Global Intellectual Property fee schedule updates and legislative reforms
Hong Kong
Hong Kong introduced a new fee schedule in relation to industrial designs as of March 1, 2024. The amended costs constitute a reduction in certain fees regarding the registration and maintenance of industrial design rights in line with policy measures set forth by the Chief Executive’s Policy Address of 2023.
As per the new fee schedule, the costs in relation to the filing of an application for one design not forming a set of articles has decreased by approx. 60% from 785 HKD to 315 HKD for those filed in paper form, with the filing fee for a design forming a set of articles also falling by approx. 60% from 1,570 HKD to 630 HKD.
Dropping by the same percentage, the filing fee for 2 or more designs not forming a set of articles was reduced from 785 HKD for the first article pertaining to the first design to 315 HKD, and from 590 HKD for each additional article pertaining to any of the designs in an application to 235 HKD.
For the filing of 2 or more designs in an application forming a set of articles of the same class, the fee was also reduced by approx. 60% from 1,570 HKD to 630 HKD and from 1,180 HKD to 470 HKD for each additional design.
Moreover, the fee in relation to the advertisement of a design in the Official Journal decreased from 155 HKD to 62 HKD, and the reinstatement fee for an application by approx. 20% 245 HKD to 195 HKD.
For the 1st five-year extension of design validity, the fee fell by approx. 40% from 790 HKD to 475 HKD, the 2nd by approx. 30% from 1,200 HKD to 835 HKD, the 3rd by approx. 20% from 1,760 HKD to 1,410 HKD and the 4th by approx. 10% from 2,690 HKD to 2,420 HKD.
The reduction in fees was implemented with the aim of incentivizing businesses in the region and beyond to register for industrial design protection which, in turn, is hoped to boost the economy and overall IP field in Hong Kong.
Portugal
As of July 1, 2024, a new Industrial Property Fee Schedule was implemented in Portugal with increases of 4.3% across the board in line with the inflation rate for the year. The amendments to costs span across all IP matters including patents, trademarks and industrial designs.
Patents
The increases to patent fees now mean that the cost in relation to the filing of a patent application in Portugal has risen to 123 EUR from 117.93 EUR, whilst the fee in relation to the conversion of a provisional patent application to a full patent application increased to 86.11 EUR from 82.56 EUR. Moreover, the publication fee for a patent application has risen to 6.13 EUR from 5.88 EUR.
Regarding annual patent fees, the cost payable for the 5th maintenance year increased to 60.66 EUR from 58.16 EUR, the 10th to 424.53 EUR from 407.03 EUR, the 15th to 667.09 EUR from 639.59, and the 20th to 849.04 EUR from 814.04 EUR.
Trademarks
In relation to trademark fees, the cost for the filing of a trademark application in one class, as well as the trademark renewal fee, inflated to 145.56 EUR from 139.56 EUR.
Further, the fees regarding the filing of each additional trademark class beyond the first, the renewal of each additional class, as well as the fee for the division of a trademark application or registration, rose from 35.38 EUR to 36.90 EUR, whilst the grant fee inflated to 12.31 EUR from 11.80 EUR.
Designs
The filing fee for an industrial design application containing up to 5 designs now constitutes 123 EUR, rising from 117.93 EUR, and the filing fee for each additional design thereafter rose to 12.31 EUR from 11.80 EUR.
Design annuities also saw the same inflation rate, with the fee for the 2nd year of annuity increasing to 36.90 EUR from 35.38 EUR, and the 5th to 73.78 EUR from 70.74 EUR.
Ukraine
On May 1, 2024, the Order “On Approval of the Rules for Drafting and Submitting Industrial Design Applications and Conducting an Examination of Industrial Design Applications and International Registration of Industrial Designs,” entered into force in Ukraine. The Order implements new rules for the filing and registration procedures for industrial design rights in the country, clarifying a variety of matters in relation to IP protection.
As per the new Order, the documents that applicants must provide in order to apply for industrial design protection include a copy of any prior design applications submitted alongside the Ukrainian translation of the same, proof of the design's disclosure at any recognized exhibitions, as well as evidence of payment of the official fees. Moreover, applicants can opt to provide additional material to assist with the granting of design protection including drawings, assembly maps, and ergonomic layout diagrams.
The Order also allows for the submission of a design application by way of electronic filing, eliminating the need for paper forms and expediting the process, so long as the application meets the required specifications for e-filing.
Further, the new rules also allow for the IP Office of Ukraine to establish whether any applicants or authors listed on an application are associated with the aggressor state, with the IPO now having the right to refuse registration of an industrial design on this basis if such association is confirmed.
In addition, the Order clarifies the requirements that must be adhered to for the submission of applications for industrial designs, as well as clarification on the examination procedure rules.
The adoption of the Order is intended to align national IP legislation with that of the EU, a vital step in the European integration of Ukraine, and to streamline the overall IP system in the country. These changes are set to assist creators and owners of industrial designs with the filing and maintenance of their IP rights, allowing for businesses to efficiently manage their IP portfolio.
DesignView
On May 6, 2024, the DesignView image search tool underwent a significant expansion, now incorporating design data from all national and regional IP offices within the European Union.
The integration of EU-wide industrial design data to DesignView means that the tool now contains information on almost 22 million designs from across the globe, allowing users to search for design details on a single platform in up to 37 different languages. The data provided by DesignView can assist users with the search of prior registered designs and to analyze market tendencies, meaning that design creators can make informed decisions as to their IP registrations.
DesignView, which is the largest free IP database search tool of its kind, was initially implemented on November 19, 2012, and is developed and maintained by the European Union Intellectual Property Office (EUIPO) within the framework of the European Intellectual Property Network (EUIPN).
Romania
Romania deposited its instrument of ratification to the Agreement on a Unified Patent Court (UPCA) on May 31, 2024, marking the 18th Member State to ratify the Agreement since its inception. The UPCA Agreement will enter into force for Romania on September 1, 2024.
The accession to the UPCA allows for Romania to benefit from the Unitary Patent Court (UPC) system and for applicants to apply for patent protection in the jurisdiction by way of a Unitary Patent inclusive of IP protection in the country.
A Unitary Patent (UP) provides protection by way of a single, indivisible right that covers all UPC member states collectively, with litigation in relation to UP rights being uniformly presided over and facilitated by the UPC. Patent protection by way of a UP provides an effective alternative to obtaining a European Patent (EP), which comprises multiple individual patent rights valid and nationally governed by each designated European jurisdiction respectively.
The addition of Romania to the UPCA strengthens the position of the jurisdiction within the region and, as a result, is hoped to encourage further filings for patents in both Romania and within UPCA member states as a collective.