ACIP Issues Final Report on Innovation Patent System
Following the release of its Issues Paper and subsequent Options Paper, the Advisory Council on Intellectual Property (ACIP) has now released its Final Report on the Review of the Innovation Patent System. The ACIP recommended the following changes to the innovation patent system:
Raising the standard for an innovative step. Currently an innovative step is established if the invention varies from the prior art in a way that makes a substantial contribution to the working of the invention. ACIP has proposed that this test is replaced by the requirement that the invention is non-obvious in view of the common general knowledge (CGK) possessed by a non-inventive skilled worker in the relevant field (both inside and outside of Australia). However, examiners may not be well placed to decide whether prior art is part of the CGK and so applicants can be left with the onus of contradicting an examiner’s assertion that the prior art is part of the relevant CGK.
Making examination compulsory. ACIP proposes making examination of innovation patents mandatory before the third anniversary of the filing date. This timeframe was proposed to allow sufficient time to evaluate the inventions commercial potential before requesting examination.
Restricting eligible protection. ACIP proposes excluding all methods, processes and systems from being eligible for an innovation patent. This would thereby restrict innovation patents to apparatus, product, article or “some other material thing” claims.
Remedies for infringement unchanged. On the assumption that the above recommendations are adopted, ACIP proposes that there should be no change to the remedies available for infringement. ACIP also endorses the court’s current practice of considering exploitation by the patentee when determining whether to issue an injunction.
Submissions on Reducing Red-Tape Encouraged
As part of an overall government strategy to reduce red-tape, IP Australia has announced that it is inviting submissions on how it can assist in reducing regulatory burden in the intellectual property system. The ambit of the review is wide ranging as it extends to rules in the Acts, Regulations and also the applicable forms. Relevant submissions can be sent by email to firstname.lastname@example.org.
UKIPO to Allow Web Addresses to Satisfy Patent Marking Requirements
The UKIPO has announced that from 1st October 2014 products can be marked with a web address, instead of the patent number and country of the patent. Such marking would be considered to put the public on sufficient notice provided that the website details the asserted patent rights.
European Patents soon to be Validated in Tunisia
Although yet to be ratified, the European Patent Office (EPO) recently signed an agreement with Tunisia on the validation of European patents for the country. Morocco signed a similar agreement with the EPO in late 2010, which also has yet to be ratified. Under the terms of both agreements, European patent applicants and proprietors will be able to validate the legal effects of their European patents and applications on Moroccan and Tunisian territory, even though Morocco and Tunisia are not EPO member states. Validated European patent applications and patents will have the same legal effect as Moroccan and Tunisian national applications and patents, and will be subject only to Moroccan and Tunisian patent legislation respectively. Once ratified, Morocco and Tunisia will be the first African countries for which European patents can be validated.
Once ratification has occurred it is expected that this will provide applicants with easier and cheaper protection in those territories. However, it is not as yet clear whether Morocco and Tunisia will implement the London Agreement, leading to further savings in translation costs.
Patent protection in Morocco and Tunisia is currently available through the filing of national patent applications and PCT national phase applications. Patent protection in Morocco extends to Tangier and Western Sahara.
EPO Sets Search Report Processing Target
In July 2014 the European Patent Office (EPO) introduced a new scheme to improve legal certainty on pending patent applications. Under the "Early Certainty from Search" scheme, the EPO will aim to issue all search reports and written opinions on patentability within six months of filing; prioritise completing already started examination files over beginning new files; and expedite grants after a positive search opinion has been issued.
In addition, it will seek to prioritise processing of those cases where substantiated observations are filed by third parties who identify themselves, and also of oppositions and requests for limitation or revocation.
EPO to Apply Consistent Approach to Lack of Unity
With effect from 1st November 2014 the EPO will apply a consistent approach when processing search reports for applications that are considered to lack unity on account of relating to more than one invention. Currently the EPO approaches such applications differently depending upon whether the application has been filed directly with the EPO, or via the PCT with the EPO as the ISA, or via the PCT where the EPO was not the ISA. In particular:
• For applications filed directly with the EPO that are found to lack unity, a search report is issued for the invention first mentioned in the claims. An option is then given to pay additional fees to search the remaining inventions.
• For PCT applications where the EPO is the ISA and lack of unity is found, the same option to pay additional search fees is given in the international phase.
• For PCT applications entering the European regional phase, if the ISA was the EPO and no additional search fees were paid during the international stage, the applicant is forced to limit the application to the first invention searched during the international phase.
• For PCT applications entering the European regional phase, if the ISA was not the EPO, the EPO will carry out a supplementary search. If a lack of unity is found, this search will be limited to the first invention only. No option is provided to pay for searches on the remaining inventions.
However, the European Patent Convention is being amended with effect from 1st November 2014. From that date all search reports issued by the EPO where the application is considered to lack unity will follow the following procedures:
• a partial search report will issue based on the invention (or linked group of inventions) first mentioned in the claims
• a communication detailing what the EPO considers the other invention(s) to be will also issue
• the applicant will be invited to pay additional fee(s) to search the further invention(s) within a period of two months,
• upon receipt of additional fee(s), issue an extended search report based on the invention(s) for which a fee was paid
This change will mean that for applications for which the most commercially useful form of the invention has changed during processing the decision on whether to amend the claims need not be made prior to entering European regional phase.
2. Trade Marks
Subsequent Designation via Website Possible
A new web based tool called E-subsequent designation has been added to the Madrid System allowing users the option of making a subsequent designation online rather than via form MM4. It can be accessed either at https://www3.wipo.int/osd/ or through the Madrid Portfolio Manager (MPM) at https://www3.wipo.int/login/en/mpm/index.jspand.
After entering an international registration number, a user then selects the Contracting Party or Parties subject of the subsequent designation, indicates the goods and services (all or some only of the goods and services covered by the international registration) and pays the fee online, by credit card or through a WIPO current account.
However, there are several scenarios in which the MM4 form still needs to be used instead of the E-subsequent designation tool. In particular, the MM4 form is required if the holder or representative:
• wants to include certain miscellaneous indications that were not provided in the international application, such as the legal nature of an entity or a translation of the mark;
• requests that the subsequent designation be recorded only after the recording of a renewal or a change, such as a partial cancellation;
• wants, at the same time, to appoint a representative or to subscribe to e-communications.
It is also necessary to use a paper form, in particular form MM16, where the subsequent designation results from conversion. At the moment this would only eventuate if the designation of the European Union is withdrawn and replaced with some or all of the European Union contracting states.
A video tutorial outlining the full range of options and requirements under e-subsequent designation is available at http://www.wipo.int/madrid/en/video/osd.html.