Worldwide enhancements of intellectual property systems
PCT fees
Several amendments to PCT fees and charges have been implemented within recent months spanning multiple jurisdictions.
Specific fees paid in relation to international patent applications to the Norwegian Patent Office as the receiving authority under the PCT have inflated, with the cost of the search fee when carried out by the Nordic Patent Institute (NPI), the European Patent Office (EPO), or the Swedish Patent Office (PRV) as the International Searching Authority, as examples, rising by approx 6% from 18,760 NOK to 19,970 NOK. These amended fees entered into effect on June 1, 2023.
Meanwhile, as of May 15, 2023 the Intellectual Property Office of New Zealand (IPONZ) removed the late payment fees in relation to PCT applications in the capacity of the designated Receiving Office.
Prior to the amendment, fees in relation to PCT applications were required to be paid by a given deadline, after which a late payment fee would apply. As per the enforcement of the new regulations, in the case where the application fees are not paid by the deadline, the IPONZ will allow the applicant to pay said fees within an extended time period without any late charges applied. Should the fees not be paid by the extended deadline, the PCT application will simply be withdrawn.
Kyrgyzstan
As of April 7, 2023, the jurisdiction of Kyrgyzstan enacted an updated version of their official patent law, introducing multiple amendments and bringing the national legislation further in line with the Protocol on Industrial Designs to the Eurasian Patent Convention.
As per the new legislation, the validity term of protection in relation to industrial designs now comprises an initial 5-year period from the date of filing, with the possibility of an additional four extensions of 5 years allowed up to a total of 25 years. Previously, industrial designs in the country were valid for an initial period of 10 years with the possibility of only one 5-year extension, constituting a total of 15 years of validity.
The validity term of protection regarding utility models has also increased from a total of 8 years, comprising an initial period of 5 years with a possible extension of a further 3 year period, to a total validity period of 10 years.
Allowing for a less complex application process, the newly enacted legislation now also means that a list of essential features is no longer a required document when filing an industrial design application in Kyrgyzstan.
Another significant amendment included within the new legislation means that the substantive examination of a patent application has become mandatory and the possibility of obtaining a patent under the applicant’s responsibility has been abolished. As such, patent applicants must file a request for the conducting of the substantive examination with the IP Office of Kyrgyzstan within the period of 30 months from the date of filing.
Further contributing to the modernisation of the IP system of Kyrgyzstan, the country has implemented an electronic platform which facilitates the online filing and issuance of rights pertaining to patents, utility models, and industrial designs.
The amendments to the patent law of the country demonstrate significant steps toward advancing the IP system of the jurisdiction, bringing the national legislation further in line with the international IP sphere.
Tajikistan and Armenia
The National Patent Information Centre of the Republic of Tajikistan and the Intellectual Property Office of the Republic of Armenia have announced the implementation of the option of filing patent and industrial design applications in relation to 3-dimensional models as of April and May 2023 respectively.
Henceforth, applicants may file for patents and designs in Tajikistan and Armenia with 3D models of the claimed subject matter detailed in the application.
The countries mark the second and third member states of the Eurasian Patent Organization (EAPO) to have enacted the allowance of 3D models within such applications, with the IPO of the Republic of Azerbaijan announcing the same at the conclusion of 2022.
The recent allowance of 3D models with respect to patent and design applications in two separate EAPO member states in close succession indicates a collaborative effort to modernize the national IPO digital systems within the region, thus encouraging more international applications.
Georgia
Recent legislative advancements have seen the possibility of European patents being recognized in Georgia, with the Agreement between the Government of Georgia and the European Patent Organization on the Validation of European Patents being approved by the country's legislature.
The ratification of the aforementioned agreement will allow for EP applicants to validate their European patent in the jurisdiction of Georgia.
Previously, applicants wishing to protect their patent in Georgia had the options of either submitting an application directly with the national IPO, namely Sakpatenti, or by submitting an international application via the PCT route.
Whilst there is currently no date of implementation, the possibility of validating a European patent in the jurisdiction of Georgia is set to provide for a potentially smoother and less time consuming process of patent protection in the country.
Paraguay
As of May 8, 2023, the National Directorate of Intellectual Property of the Republic of Paraguay (DINAPI) officially began to utilize TMClass, a widely accessed tool which allows users to search for, and translate, goods and services in relation to trademarks in any of the 44 languages available through the interface.
The tool can also assist in identifying the correct terms and corresponding classes under the Nice Classification for use within a trademark application, proving invaluable for IP applicants.
With the new addition of Paraguay, TMClass now comprises 95 participating regional and national IP offices across the globe.
PPH Agreements
The IP Offices of Morocco and the United States launched a joint Patent Prosecution Highway (PPH) pilot program as of April 1, 2023, whilst a PPH program between the IP Offices of France and China entered into effect as of June 1, 2023.
A PPH agreement is designed to facilitate the expediting of the examination procedure for patent applications by way of a collaborative work share setup between the cooperating offices.
As such, a decision on patent examination made by the office of first filing is shared with the patent office of second filing, eliminating the need for both offices to conduct the same examination procedure, thus expediting the overall patent granting process.
The enactment of recent PPH agreements between both the US and Morocco, as well as France and China, demonstrates an ongoing effort by IP offices across the world to collaborate and assist one another in advancing global IP cooperation, in turn providing for a smoother process of patent filing for applicants in such jurisdictions.