Recent alterations and updates to global IP systems and fee schedules
US
The United States Patent and Trademark Office (USPTO) commenced the issuance of electronic trademark registration certificates as of June 7, 2022.
This method of trademark certification has become the new official method, replacing the previous automatic issuance of paper copies of certificates. IP rights owners will remain able to request physical paper “presentation” copies, and certified paper copies, for a prescribed fee.
The transition from paper registration certificates to electronic ones will allow trademark rights holders easier access to their registrations, and is set to afford them the opportunity to receive their certificates at a faster rate once their trademark is registered.
Czech Republic
The Czech Republic has acceded to the Geneva Act of the Lisbon Agreement on Designations of Origin and Geographical Indications, having deposited its instrument of accession with the World Intellectual Property Organization (WIPO) on June 2, 2022
The Geneva Act allows producers of quality products linked directly to its origin to file one application to the WIPO along with payment of a single set of fees, resulting in the protection of designations of their products by way of either appellation of origin, or geographical indication.
The Czech Republic was one of the signatory countries to the Lisbon Agreement for the Protection of Designations of Origin and their International Registration of 1958, with the Geneva Act further building on the legal framework of the Lisbon System.
There are currently over 70 designations of origin registered in the Czech Republic under the Lisbon system, and the accession to the Geneva Act of the Lisbon Agreement is set to further assist Czech producers with protecting their quality products of origin.
Portugal
As of July 1, 2022, the Portuguese Institute of Industrial Property (INPI) is set to implement an updated intellectual property fee schedule. The changes constitute slight increases of approximately 1% across the board, with some fees remaining unaffected.
In relation to trademark fees, the cost for the online filing of a trademark application in one class, for example, is set to rise from 127.50 EUR to 129.08 EUR, with the online trademark renewal fee for one class constituting the same increase and costs. Similar rises are to be seen throughout the fees for trademark registration and maintenance.
Patent fees will see a similar cost inflation, with the fee for the online filing of a patent application rising from 107.73 EUR to 109.07 EUR. Annuity fees for patents filed online will also see a similar percentage increase, with the 10th year comprising a fee of 376.46 EUR as opposed to the previous 371.85 EUR. The 15th year will rise from 584.31 EUR to 591.56 EUR, and the 20th from 743.68 EUR to 752.90 EUR.
The fee for the online filing of a design application containing up to 5 variants of the design will rise from 107.73 EUR to 109.07 EUR. The annuity fees for designs when completed online will see small increases of less than one EUR throughout. As such, the cost associated with the 3rd year is set to rise from 43.09 EUR to 43.62 EUR, and the 5th year from 64.63 EUR to 65.43 EUR when completed online.
The slight increases in fees for Portuguese IP reflect the trend of inflation in the region, and IP applicants and owners may wish to take advantage of the current lower costs by completing actions prior to the implementation of the higher rates on July 1, 2022.
Unitary Patent in EPO
The final preparations in relation to the implementation of the unitary patent (UP) and the Unified Patent Court (UPC) are underway, with the UP system expected to commence towards the end of this year.
A unitary patent will offer an alternative route of protection for innovations complementing the existing method of a European patent. Once the system is implemented, rights owners will be able to obtain patent validation in all countries participating in the unitary patent system, of which there are currently 17 EU member states.
Likewise to European patents, unitary patents are to be granted by the European Patent Office (EPO). European patent holders may request that their invention be additionally registered as a unitary patent, and as such, unitary patent applications should be submitted within one month of the grant of their European patent.
Once implemented, the unitary patent system is set to offer a more cost effective route of protection than a European patent in instances where the applicant is seeking patent validation in four or more EU countries participating in the system. Both the Unified Patent Court and the unitary patent system will commence on the first day of the fourth month after the UPC Agreement has been ratified by Germany.
Zambia
Zambia has become the latest country to join the TMview search tool, with the Patents and Companies Registration Agency of Zambia (PACRA) having made its trademark data available on the database as of June 13, 2022.
TMview was first introduced on April 13, 2010, providing informative access to over 106.5 million trademarks in total, of which PACRA has contributed more than 60,000. The new addition of Zambia marks the 77th participating office to the tool, with those from the US, Spain, Germany, Italy and China among the most frequent users of the database.
The inclusion of Zambia to TMview is a direct result of the Intellectual Property Rights (IPRs) Action for Africa (AfrIPI) project, directed by the European Commission, executed by the European Union Intellectual Property Office (EUIPO), and funded by the EU.