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British and European Patent and Trade Mark Attorneys

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Ian Tollett

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On 28 November 2016 the UK government confirmed that it is proceeding with preparations to ratify the Unified Patent Court Agreement (UPCA), which is part of the process required to establish the Unitary Patent and Unified Patent Court. Under the new regime, businesses will be able to protect and enforce their patent rights across Europe in a more streamlined way - with a single patent and through a single patent Court.

The court will make it easier for businesses to protect their ideas and inventions from being illegally copied within Europe.

UK Minister of State for Intellectual Property, Baroness Neville Rolfe said:

“The new system will provide an option for businesses that need to protect their inventions across Europe. The UK has been working with partners in Europe to develop this option.

As the Prime Minister has said, for as long as we are members of the EU, the UK will continue to play a full and active role. We will seek the best deal possible as we negotiate a new agreement with the European Union. We want that deal to reflect the kind of mature, cooperative relationship that close friends and allies enjoy. We want it to involve free trade, in goods and services. We want it to give British companies the maximum freedom to trade with and operate in the Single Market - and let European businesses do the same in the UK.

But the decision to proceed with ratification should not be seen as pre-empting the UK’s objectives or position in the forthcoming negotiations with the EU.”

The UK government will be working with the Preparatory Committee to bring the Unified Patent Court (UPC) into operation as soon as possible.  UK Law changes needed to give effect to the UPCA were passed by Parliament in March 2016. Ratification is handled by the UK Executive on behalf of the Crown.

The UPC is not an EU institution but an international patent court.  It is not, therefore, controlled by the EU institutions, save for its choice to have the European Court of Justice as the ultimate arbiter in disputes.  There is no reason why this choice could not be maintained even after the UK leaves the EU.

In this regard, the UPC has similarities with the European Patent Convention, which is also an institution set up under international law and is not an EU institution.  There are numerous member states of the EPC that are not EU member countries.

We welcome the UK government’s move to become one of the first European countries to press ahead with implementing the UPC, which is likely to become a very valuable tool for businesses across the world.

Should you like any preliminary advice on the UPC please do not hesitate to contact us.

Summary

Does the EPO consider your ex-PCT application to cover more than one invention?  Has that additional invention not yet been searched? Up to now, if you have wanted that additional invention searched by the EPO, it has been necessary to file a divisional application.  From 1 November 2014, this will change – the EPO will (for a fee) search the additional invention without having to file a divisional application.  

The changes to the rule in question (Rule 164 EPC) are set out in the EPO's administrative council decision linked to here.

Practice tips

When filing a Euro-PCT application when the EPO was not the ISA, it is still important to think about the order of the claims in the EP application, as the EP supplementary search will be carried out on the first-mentioned invention.  However, under the new procedure, it will at least be possible to have additional inventions searched, if desired.

It is important to note that the EPO has not changed its practice on unity of invention.  Art. 82 (EPC) still states that “the European patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept”.  However, under the new procedure, it will at least be possible to get an idea of the prior art for an additional invention, without having to incur the cost of an EP divisional application.

New procedure as from 1 November 2014

This applies to:

- any Euro-PCT applications for which the ISA was not the EPO where the EPO has not as of 1 November 2014 drawn up an EP supplementary search; or

- any Euro-PCT applications for which the ISA was the EPO where the EPO Examining Division has not as of 1 November 2014 issued a first office action.

The new procedure is the same as the previous procedure (see below) for (1) and (2) but changes for (3):b2ap3_thumbnail_epo-r164-procedure.png

  1. If the International Searching Authority (ISA) was not the EPO, then after the Euro-PCT application is filed, the EPO will carry out a supplementary search on the invention or group of inventions first mentioned in the claims on filing the EP ex-PCT.
  2. If the ISA was the EPO, no supplementary search is carried out on filing the Euro-PCT.  Instead, the EPO relies on the International search.
  3. In the case of (1), if the EPO considers that the Euro-PCT application covers an additional invention lacking unity with the main invention, then it will issue a partial supplementary search in respect of the main invention only.  It will however then give the applicant a chance to have the additional invention searched, if the applicant pays a fee within 2 months (non-extendable).
  4. In the case of (2), if the EPO considers that the Euro-PCT application includes an additional invention lacking unity with the main invention, which additional invention was not searched by the ISA, then the EPO will now give the applicant a chance to have the additional invention searched, if the applicant pays a fee within 2 months (non-extendable).  The additional search will not however include a search opinion (quasi examination report).
  5. In either case, if the EPO considers that the inventions which have been searched lack unity, then it will ask the applicant to limit the application to a single invention (or group of inventions which are unified).  If however the applicant manages to persuade the EPO that its decision was wrong, then the EPO will refund the additional search fee.

 

Prior Procedure

Up to 1 November 2014: b2ap3_thumbnail_epo-r164-procedure-pre-1-november-2014.png

  1. If the International Searching Authority (ISA) was not the EPO, then after the Euro-PCT application is filed, the EPO will carry out a supplementary search on the invention first mentioned in the EP claims.
  2. If the ISA was the EPO, no supplementary search is carried out on filing the Euro-PCT.  Instead, the EPO relies on its own International search.
  3. In either case, if the PCT application includes an additional invention which is considered by the EPO to lack unity with the main invention, and if this additional invention has not been searched by the ISA or in the EPO supplementary search, then the only way to have this additional invention searched by the EPO is by filing an EP divisional application.
  4. The EPO will not examine a Euro-PCT application if it has not itself performed a search in respect of the invention for which protection is sought.  In other words, the invention must either have been searched in the EPO’s supplementary search or by the EPO acting as ISA.

 

 

Planning to trade in China? If so, register your mark early to beat Trade Mark Squatters.

If you are trading, planning to trade in, or exporting to China, have you registered your trade mark there yet?  If not, be warned: bad faith applicants are filing Chinese applications for the trade marks of established overseas companies and then blackmailing the companies into buying back the rights to their own name.  

Unfortunately, Chinese trade mark law has very weak provisions outlawing this practice, and unless you can demonstrate substantial use of your mark in China before the filing date of the bad faith application it is almost impossible to have it cancelled.

The most effective way to avoid this trap is to register your own mark in China before the squatters do.  The good news is that the filing of a UK trade mark application gives you a six month grace period for filing in China, so that your Chinese application will have priority over any bad faith applications filed after your UK application.

Contact John Reddington or Ian Tollett for more details.

Tagged in: trade mark