Recent developments in the world of IP
These are very brief summaries of recent developments which may be of interest to our direct clients. Last updated: 23 February 2022.
The European Unitary Patent and Unified Patent Court are expected to come into existence by the end of 2022
The long-awaited European Unitary Patent - and the associated Unified Patent Court - are, finally, expected to start operation this year, without the UK (or Spain, for that matter). Austria depositing its instruments of accession has triggered the so-called period of provisional application and the European Patent Office has announced transitional measures to help applicants who wish to obtain Unitary Patents. We have written more about this important development here.
Australia to introduce grace period for designs
For a number of years, the UK and European Union have had a grace period which allows the proprietors of design rights to make an application for protection up to a year after first disclosure of their design (although there are risks in using this grace period). This grace period has been useful for many UK and EU businesses but others have been caught out by failing to appreciate that most territories do not have corresponding grace periods. Australia has for some time had a grace period for patents but, surprisingly, this did not apply to registered designs. It has now been announced that a grace period for registered designs, of up to a year, will begin from 10 March 2022. Note that all disclosures prior to 10 March 2022 will not be covered as the grace period is not being applied retrospectively.
China to join Hague Agreement
The Hague Agreement provides for a centralised application for design registration through WIPO which may give rise to protection in many territories around the world. This process was very rarely used by UK and EU companies until the US and Japan joined the Hague scheme in 2015 following which there has been some light use of the system and the UK joined the Hague Agreement independently of the EU just before Brexit. It has now been announced that China will join the Hague Agreement from 5 February 2022. Thisx may further increase use of the Hague system for design registration as single application through WIPO could, in theory, give rise to rights in the UK, EU, China, Japan, Korea and the US as well as various other territories. However, the system remains difficult to use, with individual countries applying very different examination systems and formal requirements. This development will make the Hague Agreement more popular with regular users of the system who can afford to take risks but it will remain risky for applicants for whom design registration is critical.
EPO Board of Appeal does not support strict requirements to amend patent description for consistency with claims
There has always been a requirement that the description of a European patent application should be consistent with the claims. In late 2021, the Guidelines for Examination were amended to introduce particularly strict rules including that claim-like clauses that are not identical to claims be deleted or amended, and that examples which were not within the scope of the claims should be deleted or marked to explain that. Furthermore, the Guidlines indicated that unless these requirements were complied with, a summons to oral proceedings would be issued. The Guidelines have been negatively received by users of the patent system because they require time-consuming (and therefor costly), difficult and legally risky amendment work for reasons which appeared purely formal or clerical.
Although the Guidelines remain in place, a Board of Appeal has ruled that there is no basis in the European Patent Convention for many of these requirements. Thus, applicants may be emboldened not to fully comply with the more onerous aspects of these provisions. Interestingly, the Board of Appeal decision was not marked for distribution within the EPO; perhaps this remains a sensitive topic.
EPO to accept electronic signatures in evidence of transfer of ownership of patent rights
From 30 November 2021, the EPO will accept a Qualified Electronic Signature, in addition to handwritten signatures, in respect of evidence filed in support of requests for registration of a transfer of rights and for registration of a licence or other rights. The requirements for obtaining a Qualified Electronic Signatures are defined in Regulation (EU) No 910/2014. The requirements are not trivial and it remains to be seen whether applicants will decide to make use of this possibility. Given that electronic signatures are not accepted as legally binding on a party throughout the world, it is still likely to be the case that a handwritten signature on an assignment will be preferred in many situations.
United Arab Emirates joins the Madrid Protocol
From 28 December 2021, it will be possible to designate the UAE in new applications (and subsequent designations) under the Madrid Protocol, a centralised mechanism for obtaining international trade mark protection. This is important because the UAE has always been an extremely expensive territory in which to obtain trade mark protection by the filing of direct applications. Nevertheless, the official fee for designating the UAE is expected to be large relative to the majority of other countries.
Period to file Comparable UK Trade Marks and Designs came to an end
With a limited exception for some international trade mark registrations, 30 September 2021 was the final date for proprietors of EU trade mark and design applications which were pending on 31 December 2020 to apply for comparable rights in the UK. The EU and UK trade mark and design registers are now entirely separated.