Newsletter Spring 2018 Happy New Year 2018 2018 农历新年快乐 EPO Official Fee changes from 1 st April 2018 2018 年欧洲专利局部分官费变更 Change in EPO Rule affecting payment of 3 rd year annual fee 欧洲专利公约第 51 条 (1) 款于 2018 年 4 月 1 日生效 UKIPO Official Fee changes from 6 th April 2018 2018 年英国专利申请官费调整 EU Trade Mark Oppositions 欧盟商标异议程序 EPO Enlarged Board of Appeal decision regarding disclosed and undisclosed disclaimers 权利要求修改 - 2017 年欧洲专利局判例法相关决定
Page 1 Happy New Year Hanna Moore + Curley would like to wish all our friends, colleagues and clients in China a very happy new year and every success and prosperity in the year of the dog! 2018 农历新年快乐 谨代表瀚恒欧洲专利商标律师事务所所有同事祝福各位朋友和合作伙伴 : 阖家团圆, 新春快乐! 期待与您新的合作!
Page 2 EPO Official Fee Changes from April 1st 2018 此文中文翻译版本请点击这里 The EPO's Administrative Council has approved various official fee changes (Decision CA/D 16/17 & Decision CA/D 17/17) which will come into force on 1 April 2018. These official fee changes aim to better reflect the EPO administrative overheads, as well as encouraging more applicants to use electronic filing for all European patent applications. Applicants will be pleased to note there are no changes made to the EPO annual maintenance fees/ renewal fees in the new EPO fee schedule. These EPO fee changes go beyond the yearly inflation-based fee adjustments and will impact three general areas: fees for PCT applicants with the EPO as Receiving Office and/or International Searching Authority (RO/ISA) or for European Regional Phase entry; providing fee incentives to encourage filing in character-coded format (XML/DOCX); and achieving a better cost coverage for appeals. 1. PCT applications filed using the EPO as RO/ISA For PCT applications filed using the EPO as RO/ISA on or after 1 April 2018 the international search fee will be reduced to 1775 from 1875; If a PCT application is submitted in character-coded (XML/DOCX) format the standard transmittal fee of 130 will not be payable. a 75% discount (presently 50%) in the European examination fee will be offered where a PCT Chapter II International Preliminary examination by the EPO has occurred. This change will result in will result in a saving of over 450 on filing at the EPO when the EPO has been the International Search Authority (ISA). This change will make PCT Chapter II a more cost-effective route. 2. Impact of the changes for PCT-EP Regional phase entry where SIPO was the International Search Authority For PCT applicants entering the European Regional Phase, the EPO search fee reduction which was available to applicants where the international search was performed by any of the following Patent Offices will no longer be available on or after 1 April 2018: Chinese Intellectual Property Office (SIPO) United States Patent and Trademark Office Japanese Patent Office Korean Intellectual Property Office Federal Service for Intellectual Property (Russian Federation) Australian Patent Office
Page 3 Thus, effectively, EPO search fees for PCT-EP Regional phase filings will increase by 190 if the International search was carried out by any of the above Patent Offices. Note: includes SIPO. 3. For all European Patent Applications filed or pending on or after 1 April 2018 These fee changes provide for reduced fees relating to the EPO filing fees and grant fees where the necessary documents are filed online and in character-coded format i.e. (XML/DOCX format). After 1 April 2019, the EPO intend has introduced penalties where the documents are not filed online and in character-coded format i.e. (XML/DOCX format). The Appeal fee for filing an appeal will increase from 1880 to 2255. Practical Advice for Applicants For pending PCT applicants where the USPTO, JPO, KIPO, SIPO, Rospatent, or Australian Patent Office are the ISA, consider instructing us to enter the European regional phase before 1 April 2018. This will avoid the avoid having to pay the increase in the supplementary European search fee of 190 to the EPO; Ensure that you provide us with any PCT and European patent specifications and related documents (such as English translations of PCT patent specifications and English translations of amendments) in the required EPO character-coded format XML/DOCX format; and To avail of the lower appeal filing fee, ensure any examination or opposition appeal is filed before 1 April 2018. If you would like to discuss any aspect of law and practice before the EPO including these fee changes, please contact us at china@hmc-ip.com
Page 4 Amended rule about advance payment of 3rd year Renewal fee to enable payment of 3rd year renewal fee on entry to PCT-EPO Regional phase 此文中文翻译版本请点击这里 The Administrative Council of the European Patent Organisation has approved an amendment of Rule 51(1) EPC to allow payment of the third year renewal fee up to six months before its due date. This enables Applicants to pay this renewal fee on entry into the European phase of a PCT Application. The amended rule will enter into force on 1 April 2018 and will apply to all applications for which the renewal fee for the third year is paid on or after 1 April 2018. Please note that as a consequence: the 3 rd year renewal fee may not be validly paid more than three months in advance for applications for which the third year renewal fee falls due before 1 July 2018, the 3 rd year renewal fee can be validly paid as from 1 April 2018 for applications for which the third year renewal fee falls due between 1 July 2018 and 1 October 2018, and the 3 rd year renewal fee may be validly paid six months in advance for applications for which the third year renewal fee falls due on or after 1 October 2018. Please note that this change applies only to the 3 rd year renewal fee. All other subsequent renewal fees can still only be paid up to 3 months before their due date. Since Hanna Moore + Curley does not charge a service fee for payment of the 3 rd year renewal fee when this renewal fee is paid at the same time as filing an application for entry to the EPO Regional phase, this change in the EPO Rule is very helpful for our clients as it will save our clients having to pay any additional service fee for payment of the 3 rd year renewal fee. If you would like to discuss any aspect of law and practice before the EPO including these fee changes, please contact us at china@hmc-ip.com
Page 5 Changes to Official Fees at UKIPO from April 6th 2018 此文中文翻译版本请点击这里 Changes to Official Fees charged by UKIPO will come into force from April 6 th 2018. UKIPO fees will still be lower than at the EPO, where a granted patent application enforceable in the UK is obtainable via the direct European (EP), International PCT(EP) routes, or the International PCT(GB) direct filing route at UKIPO. The UKIPO is not just increasing fees for filing a UK Patent application and for search fee, examination fee and renewal fees but is also introducing new fees. So, there will be newly introduced fees for excess claims and for description pages. New fees for Excess Claims and Description Pages For the first time, excess claims and excess page fees are to be charged by the UKIPO. The excess claims fees will be charged as part of the search fee, and fees for excess description pages as part of the examination fee. Additional official fees may be required at the grant stage if the number of claims or the number of pages has increased during the examination procedure. For any excess claims or pages fees due to be paid with the search or examination request, it will be vitally important to pay these fees by the appropriate due date because the entire application may otherwise become deemed withdrawn at the UKIPO. Excess claims fees will be payable to the UKIPO for each claim after claim 25 i.e. for claim 26 upwards. This is still better value compared with the EPO and the USPTO where excess fee claims are payable for claims after the 15 th claim and after the 20 th claim respectively. Furthermore, the new UKIPO fee of 20 per claim will be significantly cheaper than the respective 235 per excess claim and $80 per excess claim currently charged at the EPO and USPTO. According to the UKIPO, thus, no excess claims fees will be incurred by most UK applications, which typically include an average number of about 22 claims. Nevertheless, of course, the excess claims fees could add significantly to the cost of patent applications in some technology fields, for example, the pharmaceutical and biotechnology fields. For instance, a patent application having 50 claims would incur an excess fee of 500. There will also be a new UKIPO official fee of 10 per page for description pages over 35 pages. For example, a UK patent specification containing 100 description pages would result in an excess description pages fee of 650. However, and in contrast to the EPO, it is currently our understanding that the excess pages fees will not be charged for pages of the claims, abstract and drawings pages. Increased Official Fees for filing a patent Application and for Search and Examination The proposed increases in the application, search and examination fees are relatively restrained. Assuming an application is filed online which is Hanna Moore + Curley s standard practice for efficiency and to minimise costs for our clients the application official fee will rise to 60, the search fee will increase to 150 (or 120 for a PCT(UK) national phase entry), and the examination fee will increase to 100. (Each of these fees would cost 30 more if the application would be filed at the UKIPO by any other way other than electronic filing.)
Page 6 Increased Renewal Fees Annual renewal fees to maintain a granted GB patent in force from year 12 onwards are expected to increase by 10 per fee. General comments: From the applicant s perspective, the new excess claims and pages fees will be of most concern. For example, applications in the pharmaceutical and biotechnology sectors often comprise extensive disclosures and claim sets. Our attorneys at Hanna Moore + Curley will be able to help with advice in relation to drafting and amendment practices for UK patent applications and PCT-UK patent applications, as such cost-effective practices are already part of the service provided by Hanna Moore + Curley for cost-efficient patent prosecution at the EPO where excess claim fees and excess pages fees are already charged. A link to the UKIPO website is below showing full details of the fee changes: https://www.gov.uk/government/publications/new-patents-fees-coming-into-force-on-6-april- 2018/new-patent-fees-guidance-for-business For further information, please contact us at china@hmc-ip.com UKIPO fees will still be lower than at the EPO, where a granted patent application enforceable in the UK is obtainable via direct European (EP) International PCT(EP) or International PCT(GB) routes.
Page 7 The EU Trade Mark Opposition Process The EU Intellectual Property Office examines trade mark applications on absolute grounds only (i.e. whether a sign meets the legal standards of capacity to function as a trade mark). It is up to the proprietors of other rights to object in the event that relative grounds for refusal (i.e. conflict with other pre-existing rights) may apply. The EU Intellectual Property Office advises that about 20% of published EU trade mark applications are opposed. The purpose of trade mark opposition proceedings before EUIPO is to decide, in the event of a relative grounds dispute between an Applicant and a third party, whether a pending trade mark application may proceed to registration or not. If a company (or individual) believes that it has rights would be compromised by the grant of a pending trade mark application, it may file a notice of opposition within a period of three months following the publication of an EU trade mark application in the European Union Trade Marks Bulletin. A notice of opposition may be based on as many trade marks as are considered necessary, provided that they belong to the same proprietor. If an opposition to an EU trade mark application is based on several trade marks belonging to different natural or legal persons, each proprietor will have to file a separate notice of opposition. A notice of opposition must explain the grounds of the opposition and the rights upon which the opposition is based. The grounds on which an opposition may be made are set out in Article 8 EUTMR. Usually the rights relied on are another earlier trade mark application, or earlier registered trade mark. These may be other EU trade marks, national trade marks from one of the EU Member States, or international trade marks registered under the Madrid Agreement and Protocol designating the EU or an EU Member State. It is also possible to base opposition on well-known trade marks protected under Article 6bis of the Paris Convention, or based on other legal rights, such as geographical indications. The notice of opposition must be filed in one of the two EUIPO official languages named on the Application being opposed (which may be English, French, German, Italian or Spanish). Payment of the official opposition fee must also be received by the Office within this time limit. Proof of Use a requirement for opponents whose earlier EU rights have been registered for over five years EU Trade marks must be put to real and genuine use on the market within a period of five years following their registration to maintain their validity. Accordingly, the European Union trade mark Regulation (EUTMR) grants the applicant an opportunity to request Opponents to submit proof of the use of the trade marks upon which an opposition has been based, if their trade marks have been registered for more than five years. The request for proof of use must be submitted in a separate document and needs to detail times and places where the trade mark has been put to use (supported with evidence such as catalogues, invoices, photographs, copy advertisements etc). Any goods or services for which adequate proof of use is not submitted will be excluded from the opposition.
Page 8 Negotiating an amicable settlement Once an Opposition is filed, the EUIPO will examine it to check its admissibility and then a notification is provided to the Applicant. A cooling-off' period of two months begins where EUIPO permits a friendly settlement before the commencement of the adversarial phase. This phase may be extended by up to 22 further months by agreement. As the adversarial phase has not yet commenced, if both parties reach an agreement that puts an end to opposition, neither party will be ordered to pay costs. In addition, if the agreement reached is based on restricting the list of goods and services of the EU trade mark by excluding those affected by the opposition, or the total withdrawal of the EU trade mark application, the EUIPO will refund the opposition fee to the opponent. The Adversarial Process If a friendly settlement cannot be reached, the EUIPO will begin adversarial proceedings and invite both parties in turn to submit any further arguments and evidence. This can be a time consuming and expensive process. The opponent must file evidence in support of the opposition within two months. The applicant will be given a further period of two months to respond. A final decision is normally made by a three member opposition division. What are the possible steps for EU trade mark applicants in the event of an Opposition being filed against their mark? Division of a trade mark application In the event where only some of the goods and services are opposed, it may be possible to divide out goods/services from the original application into one or more divisional applications provided that there is no overlap of the goods/services between the various applications, and also provided that the division does not split up the goods/services being opposed. Once an application has been divided, it is not possible to merge the various applications together again. Division incurs extra costs, but where only some goods/services are being opposed, it provides an option to enable registration more quickly for the goods/services that have not been opposed. Withdrawal or Restriction The applicant can withdraw or restrict the specification of goods/services of his application at any stage but if the application is withdrawn or restricted after the end of the cooling-off period the applicant must bear the fees and costs (within limits set down by the EUIPO) incurred by the opposing party, unless the EUIPO is informed that the parties have agreed otherwise.
Page 9 Conversion Sometimes, Oppositions are based on rights which apply in only some of the EU member states and it can be worth considering converting the EU trade mark application into separate national application(s)/designations(s) in those other EU member states where there is no conflict. Of course, it would probably be unwise to seek conversion such that it would clash with an Opponent s valid prior rights at a national level. If an applicant withdraws his EU trade mark application, he can request the conversion of his EU trade mark application into separate applications for national trade marks or, in the case of a designation of the EU in an International Registration, into separate designations of the EU member states in the International Registration (except for Malta, which would have to be the subject of a national application, as it is not in the Madrid Protocol). If an applicant restricts the specification of goods/services in the EU trade mark application or designation, he can request conversion for the goods/services which have been deleted from the EU trade mark application or designation. Note that even after the final Opposition decision issues, it is possible to convert the refused application (or the part of the application that has been refused) into national application(s)/designation(s), except for those member states in which, in accordance with the decision of the EUIPO, grounds for refusal of the EU trade mark application apply. Costs The losing party in opposition proceedings bears the fees incurred by the winner as well as all costs incurred which are essential to the proceedings. This includes travel and subsistence and the fees of agents, advisors or advocates. There is, however, a set scale for each category of costs and the costs awarded are usually substantially less than the actual costs incurred. Furthermore, if the opposition is only partially upheld, the Office may reduce the amount of costs awarded. Appeals Opposition decisions can be appealed within two months of the decision, and a written statement setting out the grounds for the appeal must be submitted within four months of the date of the decision. In exceptional cases, further appeal can then be made to the General Court of the European Union and then to the Court of Justice of the European Union. For further information see the EUIPO Trade Mark Guidelines at: https://euipo.europa.eu/ohimportal/en/trade-mark-guidelines#opposition
Page 10 EPO Enlarged Board of Appeal decides on disclosed and undisclosed disclaimers. 此文中文翻译版本请点击这里 The Enlarged Board of Appeal (EBA) at the European Patent Office (EPO) issued a new Decision G1/16 on 18 December 2017. This decision relates to amendment of a claim by introducing a so-called undisclosed disclaimer into the claim and in particular, concerns the allowability of disclaimers under Article 123(2) EPC which requires that claim amendments must be directly and unambiguously derived from the application as originally filed. Undisclosed disclaimers are disclaimers which do not have strict support in an application as filed and which aim to exclude from the scope of the claim, subjectmatter disclosed in the prior art and which the applicant could not have known at the time of filing (e.g. intervening prior art or an accidental anticipation) or unpatentable subject matter. The EBA has confirmed that for 'undisclosed' disclaimers, the proper test is set out exclusively in previous EBA Decision G1/03. Importantly, a disclaimer must not remove any more subject-matter than is absolutely necessary to restore the novelty of a claim or to disclaim unpatentable subject-matter. In accordance with G1/03, the introduction of a disclaimer of this type is not permitted to provide a technical contribution to claimed invention. Specifically, such an undisclosed disclaimer may not be taken into account when considering inventive step or sufficiency of disclosure.
Page 11 In this decision, the EBA has also confirmed that for 'disclosed' disclaimers, the proper test to fulfil is the gold standard test set out in previous EBA Decision G2/10. This gold standard test sets out that where a disclosed disclaimer is used in a claim, the remaining subject-matter must be directly and unambiguously derivable from the application as filed in order to comply with Article 123(2) EPC. This decision provides clarity to applicants on the EPO approach to allowability of claim amendments by way of either 'disclosed disclaimed or undisclosed disclaimers. If you would like to discuss any aspect of law and practice before the EPO please contact us at china@hmc-ip.com Hanna Moore + Curley 2018 Photo Credits - Cover: Kaityn Baker (Unsplash.com) Trade Mark images : EU Trade Mark and Design Network Other Images : Shutterstock.com The information in this newsletter is given by way of guidance only and does not constitute legal advice.