The latest shifts in Intellectual Property law worldwide
EPO
As of April 1, 2024, an amended fee schedule is set to enter into effect with respect to matters filed with the European Patent Office. Whilst some costs, such as the filing fee, remain unchanged, others have risen by varying percentage increases throughout.
As per the amended fee schedule, the cost for a European or supplementary European search is set to rise by approx. 4% from 1460 EUR to 1520 EUR for applications filed on or after July 1, 2005, and from 1000 EUR to 1040 EUR for those filed prior to that date.
The international search fee will also increase by approx. 4% from 1775 EUR to 1845 EUR, as will the designation fee for one or more Contracting State for applications filed on or after April 1, 2009, increasing to 685 EUR from 660 EUR.
The yearly costs in relation to patent renewals have risen by varying amounts across the board, with the fee for the 3rd year set to increase by approx. 30% to 690 EUR from 530 EUR whilst the 5th year will increase by a lesser approx. 8% to 1000 EUR from 925 EUR. The 7th year of renewal will rise to 1310 EUR from 1305 EUR.
The amended fees in relation to the examination of a patent application will rise by an approx. 4%, with the cost for applications filed prior to July 1, 2005 set to inflate from 2055 EUR to 2135 EUR and from 1840 EUR to 1915 EUR for those filed after the aforementioned date. The grant and publication fee will also rise by approx. 4% from 1040 EUR to 1080 EUR.
In addition to an amended fee schedule, the EPO will also implement a new fee system for micro-entities. The definition of micro-entities in the context of the EPO is inclusive of microenterprises, natural persons, non-profit organizations, universities, and public research organizations that have filed fewer than 5 patent applications in the past 5 years.
The new fee structure for micro-entities will be an extension of the current system, introducing new fee reductions for the filing, search, designation, examination, grant, and renewal of patents for qualifying applicants. Such reductions in fees for eligible applicants are set to further assist those with fewer resources in applying for patents, encouraging innovation from a more diverse range of inventors.
PPH
The pilot project of the Patent Prosecution Highway (PPH) between the German Patent and Trademark Office (DPMA) and Chinese Intellectual Property Authority (CNIPA) has recently been extended.
Initially implemented on January 23, 2012, the joint cooperation allows for accelerated patent examination through the sharing of data and information between the two offices. As such, the patent examination results produced by the Office of First Filing are shared with the Office of Second Filing, thus eliminating the need for duplicate examination of the same patent application if submitted in both offices.
The DPMA and the CNIPA have extended the pilot PPH project for a further three years, with the new expiration date of the project set for January 22, 2027.
The Japanese Patent Office (JPO) and the Indonesian Directorate General of Intellectual Property (DGIP) have also opted to extend their PPH pilot program. Originally entering into effect on June 1, 2013, the extension of the program between the two offices will run until December 31, 2026.
The extension of multiple PPH pilot programs indicates a move toward a more cohesive and collaborative approach to the IP field on an international scale.
DesignClass
The Registry of Intellectual Property of Guatemala (RPI-GT) joined DesignClass as of January 29, 2024, and, as such, will utilize the list of terms contained within the harmonized database of product indications (HDBPI).
DesignClass and the HDBPI forge a unique digital platform containing a plethora of information pertaining to the Intellectual Property Registry facilitated by the European Intellectual Property Office (EUIPO). The platform allows users to search and classify products for industrial design protection in 30 languages.
The addition of Guatemala to DesignClass means there are now a total of 45 participating IP offices worldwide, inclusive of the EUIPO itself, with the country constituting the 18th office outside of the EU to utilize the system.
Bolivia
As of January 10, 2024, the Intellectual Property Office of Bolivia (SENAPI) began a move towards the digitalization of services by allowing for the signing of documentation via digital means. The previous system meant that applicants and rights holders were required to be physically present in the IP Office for the signing and certification of IP rights.
The possibility of digital signatures is facilitated with the aim of streamlining and simplifying the IP protection and maintenance process by allowing applicants to sign relevant documents remotely. This process also reduces the usage of signing and printing documents by paper means, thereby enforcing a more eco-friendly IP system through the use of electronic documentation.
United States
A new Pre-Prosecution Pilot service was recently introduced by the United States Patent and Trademark Office (USPTO), aiming to facilitate the review of patent applications prior to their submission.
Aimed towards inventors who have not previously filed for patent protection for their innovations, the pre-prosecution review service is hoped to expand accessibility to the IP protection system for those who may not have had the means and support to have filed before.
The review of potential patent applications via this service will provide insight to prospective applicants with regard to the strengths and weaknesses of their patent application, including support for applicants in utilizing services to determine whether their invention would meet the criteria of novelty.
The USPTO recently implemented the service for the first wave of prospective applicants until January 31, 2024 and is hoped to be able to provide more information in due course. Whilst a pre-prosecution patent review will not be considered an official decision as to patentability by the USPTO, the service is hoped to expedite the process by mitigating any slight mistakes in an application prior to its submission.