Recent updates to global IP collaborations and systems
PCT
In light of global inflation, there have been several amendments to certain fees in relation to the PCT system worldwide in recent months, with some of the latest including an increase to the handling fee for a PCT application in Japan. As such, as of November 1, 2022, the handling fee rose by approx. 6% from 26,900 JPY to 28,600 JPY.
Further, as of October 1, 2022, an increase in tax resulted in multiple PCT fee changes, which are reflected in the Norwegian fee schedule. As a result, the fee for an international application has increased by approx. 6% from 13,030 NOK to 13,830 NOK. Further, the additional fee for each page in excess of 30 has risen from 150 NOK to 160 NOK; an almost 7% increase.
The discounts on official fees in relation to international patent applications submitted to the Norwegian Patent Office as a receiving authority through the ePCT or eOlf routes, however, have seen decreases. The cost in relation to the submission of a filing request in character coded format (provided that the application is filed via e-filing) has decreased by approx. 6% from 1,960 NOK to 2,080 NOK, whilst the fee for filing a request, description, claims and abstract in a character-coded format has deflated by the same percentage, to 3,120 NOK from 2,940 NOK.
Also experiencing an increase, the international filing fee with respect to PCT applications in Sweden has risen by approx 9% to 14,650 SEK from 13,470 SEK, whilst the cost per sheet in excess of 30 now constitutes 170 SEK, inflating by approx 13% to from 150 SEK.
EAPO
The Eurasian Patent Office (EAPO) introduced amendments to the Patent Regulations to the Eurasian Patent Convention, effective as of November 1, 2022.
One of the most poignant alterations to the Regulations is the introduction of the possibility for applicants to file for digital three-dimensional models with regard to Eurasian patents and industrial designs. The digitalization and allowance of 3-dimensional representations of application subject matter is set to provide more clarity in relation to the essence of a claimed invention, and to the appearance of products in the case of industrial design protection. The move signifies a modernisation of the framework, and is hoped to create a more efficient and effective examination process in relation to Eurasian applications.
The amendments also allow for the extension of time limits in relation to the filing of oppositions to both Eurasian patent and industrial design applications. As such, the new time limit for the filing of a notice of opposition is nine months as of the date of publication. Further, the submission of amended patent claims is now only permitted prior to the serving of notice of allowance to grant a Eurasian patent to the applicant.
The amendments also bring about an expansion of the checks performed in relation to the substantive examination of industrial design applications, as well as to the ways to exclude elements of the appearance of product for which legal protection is not sought.
Additionally, according to the updated regulations, it is now not necessary to submit a certified paper copy of the priority document if the same is available in the WIPO DAS system.
Madrid Agreement
As of November 1, 2022, changes to the Implementing Regulations to the Protocol to the Madrid Agreement on the International Registration of Trademarks, entered into force.
As per the amendments, IP rights holders will now be able to submit an application for the renewal of an international trademark, alongside payment of the relevant fee, at the earlier point of 6 months before the renewal deadline. Previously, such requests were only permitted within 3 months prior to the deadline.
Further, the WIPO will now notify the right holder of renewal confirmation immediately upon payment of the corresponding fee, as opposed to the previous procedure whereby the renewal would only be confirmed upon expiry of the right. The period of validity of an international trademark will continue to constitute 10 years from the expiry of the preceding period.
The amendments to the Regulations in relation to the Madrid Agreement allow rights holders the opportunity to prove the ongoing validity of their international marks at an earlier stage, paving the way for a more efficient and swift process of international trademark renewal.
Cape Verde
The Harare Protocol, as well as the Banjul Protocol, both entered into effect on October 14, 2022 in the The Republic of Cape Verde, with the country marking the 20th and 13th contracting states to the protocols respectively. The implementation of the Harare and Banjul Protocols follow the accession of Cape Verde to The African Regional Intellectual Property Organization (ARIPO) on July 14, 2022.
The Harare Protocol facilitates the granting of patents, utility models, and industrial designs via the ARIPO on behalf of the Contracting States to the Protocol. Applications for these IP types can be filed via the Harare Protocol either directly with the ARIPO, or with a National IP Office party to the Protocol. Once granted, the IP right will be enforceable in each designated state as if it had been filed in that state directly.
The country's accession to the Banjul Protocol will offer a similar route of protection via the ARIPO in relation to trademark protection. As such, applications will be examined as per the national laws and requirements in each respective jurisdiction which has been designated for protection under the Protocol.
The move brings about an increase in efficiency and affordability for rights holders and applicants seeking IP protection in the jurisdiction.
PPH agreements
A new Patent Prosecution Highway (PPH) pilot programme between the Uruguayan Dirección Nacional de la Propiedad Industrial (DNPI) and the Finnish Patent and Registration Office (PRH) commenced as of October 1, 2022. The pilot programme is set to run for a period of three years.
PPH programmes facilitate a fast-track method of patent application processing by utilizing an exchange of patent examination information between the collaborating offices. As such, a patent which has been deemed as patentable by the Office of Earlier Examination (OEE) will be eligible for accelerated examination in the Office of Later Examination (OLE).
The extension of the PPH program allows for an expedited process for patent applicants, simultaneously reducing the need for potentially overlapping examination work to be carried out by various IP offices.