HomeNews & EventsAmendments to various IP systems internationally
June 17, 2022

Amendments to various IP systems internationally

EAPO ISA/fees

The Eurasian Patent Office (EAPO) is set to become both an International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT) as of July 1, 2022. The EAPO was appointed as such at a session held by the Assembly of the PCT Union in October of 2021.

As an International Searching Authority, the EAPO will facilitate the search for prior art in relation to patent applications filed under the PCT. When filing patent applications under the PCT, applicants may choose a specific ISA to conduct the search upon filing, depending on their citizenship, cost for carrying out the search charged by the ISA and countries where the PCT application is to be nationalized. The ISA will provide a Written Opinion of the International Searching Authority (WOISA), containing the opinion on whether the claimed invention meets the criteria of patentability.

Applicants may also request an optional International Preliminary Examination from an IPEA, which can assist applicants in amending an application or raising arguments pertaining to potential issues contained in the WOISA, which can result in a more positive International Preliminary Report on Patentability (IPRP).

Also implemented as of July 1, 2022, the EAPO will introduce a new fee schedule in relation to Eurasian patents. As such, the fee for the filing of an application with up to 5 claims is set to increase from 28,000 RUB to 36,000 RUB, comprising an approx. 29% rise. The costs in relation to additional claims will rise by approx. 30% respectively, with each additional claim in excess of 5 up to 20 inflating from 3700 RUB to 4800 RUB, each additional claim in excess of 20 from 4000 RUB to 5200 RUB, and each additional claim in excess of 50 from 5000 RUB to 6500 RUB.

Examination fees will see a similar increase, with the cost for the request for substantive examination for the 1st independent claim inflating from 30,000 RUB to 40,000 RUB, an approx. 33% rise. Inflating by approx. 25%, the additional fee for substantive examination in relation to the 2nd independent claim will rise to 25,000 RUB from 20,000 RUB, with each additional independent claim thereafter set to increase by approx. 30% from 10,000 RUB to 13,000 RUB.

The fee for the grant of a patent will see an increase of approx. 39%, ballooning from 18,000 RUB to 25,000 RUB, while the cost for publication of the Eurasian patent containing more than 35 pages increases from 200 RUB to 250 RUB per page seeing raise of approx. 25%. The cost of filing an objection in relation to a refusal to grant a Eurasian patent will also inflate by approx. 25% from 20,000 RUB to 25,000 RUB, whilst the cost of filing an opposition against the grant of a Eurasian patent will rise by approx. 33% from 30,000 RUB to 40,000 RUB.

 

Germany

The German Patent and Trademark Office (DPMA) has announced increases to certain fees in relation to IP maintenance. As of May 1, 2022, the renewal fees for supplementary protection certificates have risen by approximately 10% for each respective year. As such, the fee in relation to the 1st year has grown from 2650 EUR to 2920 EUR, the 2nd year from 2940 EUR to 3240 EUR and the 3rd year from 3290 EUR to 3620 EUR. Additionally, the renewal fee for the 4th year has increased from 3650 EUR to 4020 EUR, the 5th year from 4120 EUR to 4540 EUR and the 6th year from 4520 to 4980 EUR.

Furthermore, the fees in relation to patent annuities are set to increase as of July 1, 2022. The costs for the annuity of the 5th to the 11th years have risen by up to 23%, with the 5th year increasing by 11% from 90 EUR to 100 EUR, for example, the 8th by 17% from 240 EUR to 280 EUR, and the 10th by 23% from 350 EUR to 430 EUR. The annuity fee for years 12 to 20 have grown by lesser amounts, with the 12th year rising by 10% from 620 EUR to 680 EUR, the 16th year by 7% from 1230 EUR to 1310 EUR, and the 20th year by 5% from 1940 EUR to 2030 EUR.

 

Thailand

Also having amended certain fees, the Department of Intellectual Property of Thailand recently announced a waiver of surcharges in relation to some late payments, a measure which was initially put in place as of April 9, 2022 and is set to run until September 30, 2022.

These exemptions of fees apply to late trademark renewals, as well as to the late payment of patent annuity fees, inclusive of those for petty patents and designs. As such, it will be possible for trademark registrations which fall within the 6-month grace period to be renewed on a late basis without incurring the 20% official fee surcharge. Likewise, patents, petty patents, and designs within the 120-day grace period deadlines for annuity are able to be paid in the absence of the 30% official fee surcharge.

These measures were introduced to mitigate the impact of a rise in Covid cases in the country in recent months, allowing for delays in meeting payment deadlines without incurring additional fees, and in turn, assisting IP and innovation.

 

Turkey & Albania design class

The Turkish Patent and Trademark Office officially became privy to the DesignClass system as of May 23, 2022, followed by the accession of Albania on May 31, 2022.

DesignClass is a unique system which affords users access to a comprehensive list of terms from the harmonised database of product indications (HDBPI). As such, those accessing the database are able to search and translate product indications in a variety of 30 languages using the tool.

With the addition of both Turkey and Albania, there are currently 42 IP offices which utilize DesignClass, with both countries marking the 14th and 15th non-EU IP offices of the database respectively.

Author: Danielle Carvey
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