Latest Official News

Published: 5 July 2010
By: Tibor Gold

The following report on the latest official news is from the June 2010 issue of the CIPA Journal.

UK-IPO

Consultations – proposals to reduce paper generated during patent prosecution
The IPO has now published a further response on its website here. Essentially, the IPO will cease to supply extra sets of patent citations with the search report.
     However, it will continue to supply one set of citations, including non-patent literature, free of charge. When requesting a search or combined search and examination the applicant/attorney will have to indicate their wish to receive a free set of patents citations. Any cited non-patent literature will be supplied as a matter of course. The electronic online filing systems together with the paper version of the Form 9A will be updated in due course to facilitate the changes.

Consultations – Code of Practice for applicants and attorneys
Following the earlier consultation exercise the IPO has published a revised Code.

Annual Report 2008/9
This report has been made available online and updated: please click here to see it.

IPO publishes procedures for fast-track process  for PCT(UK) applications
Since 28 May 2010 applicants have been able to request accelerated examination in the UK national phase if their PCT application has received a positive International Preliminary Report on Patentability, that is, all of the claims present in the application on entry to the national phase must have been examined and found to meet the requirements for patentability in the international phase.
     The IPO has published guidance on the procedure for making such a request: found here,  and still further guidance on how to achieve accelerated grant here.

Green Channel and Database of ‘green’ inventions
The Green Channel for patent applications was introduced on 12 May 2009. This service allows applicants to request accelerated processing of their patent application if the invention has an environmental benefit. Full details are found here. The written request for expedited processing must fulfil certain conditions and, notably, gives the requester the choice of accelerating any one or more of: search, examination, combined search and examination, and publication.
     The IPO will not conduct any detailed investigation into these assertions, but will refuse requests if they are clearly unfounded. This service may be requested in relation to applications filed prior to 12 May 2009 as well as in relation to those filed after this date. The written request can be made at the same time as filing the application, or can be made on a later date.
     The IPO has now announced a publicly available database featuring applications processed under this initiative, available on the IPO website.

Practice Notice (PN) on second medical use claims
This Practice Notice sets out the practice of the IPO on the way in which inventions concerning a specific medical use of a substance or composition (‘second medical use’) may be claimed, in the light of the recent EPO Enlarged Board of Appeal decision in G 02/08 ABBOTT RESPIRATORY/ Dosage regime. This is an extract from the PN the full version of which is here and which also deals with how the change affects pending applications:

… Subsequent to the decision of the Enlarged Board in G 02/08, only second medical use claims of the form ‘substance X for use in the treatment of disease Y’ will be allowed. Swiss-type second medical use claims will be objected to as lacking clarity. Specifically, Swiss-type claims are considered to be unclear because, although they define a method of manufacturing a medicament, the invention does not in fact relate to the method of production but instead relates to the intended use of the medicament. As stated in G 02/08, there is no functional relationship between the feature conferring novelty (the intended use) and the claimed manufacturing process. As section 4A(4) now allows a simpler and clearer form of second medical use claim, there is no longer a reason to allow the more ambiguous Swiss form of claim.
     In G 02/08, the Enlarged Board held that Swiss-type claims were previously accepted (in G 05/83 EISAI/ Second medical indication) as the only possible means of protecting inventions relating to second medical uses in order to fill a loophole in the provisions of the EPC 1973. The new Article 54(5) [EPC 2000] (equivalent to Section 4A(4)) fills this loophole by explicitly allowing claims to the further specific use of a known drug, and so the reason for this special, ‘judge-made’ law no longer exists. The recent Court of Appeal decision in Actavis v Merck [2008] RPC 26 reaffirmed the desirability of maintaining conformity with EPO practice as established in Board of Appeal decisions in this field, and so Swiss-type claims to second medical uses will no longer be allowed...

EPO news

Financial statements for 2009
The EPO has published its financial statements for the accounting period 2009 here.

Rule 161
In view of the correspondence in this Journal last month and this month on developing EPO Rule 161 practice, the Editor considers it worthwhile to publish the following two items seen on the EPO website in full. First, this Decision:

Decision of the President of the EPO dated 11 May 2010 concerning the entrustment to non-examining staff of certain duties normally the responsibility of the examining or opposition divisions
The President of the EPO, having regard to Rule 11(3) EPC, has decided as follows:

Article 1
The following point 31 shall be added to Article 1 of the decision of the President of the European Patent Office dated 12 July 2007 concerning the entrustment to non-examining staff of certain duties normally the responsibility of the examining or opposition divisions (see Special edition No. 3, OJ EPO 2007, F.2.):
‘31. Invitations under Rule 161(1) and Rule 162 EPC.’

Article 2
Entry into force
This decision shall enter into force on 1 June 2010.
     Done at Munich, 11 May 2010

And:

14.6.2010
Important note
A-IV, 1.1.1.2 [of the Guidelines] has been modified in order to clarify that the list of events from which the period for voluntary division is calculated is exclusive. In particular, a communication under Rule 161 EPC issued by the examining division does not qualify as the ‘Examining Division's first communication’ within the meaning of Rule 36(1)(a) EPC.

 There is a list of other recent amendments to the Guidelines listed here.

OHIM news

See the editorial in the June issue of the CIPA Journal for news of ‘top-brass’ appointments.

WIPO news

WIPO launches online portal to facilitate searching IP information
WIPO has launched WIPO GOLD, [What a splendid name! I approve – Ed.] an online portal which facilitates the searching of intellectual property information held by WIPO. The portal gives free access to a broad collection of searchable IP data such as WIPO’s ‘Patentscope®’ search service, which enables users to do full-text searches in over 1.7 million published international patent applications filed under the Patent Cooperation Treaty; international trade marks and designs; IP laws and treaties; and WIPO standards and classifications.

WIPO now has a new logo, (click here to see it), and here is a nice bit of marketing-speak to explain and justify it and its expense:

The new logo reflects the Organization’s dynamism and innovative spirit, and is a powerful symbol of WIPO’s revitalization and strategic reorientation. It is based on a graphic representation of the WIPO headquarters’ building, an iconic structure familiar to all WIPO member states and stakeholders. The colour blue links the Organization with the United Nations. The seven curved lines represent the seven elements of IP, as set out in the WIPO Convention:

• literary, artistic and scientific works,
• performances of performing artists, phonograms, and broadcasts,
• inventions in all fields of human endeavour,
• scientific discoveries,
• industrial designs,
• trade marks, service marks, and commercial names and designations,
• protection against unfair competition, and all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields.

The gathering sweep of the curves is inclusive – WIPO is an open forum, welcoming all stakeholders and points of view. The dynamic, upward pitch of the curves represents ideas, movement, and the progress which comes from innovation and creativity. This rests on a strong foundation, the name and acronym of the Organization, representing its long-standing role at the centre of international IP policy. The logo’s clean modern lines reflect the trust, reliability and efficiency which are key to WIPO’s corporate image.’

Domain names

First non-Latin character IDN ccTLDs available
For the first time in the history of the Internet, non-Latin characters are being used for top-level domains. The first IDN country-code top-level domains were inserted in the DNS root zone last month. The associated countries and their respective IDN ccTLDs are:

• Egypt: مصر (Egypt)
• Saudi Arabia: السعودية (Al Saudiah)
• United Arab Emirates: امارات (Emarat)

ICANN has announced that the .рф  [Ed.: phonetically: .rf, presumably standing for Russian Federation] Cyrillic-language internationalised domain name (IDN) country code top-level domain (ccTLD) has been made available by Russia. This follows ICANN’s announcement earlier in May 2010 of the first IDN ccTLDs becoming available in Arabic, above.

ECJ ruling on interpretation of bad faith in the .eu Regulation
In a reference from the Austrian court, the ECJ has given a ruling on the provisions of Commission Regulation (EC) No 874/2004 (the .eu Regulation) on the implementation of the .eu top-level domain regime, which were designed to counter ‘domain name grabbing’ during the early (sunrise) phase of registration. The court ruled that, in considering whether a trade mark that was the basis for an application for a .eu domain name had been registered in bad faith, the national court was not restricted to considering the circumstances set out in Article 21(3) of the Regulation, and that the issue of whether an applicant was acting in bad faith had to be the subject of an overall assessment, taking into account all the factors relevant to the particular case. Case: Internetportal und Marketing GmbH v Richard Schlicht, Case C-569/08, 3 June 2010.