Significant Changes to US Patent Law Soon

September 2011

Official fees will be raised by estimated 15%.

However, new provisions for lower fees for micro entities will be put in force.

Patents will be granted to the first inventor to file an application. This first-to-file scheme is very similar to that used in most other countries!

Kind of an opposition (third party initiated Post Grant Review) proceeding will be introduced for patents.

Amendment of Rule 141 EPC (information on prior art)

Under amended Rule 141(1) EPC, an applicant claiming priority of a previous application within the meaning of Article 87 EPC has to file a copy of the results of any search carried out by or on behalf of the authority with which the previous application(s) was/were filed (= office of first filing (OFF))

• together with the European patent application or,
• in the case of a Euro-PCT application, on entry into the European phase.

Rule 141(1) EPC applies to all European patent applications claiming priority. Where multiple priorities are claimed, the applicant has to file copies of the OFF search results drawn up in respect of all previous applications concerned.

The applicant's obligation under amended Rule 141(1) EPC covers search results in whatever form or format they are drawn up by the OFF (e.g. search report, listing of cited prior art, relevant part of the examination report). The copy of the search results submitted must be a copy of the official document issued by the OFF. A listing of the cited prior art drawn up by the applicant himself is not sufficient for the purpose of Rule 141(1) EPC.

A translation of the search results is not required where those results are drawn up by the OFF in a language that is not an official language of the EPO.

Copies of the documents cited in the OFF search results do not have to be filed under Rule 141(1) EPC

 The new disclosure rules are coming into effect from 1 January 2011 for European patent applications filed on or after that date.  

Although the rules apply from 1 January 2011 for standard priority-claiming European applications, they will only apply to EP regional phase applications that are based on international applications filed on or after 1 January 2011.  In other words, for EP regional phase applications, the effect of the rules will be delayed, typically until mid-2012 (the 31 month deadline for entering the EP national phase).

Furthermore, there are no immediate sanctions for non-compliance.  Sanctions can only flow from the application of new Rule 70b EPC, which provides that the EPO can issue a communication requiring the filing of the search results, or a statement that no such results exist.  The communication will set a two month time limit for filing the results.  Failure to file the results within this time limit will result in the application being deemed withdrawn.

An exemption to the requirements is provided where the search documents are available to the EPO.  This is intended to allow for agreements between patent offices to supply such documents automatically.

OHIM/Renewals by a renewal agency

The expiry of the time limit resulted in loss of the ‘DOG’ mark for Rodd & Gunn Australia. OHIM officials had sent a notice to the company’s UK representatives in 2006 informing them of the due date of payment. The attorneys in New Zealand passed on the matter to an external renewal agency which defaulted. OHIM cancelled the mark with effect from August 15, 2006, later refusing the UK office’s requests to restore the mark on grounds that Rodd & Gunn had failed to exercise all due care. The Board of Appeal upheld OHIM’s decision and noted that the company had been careless in delegating such an important task to a third party instead of a professional representative. The Court of First Instance sustained the Board of Appeals decision rejecting the restoration of the mark and dismissed the action

Amendment of German Trademark Act

In order to improve the legal opportunities of the proprietors of protected designations in Germany, the owners of older non-registered trademarks, company names or work titles are now legally entitled to base oppositions against younger trademarks on these rights.