When seeking international patent protection, applicants can file an international patent application to protect their technology in over 150 territories. International patent applications are subject to an international search to identify any prior public disclosures which may prejudice the patentability of the technology. The search results are then returned to the applicant so that the applicant can make an informed decision on whether the technology may be patentable before committing to the expense of national and regional patent applications, such as a European patent application. The intellectual property office (IPO) which is competent to perform this international search depends on the residency and nationality of the applicant, and for residents and nationals of the UK, the competent international search authority (ISA) is the EPO, whereas for residents and nationals of China, the competent ISA is the China National Intellectual Property Administration (CNIPA).
However, on 12 November 2019, the EPO and CNIPA agreed to enhance their bilateral co-operation to give patent applicants filing an international patent application in English at the CNIPA, the choice to opt for the EPO as their ISA. A two year pilot programme launched on 1 December 2020, offers applicants filing international applications with the CNIPA or the International Bureau (IB) of the World Intellectual Property Office (WIPO) the opportunity to select the EPO as their ISA and as their International Preliminary Examining Authority (IPEA), rather than CNIPA.
It is thought this may be especially interesting for Chinese applicants who are looking to protect their technology in Europe. Since the EPO performs international searches to exactly the same high-quality standard as a search associated with a European patent application, international applications already searched by the EPO do not have to undergo a supplementary European search upon entry into the European regional phase. In practice, this means that, by choosing the EPO as ISA, Chinese applicants can accelerate the prosecution of the European application by up to 12 months and benefit financially, because there is no need to pay any supplementary European search fee.
Having an international search report established by the EPO as ISA also means that Chinese applicants have the option of requesting international examination if needed to overcome objections raised in the initial opinion accompanying the search results. This optional procedure includes an opportunity to talk to the examiner in a telephone consultation and the possibility of obtaining a second patentability opinion if any claim amendments are filed. Furthermore, if the EPO has established an international examination report, and a European regional application is subsequently filed on that basis, the associated examination fee payable in connection with the European patent application will be reduced by 75%, which amounts to a considerable saving on top of the saving already made on a European supplementary search.
The pilot is expected to run for 2 years, with 5500 international applications being accepted onto the pilot programme on a first come first served basis, and with 2500 being available in the first 12 months and 3000 being available in the second 12 months.
Dr Elliott Davies, Patent Attorney and Partner
Does owning IP rights improve economic performance?
A recent study performed by the European Patent Office (EPO) and the European Union Intellectual Property Office (EUIPO) has shown that companies which own at least one patent, trade mark or registered design generate on average 20% higher revenues per employee and pay their staff on average 19% higher wages compared to companies that do not own any of these intellectual property (IP) rights.
Let it go!
Keeping an IP budget afloat despite sunk costs.
The cost of securing IP can be heavily front loaded. Examples of such costs include patent drafting, pre-filing searches, filing fees, etc. These costs become “sunk” costs in that they cannot be recovered. Because IP protection can be a relatively long process, at any time during the process there are likely to be significant “prospective” costs: future costs that may be wholly or partially avoided depending on actions taken.
Managing your business-critical IP during the COVID-19 crisis
UK businesses are fighting for survival during the continuing COVID-19 outbreak and trying to trade under difficult conditions, the likes of which haven’t been seen in the living memory of most business people. If you’re afraid that your business is going to the wall, it probably isn’t the top of your mind to pay for a patent application for your new technology or a registration of the trade mark for your brand new clothing range, right? Where is the money coming from to invest in such luxuries as IP, we hear you say, when staff are being furloughed and orders have been postponed?
Videoconferencing: the future of oral proceedings at the EPO?
The European Patent Office has announced that videoconferencing will become the norm for oral proceedings before examination and opposition divisions until at least 15 September 2021. But is this a taste of what the future holds for oral proceedings at the EPO?
Changes to trade mark and patent law in Gibraltar
In October 2020, the UK Government declared that the territorial effect of five important IP treaties would be extended to cover Gibraltar from 1 January 2021. These treaties are the Paris Convention, the Patent Cooperation Treaty, the Madrid Protocol (on International trade marks), the Nice Agreement (on trade mark classification), and the Berne Convention (on copyright). Following on from this, a bill was passed in on 11 December 2020, making some amendments to trade mark and patent law in Gibraltar.
Much Ado About Nothing
For a long time, a source of tension among UK trade mark and design attorneys was the fact that the UK was one of the few EU member states to abide by a decision to allow attorneys from any European Economic Area country to represent clients in proceedings before any national office of an EU member state. With this in mind, one of the ironies of Brexit is that, from 1st January 2021, UK trade mark and design attorneys will (in general – please see below for a super-important exception!) lose the right to represent clients before the EU IPO