A global modernisation of intellectual property systems

EAPO

With the recent passing of the one-year mark since the Eurasian Patent Office (EAPO) was appointed as an International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA), six states have officially recognised the office as a designated ISA and IPEA.

The office commenced acting as an ISA and IPEA as of July 1, 2022, conducting patent searches in relation to PCT applications and creating draft assessments of an invention's patentability.

A preliminary patent assessment affords applicants the opportunity to obtain a professional opinion regarding the patentability of an invention directly from the examining authority (e.g the EAPO). This, in turn, allows applicants to assess the likelihood of receiving patent protection in PCT member states prior to commencing the national and/or regional procedures.

Should a preliminary patentability assessment receive a less than positive opinion, applicants can modify their applications and revise their claims accordingly, which may increase their chances of obtaining a patent. Further, an unfavourable patentability opinion may mean that an applicant will choose not to continue with the prosecution of a patent application, thus reducing expenses potentially wasted on an unpatentable invention.

Poland

As of September 1, 2022, the Patent Office of the Republic of Poland (UPRP) began to utilize the Digital Access and Secure exchange of priority evidence (DAS) service which is facilitated by the World Intellectual Property Organisation (WIPO).

The IPO of Poland will henceforth accept priority proofs exchanged via the online service in relation to both national and international patent, utility model and industrial design applications, as well as national trademark applications.

The proof of priority which can be downloaded from the WIPO DAS digital library has the same effect as if the priority document had been submitted in the traditional manner.

The introduction of the electronic WIPO DAS to service users in relation to Poland allows for the compliance of requirements set forth by the Paris Convention regarding official documentation in a more efficient environment.

Finland

Finland has introduced a new Industrial Property Gazette service which was implemented on August 16, 2022. The newly introduced resource will feature publications of trademark and design registrations, replacing the previous versions of the official IP gazette.

This new version is set to expedite the publication of IP types, as new trademarks and designs are now published directly after registration, an efficient upgrade to the previous gazette which was only published a maximum of twice a month in PDF format.

Further, as the Finish opposition period of two months commences as of the publication date of the registration, the new gazette allows for the opposition period to begin sooner than before. This, in turn, affords applicants the opportunity to receive a decision on registration at a faster rate.

Moreover, the new gazette service also provides notifications regarding trademarks and design rights, as well as the trademarks admitted to the List of Trademarks with a Reputation.

Taiwan

The Taiwanese Intellectual Property Office (TIPO) implemented new guidelines regarding the examination of trademark distinctiveness on September 1, 2022.

Among a multitude of amendments to the current guidelines, the new version includes additional criteria in relation to the assessment for distinctiveness, as well as example explanations for number and alphanumeric combinations. This is hoped to afford applicants and examiners more in depth information in relation to the distinctiveness of marks containing numerical elements, particularly those in use between various industries.

Furthermore, several additions to the current guidelines have been established. As such, the categories of “popular", “purely informational", and “commercial design" graphics will be introduced, as well as new criteria regarding country names, geographical images, and geographical names used in descriptions of product origin. Also in the realm of geographical representation, the new guidelines will contain criteria in relation to the misleading use and/or misrepresentation of products of origin.

Further criteria featured in the new guidelines includes those pertaining to the determination of names and portraits of recently deceased well-known public figures, as well as religious images and terms.

In addition, the altered guidelines include changes to compositional patterns of foreign alphabets, as well as to the criteria for trademark distinctiveness in relation to slogans, common words, and new and technical terms.

New Zealand

Having also updated their practice guidelines in relation to trademarks, the Intellectual Property Office of New Zealand (IPONZ) implemented a new version thereof on September 14, 2022. The amendments clarify the way in which prior use is considered and confirm the terms of providing a website.

Among the changes to the practice guidelines, clarity has been provided regarding the overcoming of citations in order to reflect the way that the IPONZ presently considers the prior use of a trademark. As such, trademark examiners will consider evidence regarding the prior use of a mark with the view of establishing whether special circumstances exist in relation to an application. Previously, such evidence and submissions would not have been considered in relation to the establishment of prior use.

Moreover, in an effort to remain in line and consistent with the international application of the NICE classification system, amendments have been made to the Annexure to Computer Services practice guidelines for trademarks. These alterations are set to clarify the assessment of “providing a website” terms in goods and services specifications.

Ukraine

In light of the ongoing military activity in Ukraine, the EUIPO has implemented a two month extension in relation to IP matters for all parties involved in proceedings before the EUIPO who are domiciled or have a registered office in Ukraine. The two month extension, which was published on August 28, 2022, extends all time limits expiring between September 2, 2022 and November 1, 2022.This extension follows earlier Decisions EX-22-5, EX-22-4 and EX-22-2 of the Executive director of EUIPO allowing applicants and right holders not to lapse their IP in this region due to the situation occurred.