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Global patent law update

Date: 31 March 2020
Author: FB Rice
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Ensure you are kept informed. Discover the most recent changes to IP law across the globe in our summary below.

COVID-19 pandemic

Extensions of time: Many IP offices are providing extensions of time or suspending time limits. It is recommended that practitioners carefully check with IP offices to ascertain the precise current situation.  

Argentina

Extensions of time: In the prosecution of patent and utility model applications, three automatic extensions of time of 30 days are available to respond to clarifications prior to substantive examination. This new resolution applied from 31 October 2019.

Australia

Abolition of innovation patent: Applications for innovation patent will not be accepted from 26 August 2021. After this date, a patent application with a filing date earlier than 26 August 2021 may either be converted into an innovation patent application or used as the basis for a divisional application for an innovation patent. Since the maximum term of an innovation patent is 8 years, all innovation patents will expire by 26 August 2029.

Brazil

Patent Prosecution Highway (PPH): On 1 December 2019, the US and Brazil concluded a new PPH agreement.  This provides for the coverage of a greater range of technologies and expands the number of PPH applications that the Brazilian Patent Office will accept.

China

Draft examination guidelines: The Chinese Patent Office have called for public comment on new draft examination guidelines directed towards inventions embodying artificial intelligence, block chain and big data. These inventions invariably include abstract features such as algorithms and business methods.

The essence of the guidelines is that examiners will be required to consider the claimed invention as a whole. This is to be contrasted with current practice where abstract features are ignored for the purposes of evaluating novelty and inventive step.

Electronic patent certificates: The Chinese Patent Office will now only issue certificates in electronic form. If a paper copy is required, it will be available on the payment of a fee.

Europe

Artificial Intelligence: The EPO refused two European patent applications, EP 18 275 163 and EP 18 275 174, in which an AI system was designated as the inventor. Refusal was on the grounds that they do not meet the legal requirement of the European Patent Convention that an inventor designated in the application has to be a human being.

In both applications a machine called "DABUS", which is described as "a type of connectionist artificial intelligence", is named as the inventor. The applicant stated that he had acquired the right to the European patent from the inventor by being its successor in title, arguing that as the machine's owner, he was assigned any intellectual property rights created by this machine.

In its decisions, the EPO considered that the interpretation of the legal framework of the European patent system leads to the conclusion that the inventor designated in a European patent must be a natural person. The EPO further noted that the understanding of the term inventor as referring to a natural person appears to be an internationally applicable standard, and that various national courts have issued decisions to this effect.

The designation of an inventor is mandatory as it bears a series of legal consequences, notably to ensure that the designated inventor is the legitimate one and that he or she can benefit from rights linked to this status. To exercise these rights, the inventor must have a legal personality that AI systems or machines do not enjoy.

Rules of Procedure of the Boards of Appeal: On 1 January 2020 new Rules of Procedure of the Boards of Appeal came into force. The scope of the appeal is now limited to a judicial review of the contested decision and amendments will be increasingly difficult throughout the appeal. The onus is on parties to provide justification and reasons for the amendment, with absolute discretion to admit the amendments lying with the Board.

COVID-19 extended deadlines:  In view of the Covid-19 pandemic, the European Patent Office has extended all time limits until 17 April 2020.

Fee increases:  It has been announced that many of its official fees will increase with effect from 1 April 2020. A range of official fees will be affected on average by 4%. This is the first general fee increase since 2016.

Germany

Following a constitutional challenge, Germany’s participation in the UPC has now been rejected. The German Federal Constitutional Court (FCC) has decided that the act of approval to the UPC agreement is void because it was not approved by two thirds of the members of parliament (Bundestag). This will require new acts of approval by the parliaments of the member states. Therefore it is likely that there will be substantial delay.  In addition, It is likely that other substantive issues not yet decided by the FCC will be raised. Consequently, the prospects of the UPC being implemented is very low.

Great Britain

Unitary Patent Court (UPC): On 27 February 2020, the British government announced that it would no longer participate in the Unitary Patent Court (UPC) should it ever eventuate.

Assuming that Germany is able to join the UPC, it ought to be attractive to litigants given that it will be binding on a substantial number of European states. The UPC will avoid the need for costly state-by-state litigation. However, it will be necessary to relocate the Chemical and Life Sciences of the UPC Central Division as this is currently mandated to London.

Hong Kong

New patent system: A new patent system was launched in Hong Kong on 19 December 2019. Under the new patent system, an original grant patent (OGP) system was introduced to provide to patent applicants an alternative route of seeking standard patent protection in Hong Kong. Patent applicants now have the option of filing standard patent applications directly in Hong Kong, thereby dispensing with any prior filing of their corresponding applications with a designated patent office outside Hong Kong as required under the pre-existing "re-registration" system.

India

Patent Prosecution Highway (PPH): A program had been concluded between Japan and India with the Indian Patent Office deciding to accept 100 applications from 5 December 2019. A review of these applications found that since 44 ineligible, from 9 March 2020, a further 44 applications would be accepted.

Proposed adoption of Locarno classification: There is a proposed update to the Indian registered rules to introduce a small entity category for applicants and more importantly adopt the current edition of the Locarno Classification. An important consequence is that Class 32 (Graphic symbols and logos, surface patterns, ornamentations) is proposed to be introduced. This implies that designs for Graphic User Interfaces (GUI), which are currently a grey area, will become registerable.

Intellectual Property Appeal Board: With the appointment of a new patent board member, the Appeal Board re-commenced hearing patent appeals from 3 March 2020.

Israel

New Examination Guidelines Antibodies: A claim to antibodies which are defined in accordance with their binding to a novel antigen or epitope will in principle be patent eligible. However, such claims will be considered limited to antibodies which are generated by routine methods or by methods described in the specification or to antibodies which are structurally defined in the specification.  

A claim to antibodies which are defined by their binding kinetics, physical properties or “special properties” such as immunogenicity, will be limited to antibodies which are structurally defined in the specification, or to antibodies which are “reasonably and consistently” obtainable either by the methods defined in the specification or by routine methods.

New examination guidelines divisional applications: These guidelines liberalize the PTO approach in that overlap objections will only be raised when the claims of the parent and the divisional confer an identical scope of protection. Determining whether the claims confer an identical scope of protection will be based on a substantive test.

Italy

PCT national phase: It is usual to obtain an Italian patent by validation of a granted European patent. Now it will be possible from 1 July 2020 to enter the Italian national phase directly rather than through the European regional phase. Unlike Europe, the due date for national phase entry will be 30 months from the earliest priority date. An Italian translation must be filed on national phase entry and examination will be based on the IPRP.

Japan

Designs examination: Accelerated examination is now available for applications where a foreign application for the same design has been filed. Not all subject matter is eligible for acceleration. Designs of buildings, graphic images and interiors are temporarily excluded until the quality of examination is improved.

Other grounds for accelerated examination are:

  • use of the design by an unauthorized third party;
  • the applicant or its licensee has received a warning from a third party; and
  • the applicant has received a request from a third party to work the design.

New designs law: Will come into effect on 1 April 2020.  The major revisions are:

  • term extended from 20 years to 25 years;
  • Graphical User Interfaces become registerable;
  • interior and exterior building designs become registerable; and
  • applications for related designs may be filed up to 10 years after the principal design was filed.

Mexico

Patent Prosecution Highway (PPH): A new agreement between the USPTO and the Mexican Patent Office was entered into on 28 January 2020. This extends the current PPH past the June 2020 expiry date. Importantly it proposes to further streamline the current program which has been found to be highly successful in achieving rapid and effective grant for Mexican patent applications where a corresponding US patent has been granted.

Myanmar

New patent law: On 11 March 2019 a Patent Law was enacted but is yet to come into force. To become effective, the law requires Presidential notification. Currently there is no time frame in place for commencement. The new law will provide for two forms of patents - a standard patent with a 20 year term and a petty patent with a 10 year term. Whilst a standard patent must be novel, inventive and industrially applicable, a petty patent need only be novel and industrially applicable.

As provided under the TRIPS Agreement for least developed nations, pharmaceuticals are excluded from patentability.

New Zealand

Introduction of extra claim fees: Extra claim fees will apply to all applications where examination was requested on or after 13 February 2020. The total fee payable is calculated based on the maximum number of claims contained in the complete specification during the examination process. The fee will be charged when the patent application has been accepted, and must be paid before the application can proceed to grant.

The current fee is NZ$120 for each 5th claim over 25. FB Rice recommends reviewing the number of claims when requesting examination to minimize excess claim fees.

Singapore

Adoption of Locarno classification: From 19 March 2020, Singapore will adopt the Locarno classification for design registrations.  The implication of the adoption is that all designs listed in the classification will qualify as designs capable of registration.

United States

Artificial Intelligence: The USPTO has requested public comments on patenting artificial intelligence inventions. Submission was due 11 October 2019.  This predates the EPO refusal of two patent applications where inventorship was ascribed to a machine (DRABUS).

COVID-19 meetings: On 13 March 2020 the US Patent and Trademark Office called off all in-person meetings until further notice, including Patent Trial and Appeal Board hearings, in favour of phone or video conferences due to the COVID-19 pandemic.

 

 

 

 

Tags:  patents, patent law

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