International legislative and collaborative advancements in the field of Intellectual Property

Montenegro

As of October 1, 2022, Montenegro was integrated into the European Patent Organisation (EPO), marking the 39th member state.

As such, the country will now automatically be included as a designated state for European patents filed on or after October 1, 2022, meaning that an extension fee for the designation of Montenegro will no longer be required to obtain protection in the jurisdiction. The validation process for European patents designating Montenegro continues to remain the same as before.

Upon the granting of the European Patent, applicants are required to file a validation request for Montenegro, including any translated patent claims, drawings, and a Power of Attorney, within three months from the publication of the notification of grant. Once obtained, a European patent is valid for a maximum term of 20 years from the date of filing, subject to the payment of annuity fees.

The addition of Montenegro to the EPO is set to benefit both national and international applicants by way of a more efficient and cost effective method of obtaining European-wide patent protection.

US

The United States Patent and Trademark Office (USPTO) has reduced the length of time afforded to applicants for responding to office actions during the trademark examination process. As such, as of December 3, 2022, trademark applicants have three months from the date of issue of the office action (with a possible three-month extension), as opposed to the previous period of six months.

This altered response period does not apply to office actions relating to applications filed through the Madrid Protocol section 66(a), nor does it apply to post-registration office actions. The response period for the latter is due to be amended as of October 7, 2023.

The USPTO has indicated that the reduction in response time to office actions is hoped to expedite the trademark registration process, whilst remaining flexible in instances of more complex scenarios.

TMClass

As of November 21, 2022, the Registry of Intellectual Property of Guatemala (RPI-GT) officially became the 91st participating IP office to utilize TMClass.

TMClass is a unique tool allowing for the search of goods and services in order to help users identify relevant terms and corresponding classes under the Nice Classification in relation to trademark applications. The tool incorporates over 78,000 searchable terms and is available in 37 working languages of the participating offices, which include the ARIPO, OAPI, WIPO and the EUIPO.

On the same date, the RPI-GT, as well as the State Office of Industrial Property of the Republic of North Macedonia (SOIP) commenced the utilization of the Harmonized Database of Goods and Services (HDB), a multilingual database providing the terms of TMClass in all 23 official EU languages.

The adoption of the HDB in both countries is a result of the EUIPO’s International Cooperation programme in collaboration with its international partners, and the IP Key Latin America programme directed by the European Commission.

Romania

As of October 7, 2022, amendments to the Implementing Regulations of the Law on Trademarks and Geographical Indications entered into force in Romania, bringing the provisions contained within the Regulations in line with those in the trademark law.

One of the most poignant amendments brought about by the new regulations is the introduction of a new mode of trademark representation. As such, applicants are now able to submit audio or video files alongside their application for sound, motion, holographic or multimedia trademarks, thus eliminating the previously strict graphical representation requirement.

As per the new regulations, trademark applicants are now obliged to provide a Power of Attorney (PoA) indicating the scope of the same. Further, applicants must indicate the effective date of the PoA, as well as its duration. Such requirements were not necessary as per the previous regulations.

The time period allowed for the submission of a PoA in relation to registered trademarks has been extended from 30 days from the date of filing to 2 months. Moreover, the newly implemented regulations confirm that in the absence of a PoA, the procedures will continue with the applicant or trademark owner.

Also owing to the new regulations, trademark applicants may now submit a declaration stating that their trademark acquired distinctiveness through use when filing an application. Such declarations should be filed alongside relevant evidence supporting the same.

Clarity has also been provided regarding the trademark opposition procedure, confirming the minimum requirements. As per the new provisions, the trademark registration number, filing date, registration date, and priority date of the prior right referenced in an opposition should be mentioned in the opposition request.

Other alterations have been implemented following the latest regulations, including the reduction of the time afforded to trademark owners to remedy deficiencies in relation to renewal requests from 3 months to 30 days.

Further, certified true copies of supporting documents are now sufficient for the recordation of assignments, transfers, licenses etc, as well as for changes concerning the name/address of a trademark owner or legal representative.

The latest updates to the Romanian trademark legislation will provide for a more clear-cut yet flexible procedure for applicants with regard to the registration and maintenance of trademark rights.

UPC

The heavily anticipated implementation of the Unitary Patent Court (UPC) system is soon set to be a reality, with the European Patent Office (EPO) due to commence its relevant transitional measures on January 1, 2023. This transition aligns with the publication of the UPC's most recent implementation roadmap, with the EPO adjusting the starting date of their transitional measures accordingly.

The transitional measures set forth by the EPO allow patent applicants to file early requests for unitary protection, as well as requests for the delayed issuance of a decision to grant a European patent.

These temporary measures will be applicable from January 1, 2023 to April 1, 2023, when the Unitary Patent Protection system is expected to be fully implemented and operational.

The provisions implemented by the transitional measures are hoped to adequately support applicants who wish to utilize the UPC system at an early stage.