Early certainty and PCT direct – a visit by the EPO

Have you ever dreamt of having a fast grant of a European patent?

This question was in focus at a well-attended breakfast seminar held by Awapatent in cooperation with a group of Examiners from the European Patent Office (EPO).

Under the project “Early Certainty”, the EPO is currently trying to reduce their backlog when it comes to search, examination, and oppositions. The EPO has set a goal stating that searches should be performed within 6 months of filing, examination should be concluded within 12 months from the start of the examination procedure, and oppositions should be concluded within 15 months.

By recruiting new examiners and focusing on their core business, the EPO has already managed to reach the goal when it comes to searches, but for examination and oppositions the goal is still further down the road.

Another interesting project launched by the EPO is PCT direct, which is available for PCT applications claiming priority from a previous application searched by the EPO. In brief, the applicant may, when filing the PCT application, also file informal comments regarding the written opinion of the previous application. These informal comments are then taken into account by the Examiner when preparing the written opinion of the PCT application. This improves the chances of having a positive first written opinion issued for the PCT application which, together with PPH requests, may lead to faster grants outside Europe.

I welcome the EPO’s attempts to speed up the procedure. However, I can also see that the ambitious goals set up for examination puts a pressure on the Examiners to quickly come to a decision, and we may expect that the average number of office actions per case will go down. I have already seen a tendency that the EPO summons to oral proceedings early in the proceedings, such as immediately after the first office action.

Sofia Åberg, European Patent Attorney and member of Awapatent’s EPC specialist team

Amended rules relating to the refund of the examination fee

Today the rules relating to fees[1] stipulates that the examination fee will be refunded in full if the European patent application is withdrawn, refused or deemed to be withdrawn before the Examination Division (ED) has assumed responsibility of the application. The examination fee can also be refunded at a rate of 75% if the European patent application is withdrawn, refused or deemed to be withdrawn after the ED has assumed responsibility, but before the substantive examination has begun. Exactly when the Examination Division assumes the responsibility really depends on when the request for examination has been filed, which is practically determined by when the Examination fee has been paid. The substantive examination begins on the date when the examiners starts identifying European prior rights not available when the search was carried out, and this date is recorded in the Register.

This rule will now change, and the examination fee will hereafter be refunded as follows:

R Fees 11 (a)  in full if the European patent application is withdrawn, refused or deemed to be withdrawn before substantive examination has begun; and

R Fees 11 (b) at a rate of 50% if the European patent application is withdrawn after substantive examination has begun and before expiry of the time limit for replying to the first invitation under Article 94 (3) EPC issued by the Examining Division proper or, if no such invitation has been issued by the Examining Division, before the date of the communication under Rule 71(3) EPC.

A full refund will thus be obtainable if the substantive examination has not begun. For certain files and if operationally possible the EPO will inform the applicant, at least two months beforehand, of the date on which it intends to start substantive examination, and they will commit to not starting substantive examination before the date indicated.

The 50% refund will be applied after the issuance of a first office action, and an applicant will only get this refund if they actively withdraw their application. Communications addressing purely formal deficiencies in the application documents and issued by formalities officers will not be considered an Art 94(3) EPC communication issued by the “Examining Division proper”.

In the situation of a direct grant after search, the 50% refund is only possible to obtain the day before the date printed on the Rule 71(3) EPC communication, meaning that the withdrawal should be done as soon as possible after the positive search opinion has been received.

A withdrawal made conditional on the 50% refund will generally be possible.

RFees 11 (a) a as amended applies to all European patent applications which are withdrawn, refused or deemed to be withdrawn on or after 1 July 2016. Article 11(b) RFees as amended applies to all European patent applications for which substantive examination starts on or after 1 November 2016.

Sofia Willquist, European Patent Attorney

[1] RFees 11 Refund of examination fee

EPO and IP AUSTRALIA launches new PPH agreement

As the PPH network continues to expand, the Awapatent IP Blog lets its readers stay one step ahead by keeping monitoring the new expansions and arising possibilities.

Most recently, European patent applicants are offered a new possibility of speeding up and simplifying examination of their patent applications. This possibility comes in addition to the eight existing agreements that the EPO has with the patent offices of Canada, China, Korea, Israel, Japan, Mexico, Singapore and USA.

Effective 1 July 2016, the EPO and the Australian IP office, IP AUSTRALIA, has launched a new PPH agreement. The agreement applies to both national and to PCT work products. The press release of the EPO may be found here.

To recall, for a given PPH-agreement the PPH allows for requesting accelerated examination at the one office participating in this agreement based on the search results and a set of claims accepted for grant in an analogous application at the other participating office.

Finally, it is worth mentioning that also the Peruvian and Vietnamese IP offices have entered the PPH-network. Namely, the Peruvian IP office has signed an agreement with the Spanish patent office, OEPM, and the Vietnamese IP office has signed an agreement the Japanese patent office, JPO, respectively. Thereby the total number of IP offices participating in the PPH network is 39.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

Has China taken another Bite out of the Apple?

After locking horns with a local Chinese company for six years over the IPHONE trademark, Apple took a drubbing after last month’s decision by the Beijing High People’s Court.

Apple applied for the “IPHONE” trademark for software and hardware (Class 9) in China in 2002. A Chinese company, called Xingtong Tiandi, which makes leather goods, is the owner of the suit mark “IPHONE’, which was filed in 2007, the same year Apple’s first Smartphone, the iPhone, was sold. The brouhaha began in 2010 when the US giant opposed Xingtong Tiandi’s trademark.  The appeal was dismissed by the Beijing Court on 31st March stating that Apple was unable to prove that its “IPHONE” mark was well known in China before 2007 when it first sold its smartphones.

After being dealt a series of unsuccessful outcomes; Apple was unlucky at the opposition, the opposition review, the appeal at the Beijing Intermediate People’s Court and finally the appeal at the Beijing High People’s Court. Apple has stated that it plans to vigorously protect its intellectual property rights by requesting a retrial by the Supreme Court.

The Beijing High People’s Court made specific reference to the fact that Apple’s iPhone was released in June 2007, and sold on the Mainland China in October 2009.  The evidence filed by Apple was predominantly after the application date of the suit mark, i.e. 29 September 2007. The Court found that Apple was unable to establish that its iPhone trademark was well known before that application date.

This is another case demonstrating the difficulty that brand owners face in the fight against trademark squatters, in the absence of registered trademark rights in China.  If the brand owners have to rely on the ‘well-known mark’ ground, the odds are stacked against them unless they have been on the ground in Mainland China for a significant period, before the relevant time.   So, the cardinal lesson/key takeaway for brand owners is to register the trademark for the goods that you need protection for in China at the earliest possible time.  It is expensive and time consuming to deal with a preemptive application, not to mention the negative publicity that inevitably arises out of a legal throw-down.

A degree of bewilderment seems to underlie some reports, especially the non-Chinese ones, on the decision that iPhone is not a well-known trademark in China.  The decision has made it clear that the relevant point of time in determining the well-known mark status is the application date of the suit mark. It is irrelevant as to how famous iPhone is nowadays or at the time of the hearing of the court of appeal.  Though without the benefit of knowing what the evidence consisted of, it is not difficult to imagine how onerous it would be to produce the required evidence of use and reputation in China before 29 September 2007.

Another point to note is that in the appeal to the Beijing Higher People’s Court, Apple claimed an additional ground, which provides for the invalidation of trademarks that are, for example, registered by deception or other improper means.   The Court did not consider this ground because it was never raised in the first instance appeal and the opposition review, and the Court did not comment on the applicability of the ground.  If Apple has some prospect of success by availing of this reasoning, it is curious as to why this was not pleaded in previous proceedings.

Apple was reported to plan to seek a retrial by the Supreme People’s Court and to continue to vigorously protect its trademark rights.  It will be interesting to see if the Supreme Court decides differently.

Ai-Leen Lim, CEO and Principal Counsel, AWA Asia

What does Brexit mean for the EUTM system?

The people of the United Kingdom have spoken: They do not wish to be part of the EU any longer. It will now take time, probably years, before we know the terms of the divorce between the UK and the EU. Having said that, what impact of Brexit do we foresee for trademark owners?

Short-term EUTM registrations are still valid in the UK. Keep in mind that the referendum has voted for Brexit, but the UK is actually yet to request for an exit, which might not happen until the autumn. This means that no short-term action is required and EUTM registrations remain valid in the UK.

Once Brexit is a fact, does it mean that the trademark protection in the UK will be lost by EUTM proprietors?

For existing EUTM registrations the answer is probably no. The expected solution is that a transitional period is set up where EUTM owners can extend/convert their EUTM registration to national UK registrations (this will likely include payment of official fees).

For new EUTM registrations the answer is that the UK will no longer be covered by EUTM and a separate application in the UK will therefore need to be filed. Today’s official fee to add the UK to an International/Madrid registration is only CFR 262 for the first class and CFR 73 for each additional class. In other words, it is not massively expensive.

From a prosecution perspective the changes will likely only be administrative and mean two applications with a little higher cost. From other perspectives we see the following three issues:

  1. Injunctions based on EUTM registrations normally cover the entire EU. Post-brexit the courts in the UK will no longer be able to issue pan-EU injunction, and vice versa court injunction in other EU member states will not cover the UK. This will increase the cost of litigation since two sets of litigation will be required.
  2. Today it is sufficient to use a EUTM registration in the UK to maintain it in the entire EU. Post-brexit EUTM proprietors, who rely on their EUTM in the UK, will need to revise their filing strategy.
  3. The case law of the Court of Justice of the EU will no longer be directly applicable in the UK, which probably will lead to differences in jurisprudence between the EU and UK. This will be important for brand owners to keep track of.

Overall our initial position is that there is no need for drastic actions with regard to the Brexit referendum. We will of course keep reverting to this subject until the dust has settled and the picture is more clear.

Kristian Martinsson, Attorney at Law