For all the latest IPRIS news check out some of our articles below.
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Update on the Chinese Patent Terms
China’s patent system has been under a lot of reform during the past year. The most recent reform was made on the 1st of June 2021, known as the fourth amendment to the Chinese Patent Law. This amendment consists of four parts, part one, the patent application, part two the patent exploitation and commercialization, part 3, patent protection, and part 4, other general changes.
Patent Term Adjustment
Part one concentrates on the patent application which in turn focuses on the patent term. A term compensation mechanism for invention patents was created which allows patentees to claim patent term loss, caused by unreasonable delay in the granting of the patent application. This relates to patents issued after 4 years from filing or 3 years date request of the substantive examination, the new mechanism applies to patents issued after the 1st of June 2021.
For this to be pursued the patentee must submit a request via a form within 3 months of the patent grant date. The patent term adjustment period will be determined by the CNIPA delay in granting the application minus the client's delay. CNIPA delay primarily looks at the number of unreasonable days that caused delay during the examination period. To calculate these days, the grant date will be deducted from the later of the 4 years from the application date or 3 years from the substantive examination request.
A patentee is said to have caused unreasonable delay by failing to respond to CNIPA before the deadlines, deferred examination, the restoration of right, and delays in entering the PCT application in China.
Patent Term Extensions
As well as the Patent Term Adjustment, the new Chinese patent law explicitly outlines the prospects of attaining a Patent Term Extensions for pharmaceutical patents. This can be requested 3 months from the new drug marketing authorization approval by the National Medical Products Administration (“NMPA”).
The extension time is calculated by the date of market authorization minus the filing date. The number of years for extension is capped to a maximum of 5 years, and there is a limit of 14 years patent time for when the drug receives market authorisation.
Drugs, that will be applicable for an extension are limited to esters or salts of a known active ingredients, vaccines, traditional Chinese medicine with new indication, and chemical drugs with new indication.
Brexit - UK Comparable Trade Marks
From 1 January 2021, EUTMs will no longer protect trade marks in the UK. Under the Withdrawal Agreement Act, on the 1 January 2021, the IPO will create a comparable UK trade mark for all right holders with an existing EU trade mark.
EPO Official Fee - Late Payment Fees Temporarily Suspended
In line with recent communication from the EPO issued on the 29th May 2020, we wish to inform our clients that surcharge fees for pending European Patents that were originally due for renewal between 15th March 2020 and 31st August 2020 have temporarily been suspended and therefore will not be applied by the European Patent Office.
EPO Official Fee Changes
The European Patent Office (EPO) has announced that the official fees charged for European (EP) patent applications will be increasing from 1 April 2020. More details of the fee increases can be found here.
All of the annual renewal fees are increasing by about 4% on average. However, any renewal fees that fall due in April, May, or June 2020 can be paid in advance, before the fee increase comes into effect.
Fee Change in South Africa on 1 October 2019
The South African Companies and Intellectual Property Commission (CIPC) published a notice related to the fee increase that was intended to be implemented in July 2019.
Though this notice was temporarily retracted, confirmation was received that the new rules would be implemented on 1st October 2019. The fee increase applies to both patents and design rights.
Changes to Canadian Trade Mark Renewal Law
There are some key changes that should be noted regarding Trade Mark Renewals in Canada:
- Any registration coming due for renewal and/or renewed after June 17, 2019, will need to be amended to classify the goods and/or services according to the Nice Classification system.
- The renewed term of any registration coming due for renewal and/or renewed after June 17, 2019 will be 10 years (rather than the current 15 years).
- Any registration renewed after June 17, 2019, will be subject to increased fees which includes the introduction of additional fees for each additional class of goods/services.
Should you have any queries regarding the above or are unsure whether you will be affected by this change, please feel free to contact our Customer Service Team who would be happy to assist:
Tel: +44 (0) 203 176 0582
Patent rule changes for Indonesia
On 16 August 2018, the Directorate General of Intellectual Property (DGIP) issued a Circular requiring payment of all outstanding annuities due before 26 August 2016 (the enforcement date of the new Indonesian Patents Law) in respect of abandoned patent cases.
On 16 August 2018, the Directorate General of Intellectual Property (DGIP) issued a Circular requiring payment of all outstanding annuities due before 26 August 2016 (the enforcement date of the new Indonesian Patents Law) in respect of abandoned patent cases. This payment is to be made within six (6) months from the date of issuance of the present Circular (i.e. by 15 February 2019).
If Patent Holders do not comply with this requirement, the DGIP will no longer accept any new patent filings from the same Patent Holders until their entire annuity fee debts are settled.
Prior to 26 August 2016, back taxes had to be paid within one (1) year from the date of grant of patent with a grace period of three (3) years. If the Patent Holder passively abandons the patent after grant, he would still be responsible to pay the back taxes including the annuities and penalties accumulated within the 3-year grace period. On the other hand, if the Patent Holder actively abandons the patent, he would still be responsible to pay the back taxes and annuities accumulated up to the official abandonment date. Since this practice was not consistent with other jurisdictions’ practices, several Patent Holders had accumulated unpaid annuities until this law was changed on 26 August 2016.
In an effort to clear their 2016-2017 Financial Statements, the DGIP now requires Patent Holders with outstanding annuity debts before 26 August 2016 to settle all their dues for their abandoned patent cases (whether actively abandoned by them or declared void by law) within the 6-month period following the date of issuance of the present Circular. It seems that the DGIP has taken an extreme position on this issue. Thus, failure to settle all outstanding annuity fees by the deadline set by the DGIP would have grave repercussions as mentioned above.
In view thereof, we urge the Patent Holders to attend to the payment of the outstanding annuities by the aforementioned deadline of 15 February 2019 to avoid any undesirable consequences such as the non-acceptance of new patent filings from the same Patent Holders by the Registry of DGIP.
VAT Rates in Saudi Arabia, Lebanon and the UAE
From 1 January 2018, our charges in Saudi Arabia will be inclusive of a five percent Value Added Tax. This comes after the release of the VAT regulations in the country on August 29, 2017 and the publication of the VAT Law in July of the same year.
Starting from January 1, 2018, our charges will be inclusive of the new VAT rate in Lebanon, that now stands at 11 percent, up from a level of 10 percent.
Implementation of the VAT in the United Arab Emirates has also been introduced but VAT is unlikely to be applied to non-GCC residents. We expect the remaining GCC countries, namely Bahrain, Kuwait, Oman, and Qatar, to adopt the VAT by January 1, 2019 at the latest. A further update will follow in due course.
Changes to official fees in the UK
As of 6 April 2018, the UKIPO has implemented a change to its official fees for patent renewals.
From this date forward, there has been an increase in £10 in the official fee for the 12th year renewal onwards. From the date in question, our charges will change to reflect the new official fee pricing.
June 2017: Fee increases in Argentina
The Argentinian IP Office, INPI, is considering increasing its official fees by 20% on 1 August2017, with a further increase of 20% on 1 October 2017.
The national IP offices for a number of countries announced an increase in fees commencing in January 2017.
Iceland's new regulation on fees for patent, trademarks and designs for adopted by the Minister of Industries and Commerce and entered into force on 1 January 2017.
Turkey announced an increase in the official fees for EP Validation, search and examination, and the annuity maintenance fees for patents and utility models. The fee increase also applied to trademark matters.
The Intellectual Property of the Philippines revised the overall fee structure for IP-related services with a fee increase of up to 20%.
The Belarusian National Centre for Intellectual Property (NCIP) has implemented a new fees structure for registration of various intellectual property types, following Armenia and Kyrgyzstan have also announced fee increases which come into effect this month.
UK confirm intention to ratify UPC Agreement
In November, the UK government confirmed it is proceeding with preparations to ratify the Unified Patent Court Agreement. The official announcement stated that "the UPC itself is not an EU institution, it is an international patent court and the judiciary appointed include UK judges".
While this is true, it does not address the fact that at present, participants must be members of the EU and that the Court will be subject to the Court of Justice of the European Union (CJEU). The IP Federation and other parties obtained an opinion from Richard Gordon QC and Tom Pascoe as to whether the UK can remain a part of the UPC system post-Brexit. This opinion suggests that the UK can remain a part of the UPC system provided that certain steps are taken, notably that there should be an agreement involving the EU to give the UPC jurisdiction to refer matters to the CJEU in appropriate cases. The full opinion can be found here.
Update: The UK has subsequently signed the ‘Protocol on Privileges and Immunities of the Unified Patent Court' which is required to allow the UPC to operate in London where a part of the Central Division and a Local Division will be based. The UK IPO has also formed a new project team to work with the UPC Preparatory Committee to bring the UPC into operation as soon as possible.
Official Fee Changes at IP Australia, effective date 10 October 2016
Fee increases for patents and patent applications include renewal fees from the 10th anniversary in the 10th to 14th anniversary range; in the 15th to 19th anniversary range; and in the 20th to 24th anniversary range.
For national trade marks, application fees will increase, and renewal fees will increase. Whilst these fee increases are substantial, they will be offset by the removal of the per class registration fee, lowering the overall cost of obtaining a national trade mark registration in Australia.
European Patent Office: Increase renewal fees (about 1%) April 1, 2016
European patent application renewals due in April and May 2016 can still be renewed under the old fee regime
Kuwait: 15 x increase Trademark renewal fees with effect from Dec 21, 2015
Kuwait: 15 x increase Trademark renewal fees with effect from Dec 21, 2015
Saudi Arabia: 100 % increase Trademark renewal fees with effect from Oct 15, 2015
Saudi Arabia: 100 % increase Trademark renewal fees with effect from Oct 15, 2015
European patent can now be extended to Morocco
There is a new agreement between the European Patent Office (EPO) and the Moroccan Industrial and Commercial Property Office (OMPIC), which will make it possible to validate a European patent in Morocco.
Outline of the key information and procedure:
- The agreement enters into force on 1 March 2015. It will be available for European applications filed on or after that date or those derived from PCT applications filed on or after that date.
- For validation in Morocco, applicants must request extension of the application to cover Morocco and pay a fee of 240 Euros to the EPO within the same period as the payment of the designation fees.
- After grant of the European patent, a translation of the granted claims into French or Arabic will need to be submitted to OMPIC in order to complete the validation in Morocco.
- A European patent validated in Morocco will then effectively be treated as a Moroccan national patent and will be subject to Moroccan patent law.
Benefits of the new agreement include an option to add Morocco as an extension country at a much later stage as opposed to a direct national application which would have to be filed at the same time as the EP application. In addition, validation from a European patent only requires translation of claims compared to a full translation of the application which is required for a direct national application.
As EPO extends its reach beyond Europe, similar agreements have been signed in Tunisia and Moldova but have not yet come into force.
If you are interested in obtaining a price for European validations including Morocco, please contact us.
Grant notifications directly from the PTOs
There are several Patent and Trademark Offices (PTOs) around the world where patent renewals are not due until the application is granted.
IPRIS will soon implement a service where it retrieves data directly from these PTOs on a regular basis and queries any applications it holds in its records against those found on the public record.
Once IPRIS receives an update that an application is granted, or is about to grant, they contact the client to advise them of this and of any renewal fees that are due.
IPRIS plan to extend this service to other PTO’s to automate the checking of client’s patent data, which is particularly important as IPRIS grows and takes on new clients.
New Zealand Fee Changes
New Zealand’s new Patents Act 2013 came into force on 13 September 2014.
The key changes to patent renewals are:
- The cost to renew a granted patent in New Zealand increased
- The renewal fees on granted patents are now payable annually whereas, under the previous Act, renewal fees were payable at the 4th, 7th, 10th and 13th anniversaries from the filing date
- The renewal fees can now only be paid 3 months in advance of the renewal due date instead of any or all the renewal fees being payable in advance at any time as under the previous act
Contact the IPRIS team for more information about how the new Act may affect your patent renewals.
Failure to Pay Renewal Fees in Brazil
On October 22, 2013, the Brazilian Patent and Trademark Office [BPTO] issued Resolution No. 113/13, which regulates the procedures concerning the control of payment of annual fees.
According to Article 13 of said Resolution, patent applications or patents that are overdue on more than one annual fee will be removed from records or declared extinct. The possibility of restoration established by Article 87 of the Brazilian Industrial Property Law [IPL] does not apply to these cases. This is despite the fact that, in principle, the Resolution does not have the power to modify the IPL.
The Brazilian Industrial Property Agents (ABAPI) filed a lawsuit against the BPTO regarding the Resolution and requested a preliminary injunction to temporarily annul Article 13. However, this request was recently denied by the judge.
For now, patent applications and granted patents will continue to be removed/declared extinct by the BPTO after the failure to pay more than one annual fee, without the possibility of an appeal for restoration.
Austria Fee Changes
There was an increase of 4% on patent renewal fees in Austria effective from 1 July 2014.
EPO Fee changes
As of the 1st April 2014, many European Patent Office official fees are due to increase. It has become standard procedure for the EPO to review its fee structure every two years, consequently this recent announcement was largely expected. The level of increase for most fees, such as patent renewal fees, is of the same order of magnitude as in the previous review in 2012.
We can expect increases in the order of 4-5%, but some fees will increase more significantly. These increases will apply for payments made after the 1st April so it is the payment date, rather than the due date of the fee, which IPRIS clients need to be mindful of. We are suggesting that any upcoming patent renewal actions are made promptly, so as to avoid the extra costs for this renewal year.
Other EPO official fees, such as for a European search, are increasing by a more significant factor of 10%, from €1165 to €1285. Clients can also expect a 50% increase in the appeal fee, possibly due to increase in volume of cases reaching appeal. This trend is something the EPO is either accounting for, or hoping to stem for speculative appeals, with the increase in costs. Finally, following the announcement last autumn that the system will revert to again allow filing a divisional application so long as the parent application is still pending, a new fee schedule will apply. Additional fees will apply for second and later generation divisional applications, i.e divisional applications that are themselves divided out from a previous divisional. First generation divisional applications remain unaffected. A second generation divisional application is €210, €420 for a third generation and €630 for a fifth. Clients considering filing should submit before the 1st April to avoid the new fees.
Indian applicant status
Following our previous announcement back in June 2013, the Indian Patent Office have effected their final patent amendment rules as of 28th February. Of note to our clients are the increases in official fees relating to all categories of applicant. For individual inventors, or Natural Person(s), this amounts to 20% of the overall Large Entity fees. For Small Entity is a 50% increase on the Large Entity prices can be expected.
Clients should be mindful of the classification of Small Entity status compared to Large, and Small Entity compared to Natural Person(s). The responsibility of correct classification, and therefore fee charges, lies with the applicant. If the patent case is fully or partly transferred or licenced to a Large Entity, it will be the obligation of that organisation to pay the difference between the two fees. Should you anticipate or change status in this way, clients are advised to inform IPRIS.
Further Improvements to IPRIS Web App
Flexible renewal notifications
The new system gives clients control of renewal notifications as they can choose:
- When to receive notification emails and renewal reminders
- Whether to receive the emails per family or by due date
When ordering renewals, clients can choose to be invoiced by family, by date or by order. Purchase order numbers can also be included in the invoices with several different options.
The option to use purchase order numbers and set a default if required. If the purchase orders are different depending on the patent family, they can be assigned during the ordering process. Previously entered purchase orders will be stored and made available in the purchase order drop-down menus on the order confirmation page. The purchase order numbers will automatically be included in your invoices.
Download the Flexible Invoicing PDF for more details.
A keyword search field has been added for more flexible searching. The search mimics the Ctrl-F feature and allows you to search for any combination of numbers and letters within your portfolio.
Divisional application deadline abolished
This month the EPO announced they are abandoning the 2 year filing deadline for divisional applications. Until now this deadline has been automatically calculated from the date of the first patent examination report. The rule, which has suffered on-going criticism, required applicants to file all required divisional applications at a very early stage in the patent procedure, often before commercial opportunities were fully clarified.
During the consultation period earlier this year, the expectation was that the deadline would most likely be lengthened. This more recent announcement says that it will be abolished entirely. The previous practice, where applicants have the right to file a divisional patent provided there is a pending application in the family, will be reinstated.
However, an additional fee will be required for any divisional application which is second generation or higher. In other words, if that application is a divisional of a previous divisional, the extra fee will apply. A fee will apply for any subsequent divisional application. This fee structure is most likely intended to discourage the filing of applications as a tool to prolong patent pendency and uncertainty for third parties.
These changes are set to apply to divisional applications filed on or after 1 April 2014. As such, if you already have one divisional application in a family, but your two-year period has not yet expired, you may wish to consider filing a second (or subsequent) divisional application before April, to avoid the new scale of fees. Also, if your two-year deadline has passed but a further divisional is desirable, action may be taken to keep an existing case pending until April.
Unitary Patent System
This year has seen the protracted debate over unifying the European patent system finally take shape. The topic has been toing and froing for the past 40 years, but it seems that within the next year and a half, the single European patent and Unified Patent Court - an alternative to validating nationally - may finally come into operation.
The Unified Patent Court Agreement (UPCA) was signed on 19th February this year, by 25 of the 27 EU member states. By June the 15th Draft of the Rules of Procedure, the first for public consultation, was published.
But what will this mean for the SME filing strategy and budget? From a financial perspective, renewal fees remain something of a grey area. The announcement in February of this year ambiguously states that they will be “similar to the level of the national renewal fees for an average European patent taking effect in the participating Member States at the time the level of the renewal fee is first set”.
Excluding the sprawling global corporations, companies will commonly validate in only four to five of the 25 participating Countries. These big five include the UK, France, Germany, Spain and Italy. This presents a delicate problem for the EPO, for whom validation and renewal fees essentially function like a tax income and who have themselves announced will be a crucial factor for financing this new regime.
For the EPO striking a balance in setting renewal fees, where the cost benefits of filing a unitary patent outweighs filing 3-4 national patents, will be tricky. If the costs mount to the equivalent of filing in 6-7 European countries, SMEs face important filing strategy decisions. Most likely resulting in an opt-out decision for the Unitary Patent system. This effect will be strengthened given that Italy and Spain, the fourth and fifth largest European markets, still remain outside the agreement. Proposals currently state that for a transitional period of about 7 years, current European patent applicants can opt-out of the new system.
The most recent advancement has been Austria’s ratification, positioning itself as the pioneering EU member state. It is predicted that ratification by a sufficient number of states will be slower than the Commission expects. Indeed on 1st October, Denmark announced a referendum would be held on the matter in May of next year. Initial hopes predicted that a 2014 launch would be possible, with the UK expected to ratify in mid-2014. Realistically it looks like the launch would take place in 2015 at the earliest. Not least because Spain continues to challenge the plans in the CJEU.
IPRIS will be tracking the developments and will be keeping clients informed on the implications.
Your patent renewals portal
The IPRIS technical team completed a round of improvements to the client online interface, which launched in July this year.
Our online interface is a password protected portal housing all client renewals data. It is the tool used to instruct our team of client renewals requests. Regular client contact and feedback showed us that some small tweaks to the system would result in high impact improvements for our clients.
One such feature is the inclusion of a 5 year cost estimation tool. This addition was made in response to the continued tightening of both SME and university purse strings. Several clients suggested that to inform their budgets and financial forecasting, a rough estimate of the on-going costs of maintaining each of their own cases would be an invaluable tool. This feature is now available to clients to view online and export for internal circulation.
Improvements to the managerial aspects of the system were also implemented. Clients who have multiple IP managers can now access the same portfolio with either full or read only status. This feature is particularly suited to universities and research institutes where IP teams need to review and access the same renewals data.
Within each client’s portfolio it is now also possible to select specific cases for automatic renewal. We recognised that clients frequently have mixed patent portfolios. Where some cases are central to the business or licensor, they needed reassurance that the relevant cases would be automatically renewed. Other cases requiring on-going consideration of their value to the organisation are marked accordingly and flagged to the IP managers.
Improvements to the invoicing structure and client control of their access details were also made. We have been carrying out another round of client feedback this autumn and would value any suggestions you may have. If you would like to take part in a client survey to offer your feedback please get in touch.
Tricks of European Validation
Once the EPO has concluded that a European application has satisfied requirements for patentability, the case needs to be validated in the countries where protection is desired.
In certain countries validation is automatic: UK, France, Germany, Luxembourg, Monaco, Switzerland and Lichtenstein. To achieve broader protection though, applicants face additional costs, fees and forms which can result in a €30,000 bill. A large proportion of this is down to translation expenses.
Whilst Europe is currently in the throes of creating a unified patent system covering 25 countries, which promises to decrease validation costs by up to 80%, these costs currently remain a big consideration for our clients.
Take, for example, Portugal. The initial validation filing fee is only €70, plus some additional translation fees, since they require that the specification is supplied in Portuguese. These costs will mount however, when taking further jurisdictions and billable patent attorney hours into consideration. Furthermore the on-going annual renewal costs can also bite. In Portugal alone, to maintain protection for 20 years you can expect to pay a minimum of €8,000 in fees. So until the unified system becomes a reality many SMEs and government funded organisations are considering other avenues, not only in terms of filing strategy.
IPRIS offer clients a competitive patent validation service which has seen savings of 50-60% on alternative quotes. This is because the model we operate streamlines the administrative processing and uses long standing and strategic partners, which has aided negotiation of exceptional rates due to the appeal of our bulk buying power. Get in touch to request a quote.
Indian Official Fee Changes
The Indian government has proposed amendments to increase patent official fee rates. The changes are anticipated to take place from 12th August 2013 and due to apply across the patent schedule. Specifically they include:
- Doubling of official fees for e-filing of documents at the Indian Patent Office
- An additional 10% surcharge on fees where documents are filed in hard copy
To avoid these additional charges this year, we recommend that clients consider filing pending patent examination requests prior to 12th August 2013, and additionally consider renewing your granted Indian cases before this date.
See the draft amendment rules .
EU Unitary Patent
The EU Unitary Patent is likely to come into force on January 1st 2014. However, EP Patent proprietors with EP Patents granted under the current European Patent Convention regime have to decide if they want to use the option to extend their previously granted EP Patents to the EU Unitary Patent system.
This decision has to be made for every patent family individually. IPRIS asks that clients please inform us which patent families you will “OPT-IN”. This is because it will have an impact with regards to the official renewal fees going forward into 2014.