Worldwide IP system updates, collaborations, and fee changes
China
Patents
On August 6, 2024, the Chinese National Intellectual Property Administration (CNIPA) implemented a reduction in intellectual property fees in line with recent legislative changes and the enforcement of legal Notices.
As per the patent costs amendments, all requests for the compensation of a patent validity term will henceforth incur a cost of 200 RMB. Should the request meet the required obligations for compensation of a patent term upon assessment, a total of 8,000 RMB will be payable as compensation for an annual patent right, with no charge being incurred for a period of 12 months or less.
Moreover, a decrease of 15% has been implemented in relation to patent annuity fees during the patent open licensing implementation phase. Such reductions in fees are enforceable respectively, and are not available in conjunction with one another. Further, in case the amendment to the name or denomonation of a patent applicant/owner is made in a bulk order and does not involve the transfer of rights, the official fees are charged per each change requested.
Industrial Designs
Industrial design fees in relation to applications filed via the Hague Agreement in the jurisdiction have also been altered. As such, the first and second installments of the designation fees paid may be reduced in certain cases as per the Notice of the Ministry of Finance and the National Development and Reform Commission on Issuing the ‘Measures for the Reduction of Patent Fees’” (Cai Shui [2016] No. 78), the “Notice of the Ministry of Finance and the National Development and Reform Commission on Policies for Suspending, Exempting and Adjusting Certain Administrative Fees” (Cai Shui [2018] No. 37; and the “Notice of the Ministry of Finance and the National Development and Reform Commission on Policies for Reducing Certain Administrative Fees” (Cai Shui [2019] No. 45).
Lastly, all PCT applications filed with the CNIPA as the Receiving Office which are subject to an international search are now exempt from the application fee and surcharge upon entering the Chinese PCT national phase, whilst PCT applications for which the CNIPA conducts an international search report or an international preliminary report on patentability will be exempt from the substantive examination fee when entering the Chinese national phase and requesting substantive examination.
EU Sanctions
The European Union has enforced its 14th set of sanctions against Russia amidst ongoing political unrest, implemented on June 25, 2024 and impacting the rules surrounding intellectual property (IP) rights for applicants with an association to the jurisdiction.
As per the sanctions, pursuant to Article 5s of Regulation No. 833/2014 and the Council Regulation (EU) 2024/1745 of 24 June 2024, EU IP Offices are prohibited from accepting new applications for the registration of patents, trademarks and industrial designs, among other IP subject matters, should the applicant be of a certain connection to Russia.
Those prohibited from filing for IP matters within the EU include Russian nationals, natural persons residing in Russia and legal entities, organizations or institutions based in Russia. These restrictions also apply should any of the aforementioned types of restricted applicants apply alongside non-Russian nationals/business owners within the country.
Any applications for IP filed following the grant of IP right protection will not be impacted by the sanctions, nor do they apply to nationals of the EU, EEA or Switzerland with temporary residence in Russia.
Turkmenistan
July 13, 2024 marked Turkmenistan’s signing of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention, which will enter into force 3 months following the countries accession to the Protocol.
The Protocol on the Protection of Industrial Designs was initially adopted on September 9, 2019, and facilitates a system which allows for applicants to file one industrial design application, accompanied by a single set of fees, with either the EAPO or a national office of a member state. The registered right resulting from such applications will cover all contracting states to the Protocol.
Turkmenistan's accession to the Eurasian Protocol on Industrial Designs means that all member states to the Eurasian Patent Organization are now parties to the Protocol. This not only indicates a drive toward a stronger IP system in the region, but also gives way to the potential of the EAPO joining the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, paving the way for a more internationally cohesive IP system for Turkmenistan.
PPH
July 6, 2024 saw the joining of Brazil to the Global Patent Prosecution Highway (GPPH) program.
The GPPH is a multilateral cooperation program formed of 27 IP offices from across the globe, aiming to facilitate the acceleration of the processing of patent applications through the sharing of examination data between IP offices which are a party to the GPPH. This sharing of patent examination data not only applies to national applications but to those filed under the Patent Cooperation Treaty (PCT) as well.
Prior to joining the GPPH, Brazil had bilateral PPH agreements with 23 national and regional IP offices, increasing to 35 offices owing to its accession to the GPPH.
Multiple other PPH programs have recently been implemented worldwide, with a new PPH agreement being signed between France and Singapore on July 10, 2024, entering into force on September 1, 2024, and between the African Regional Intellectual Property Organization (ARIPO) and China on June 8, 2024. Moreover, an existing PPH program between the Icelandic Intellectual Property Office (ISIPO) and China was renewed on July 1, 2024 for a period of 5 years, concluding on June 30, 2029.
Paraguay
As of 22 July 2024, the National Directorate of Intellectual Property of the Republic of Paraguay (DINAPI) officially joined DesignClass.
The accession of Paraguay to DesignClass means the country will now use and accept the list of terms from the harmonized database of product indications (HDBPI).
DesignClass itself is an online comprehensive database that allows users to search the list of HDBPI terms, available in 30 languages, enabling users to find the most accurate indications in relation to their designs for their classification and protection.
Paraguay marks the 19th IP office from outside of the European Union to have joined DesignClass, and the 44th IP office overall to use and accept the terms of the international database.
The country's integration into DesignClass is a direct result of actions taken by the AL-INVEST Verde DPI programme, funded by the EU and implemented by the European Union Intellectual Property Office (EUIPO).
On June 18, 2024, Paraguay also adopted the fourteenth edition of the Locarno classification for industrial designs and models, administered by the World Intellectual Property Organization (WIPO), which entered into force with respect to the country on July 22, 2024.
The Locarno classification for industrial designs constitutes a list of all possible classes and subclasses pertaining to designs, as well as a list of all goods and details of which class they would fall under.
The classification was established by the Locarno Agreement of 1968, and provides the advantage of having a unified system applicable across the board to contracting parties to the system.
The new version of the Locarno classification is inclusive of new classes and goods/products, indicating a step toward modernisation in response to an ever-changing IP landscape.