Updates to IP systems in Canada, Chile and Moldova, and PPH cooperations between the EPO, Australia, and Saudi Arabia
Canada
The Canadian Intellectual Property Office (CIPO) recently introduced amendments to the country's patent legislation, which enter into effect at two stages of the year.
The majority of the alterations are due to enter into effect in October of this year, however, the first effective amendments to the law have recently been enforced in respect to all patent applications filed on or after July 1, 2022. As per these changes, if any nucleotide or amino acid is disclosed in the patent application, it must appear in a sequence listing in accordance with the new standard ST.26 set forth by the WIPO.
Further legislative amendments are set to enter into effect as of October 3, 2022, whereby new measures concerning the process and fees of patent examination, as well as additional measures for applicants and rights holders, are expected to be implemented.
As such, a new excess claims fee will be introduced, applicable to each claim beyond the twentieth, which will be payable in addition to the standard fee for the request of substantive examination for patent applications. This new cost will apply to requests for examination filed on or after the aforementioned date.
The new fee is set to comprise 100 CAD per claim in excess of twenty, reducing by 50% to 50 CAD for small entities, in addition to the initial examination fee. Excess claims fees are first due upon an initial request for examination, and are calculated and due again upon the granting of a patent, alongside the final issue fee. Multiple dependent claims are not set to count toward the claim fee calculation, nor are references to alternatives existing within a claim.
Also applying to the patent examination process, a new limit on the number of examination reports (or office actions) will apply to applications with an examination request date occurring on or after October 3, 2022. The impending introduction of the requirement for a request for continued examination (RCE) will mean that an applicant is entitled to receive a maximum of three office actions following a request for examination, a vast change to the current rules whereby no such limit exists.
In line with this new restriction, if an applicant wishes to continue examination past the point of the receipt of three office actions following examination, a request for continued examination (RCE), alongside the payment of 816 CAD, or 408 CAD for small entities, will be required in order to progress the application. This fee will cover another cycle of examination, again allowing a maximum of three examination reports to be served.
Furthermore, and in an effort to expedite the patent registration process, a notice of conditional acceptance has been introduced.
The alterations to Canadian patent law have been set in motion to allow the country to meet international obligations under the Canada-United States-Mexico Agreement (CUSMA), and the Patent Cooperation Treaty (PCT), as well as to further streamline the patent examination process, and increase efficiency and quality in the overall patent system.
As the majority of the amendments are not effective until the latter half of the year, applicants may wish to proceed with any relevant actions prior to October 3, 2022 in order to take advantage of the lesser fees for excess claims and requests for continued examination. It is worth noting that the deadline for requesting examination in Canada in typical cases is four years from the filing date for applications filed on or after October 30, 2019, and five years from the filing date for applications filed prior to this date.
Moldova
Moldova is also in the process of altering their IP legislation, with the approval of the draft law harmonizing the copyright and related rights law to the regulations of the European acquis communautaire on June 22, 2022. The amendments are intended to provide an increase in IP protection and rights to copyright holders in the jurisdiction.
As such, the new law aims to provide for standardisation and uniformity in relation to the regulation of copyrights, particularly with respect to remuneration and rights of performers, the establishment of rules for the collective management of copyright and related rights, a limitation to management fees, and the introduction of obligatory annual transparency reports.
The legislation is also set to benefit stakeholders in the field of copyright and related rights, affording them the opportunity to receive adequate remuneration for their work, as well as more standardised regulations ensuring higher standards of governance, financial management, transparency and reporting.
Chile
As of July 4, 2022, Chile officially became a party to the Madrid Protocol, allowing trademark applicants from the country to submit their international registration applications through the centralized Madrid system, and affording international applicants the opportunity to designate the state of Chile for trademark protection.
The Madrid System for the International Registration of Marks facilitates the registration and maintenance of trademarks internationally, and is administered by the International Bureau (IB) of the World Intellectual Property Organisation (WIPO).
The addition of Chile to the system means that the Madrid Union now consists of 112 Member States, comprising a total of 128 countries and regions overall. The system affords applicants the opportunity to file one international application, accompanied by a single set of fees, covering any or all of the 128 Contracting States to the Madrid Protocol.
PPH co-operations
A new bilateral Patent Prosecution Highway (PPH) agreement has entered into effect between the European Patent Office (EPO) and the Saudi Authority for Intellectual Property (SAIP). The PPH entered into force as of July 1, 2022, and is set to run for an initial term of 3 years.
The collaborative project follows the signing of a Reinforced Partnership agreement between the two IP offices in November 2021, as well as the renewal of an overarching Memorandum of Understanding on bilateral cooperation in June 2022.
The PPH pilot programme between the EPO and SAIP allows applicants whose claims have been examined by one of the offices to request the acceleration of the processing of their application with the other. In order to accomplish this, the two offices will share existing examination results and data, thereby increasing efficiency by eliminating the need for the other office to also undertake the duplicate process of examination.
This, in turn, leads to not only an expedited turn-around time for the processing of patent applications, but increases efficiency, and assists IP offices to increase the quality of the patent granting process.
Should the pilot project of the PPH succeed between the EPO and SAIP, the project will likely be extended, an event which recently occurred between IP Australia and the EPO.
An initial PPH pilot project between EPO and Australia was first implemented in July 2016 before being extended in 2019, with the EPO being the 2nd most popular destination for international Australian patent filings. The IP Australia-EPO PPH program covers both the Patent Cooperation Treaty (PCT) and applications via the Paris Convention.