. Published in Landslide, Vol. 6, No. 3, January/February 2014, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

A number of interesting items have come up with respect to the I2P Group (International Intellectual Property Group), which are of interest to our readers.

Changes in European Patent Office Rules

The European Patent Office has indicated two major changes in connection with cases being filed in the EPO system. The first change relates to the time limits for filing divisional applications and the second relates to addressing unitary objections on entry into the regional phase of the EPO from a PCT application.

In connection with divisional applications, the EPO will be abolishing the 24-month deadline for filing divisional applications included within Rule 36 of the EPC. Currently, the EPO will only allow a fixed two-year term for filing voluntary divisional applications commencing from when the first examination report is communicated to the applicant. This limited period was intended to deter long sequences of divisional applications, which the EPO believed gave rise to third-party uncertainty and possible abuse of process.

Under the proposed changes, the filing of divisional applications will be allowed at any time as long as the earlier EP application is pending. However, the filing fee will be increased for any divisional applications that are filed from an earlier divisional application. In this way, the EPO hopes to deter long chains of divisional applications being filed. This change will take effect April 1, 2014, and will apply to divisional applications filed on or after that date.

The second change relates to Rule 164 EPC. Under the present system, if the EP examiner considers the claims to be nonuniform, then only the subject matter that is considered to constitute the first invention is searched. If the applicant is interested in proceeding with any subject matter not included in such initial selection, he is forced to file divisional applications.

This rule was particularly criticized because in many cases unity was not an issue in the PCT phase and was contested for the first time when the regional phase was entered into before the EPO. As a result, if the unity rejection was first raised after entry into the EPO, the applicants were taken by surprise and often not able to fully understand why the claims were subsequently carved up by the EP examiner.

As of November 1, 2014, if the examiner did not serve as the International Searching Authority (ISA) for the PCT, the examiner will still draw up the supplementary European Search Report for the first invention. However, the applicant will now be given the opportunity to pay one or more additional search fees, so that further inventions can be searched at that time. This will give the applicant the opportunity to direct the application to any invention disclosed in the application as originally filed, and avoid the necessity of filing divisional applications at that time.

Similarly, if the EPO did serve as the ISA, the applicant will have an option to request a search for the additional subject matter not originally searched in the international phase upon entry into the European phase.

U.S. BAR/EPO Liaison Council

The 29th Annual Meeting of the U.S. Bar/EPO Liaison Council took place in Munich on Friday, October 18, 2013, in conjunction with the celebration of the 40th anniversary of the signing of the EPC.

President Bastistelli presented an update in connection with EPO activities and indicated that in 2012, the EPO received 258,000 European patent filings, which was up 5 percent from the year before. U.S. applicants remained the largest user group with 25 percent of applications filed, followed by 20 percent from Japan, 13 percent from Germany, 7 percent from China, and 5 percent from Korea. During that same year, the EPO granted 65,700 patents, up almost 6 percent from 2011. Of those procedures that were completed, 50 percent ended in grant, 22 percent were abandoned after receipt of the search report, and 28 percent were either rejected or withdrawn during the examination stage. With respect to pendency time, a first search report was provided within an average of 9.1 months from filing, and the average time for grant was 44.6 months. Approximately 6 percent of the cases requested accelerated search, and almost 8 percent of the filings requested accelerated examination. The opposition rate has dropped back to 4.7 percent. In 2012, 2,600 appeals were filed, which was a 2 percent drop from 2011. The Board of Appeals settled 2,027 cases, up 6.2 percent from 2011.

With respect to membership, the EPO announced that it has concluded a validation agreement with Moldavia that will allow the granted European patent to be extended to that country upon request. That agreement will enter into force sometime in 2015. Also, Albania has acceded to the London agreement.

With respect to machine translations, the EPO continues to lead the enhancement and integration of global prior art, making documents available through Patent Translate Machine. The EPO, the Eurasian Patent Office, and ROSPATENT launched the Russian-English component of Patent Translate, which will make more than 1.5 million patent documents available in English. Patent Translate now covers 22 languages, including Chinese and Japanese, with additional languages to follow.

Following the entry into force on January 20, 2013, of the Unitary Patent Protection, the 25 participating member states of the EPO have begun preparations to implement the UPP system within the EPO. The objective is that the UPP system should become available in early 2015.

Similarly, the agreement on the Unified Patent Court of February 19, 2013, was signed by 25 member states, including Italy. Spain is still opposing the process and Poland has decided not to sign for the moment due to a recent study claiming a potential negative effect on the Polish economy. The UPC agreement will enter into force after the deposit of the 13th instrument of ratification, which must include France, Germany, and the UK. On August 7, 2013, Austria became the first country to ratify the UPC agreement. The objective is to have the UPC begin operations in early 2015.

China Passes New Trademark Law

China’s legislature has passed a revised trademark law including the amount of damages that can be awarded for trademark infringement. The new law permits damages six times the previous limit, which now raises it to approximately $500,000.

The law will also hold trademark agencies responsible for knowingly conducting a bad faith registration for any client. Additionally, they could be held accountable if they register a mark that infringes on the trademark rights of others.

The new law also imposes deadlines of 9–12 months for examination of applications, oppositions, and cancellations.

The law gives owners of well- known trademarks the right to ban others from registering or using similar trademarks. The new law will take effect May 1, 2014.

Japan to Revamp IP Laws

The Japanese government is planning revisions in connection with their patent, trademark, and design law that is expected to go into effect in 2014.

In connection with the trademark law, revisions include protecting colors, sounds, movements, holograms, and position marks, which would bring the Japanese law into closer harmonization with trademark laws from many other industrialized countries.

With respect to the patent law, currently an invalidation procedure is permitted against a patent at any point and such process includes oral hearings. The change would form it into a post-grant review, which would only be allowed within a certain period of time. Furthermore, there would be only a written submission process and no oral hearings.

The design law would implement Japan’s joining of the Hague system.

Written Description Requirements Being Reviewed

During the last meeting of the IP5 Heads, which took place in Cupertino, California, in June 2013, the IP5 decided to move forward on addressing substantive patent law harmonization issues at the practical and technical level in addition to the treaty level. IP5 Industry presented a list of such practical areas where harmonization would be useful to everyday patent prosecution practice. Heading the list was providing more uniformity in written description requirements among the various patent offices. Industry IP5 pointed out the significant differences taking place on support requirements for written description. It was indicated that the European practice required almost “photographic” support between the description and the claims. U.S. law required “conceptual” support, namely that the inventor was in possession of the claimed invention as of the filing date. Japan required “technical” support. The result is that significant distinctions occurred both in the requirements for preparing a global application, as well as obtaining closer claim sets among the various patent offices in the world.

The European Patent Office has already indicated that it is planning to revisit the requirements for written support. It indicated that the European requirement is what a skilled person would derive directly and unambiguously, using common general knowledge and seen objectively and relative to the date of filing, from the whole of the application as filed. This did not necessarily require literal or close to literal support. It indicated that it would be providing new guidelines for examiners clarifying that a formalistic approach is not necessary under the wording of EPC article 123(2).

Consistent with this more liberal approach, the JPO has recently modified its otherwise strict requirements on “shift amendment” practice. The new guidelines permit examiners to accept related claims in the same application without the need for filing multiple divisional applications and finding broader support for a variety of claims within the same application.

The Chinese patent office has likewise had a very narrow interpretation of article 33 of the PRC Patent Law, which is very similar to the European language. Nevertheless, some recent court cases have indicated potentially interpreting the language more liberally than previously within China.

Samson Helfgott

Samson Helfgott is a partner with Katten Muchin Rosenman LLP in New York. He has practiced for more than 30 years in domestic and international patent, trademark, and copyright matters.