Tuesday, 29 March 2016

Updating UK Patent Rules

With so much emphasis on the Unified Patent Court and European patent with unitary effect or unitary patent if you prefer, administered by the mighty EPO, the humble UK national patent can
Baroness Neville-Rolfe champion of UK IPO
easily be forgotten. However, its importance, particularly to entrepreneurs looking for early grants and the inventors of those technologies shunned by the EPO is not to be underestimated. Any innovator who finds the prospect of €10,000 as the starting price for litigation and has been taken with the access ability of the Intellectual Property Enterprise Court should still be very very interested in the UK national patent.

The UK IPO has been doing a little tidying up and recently produced a consultation on proposed changes to the Patents Rules. Responses are sought by 22 April 2016.

There are a number of specific rule proposals but there is an open question (17)which invites any other proposals for rule changes or clarifications. There is a hint that you might want to consider the extensions of time rule but the question is not limited to that and if there are any other rules of bug you now is the time to say so that they can be included in the amending statutory instrument under construction.

The Patents Rules live here  But only in PDF downloadable format. Isn't it time they came in a nice HTML version for easier referencing.

Some of the proposals are very straightforward and it will be difficult for anybody to dissent from the idea that we should no longer have to file multiple copies of form 51 when appointing an agent or triplicate copies of international applications (does anybody really file international applications with the UK IPO in paper. It might even be time to make electronic filing compulsory what do you think, or are you still reliant on the fax machine. In cases of Internet meltdown and bearing in mind that large parts of the country have dire Internet connections, it may be a little too soon for that step to be compulsory but we should certainly be encouraging paper elimination.

The object of the rule changes is to benefit did businesses and individuals making use of the patent system (which naturally includes those at risk of being patent infringers)

Omnibus claims
The proposal is to discourage them- not by relying on clarity objections but by introducing a new rule prohibiting references to the description or drawings. I entirely agree with the ambition but I'm less certain that this is the way to do it. The scope of these claims is unclear. The reason that they refer to the description and drawings is to limit them to the embodiments and it may well be that for some inventors limiting their claim to the embodiment described is all they can afford. If the embodiment is described clearly and often it isn't, this might be an acceptable claim but a very narrow one. The really offensive part of an omnibus claim is the "substantially as herein described" phraseology not the reference to the drawings.  After all Article 69 says that every claim has to be interpreted by reference to the description and drawings.

Rewriting paragraph 14 .124 and .125 of the Manual of Patent Practice to reflect current case law might be the answer.

As to the transition I would be happy if no omnibus claim were allowed from now on but  the idea that it should apply to granted patents when the rule comes into force could be a very Draconian hit on some self filers who may find their patents no longer exist in any valid form despite payment of renewal fees. IPEC may well have to continue to construe those claims narrowly as they have done before.

Most applicants will also have a main claim so we could achieve the same effect by limiting the number of independent claims.The requirement for a statement of invention harks back to the need for the omnibus claim to be no broader than claim 1. I have always thought statements of invention were bad drafting practice and made patents more difficult for the lay reader to understand. The solution of the invention is defined by the appended claims does the job.

Photographs Q10 

The proposals include the possibility of photographs, but not CAD Drawings which might be shaded. Reproducibility is what it's about and it drawings can be reproduced it shouldn't matter whether they are in black-and-white colour or gray scale. However, line drawings are often likely to be the best choice.

I wonder what our illustrious professional body is going to say about these proposals

Saturday, 5 March 2016

Preparing for 23 March and the European Union Trade Mark

Go to home pageThis name will disappear on 23 March 2016 so are we ready for the change? The page that the soon to be European Union Intellectual Property Office has created is here.

Although there is a new Harmonisation Directive the approach taken for our favourite CTMR 207/2009 is that it is amended so we need a consolidated version. I haven't found one yet. Will we still call it CTMR for old time's sake?

The simple things we need to do is change the name of OHIM  which becomes European Union Intellectual Property Office and community trade mark becomes European Union trade mark. What is the consensus for the abbreviations: EU IPO and EU TM is my choice. European Union TM is officially sanctioned in Art 1(2) of the amending regulation.

Not much will change about day to day filing except that you will have to decide whether you want to receive the search of earlier rights on the Community Trade Mark Register Register of EU Trade Marks . This is now known as an EU search report but it still only covers EU TMs. You can say you don't want it but they have to create it even if you don't want it because they are still sending out those pesky surveillance notices. We are now allowed to opt out of receiving them though and I shall be looking at how to do that, especially where I am the representative for one and two letter logos.

Graphic representation is now (well with effect from 1 October 2017 and we can expect the EU IPO to tell us what representations are acceptable)  not essential and there is plenty of hot air about the possibilities of registering non-traditional EU TMs. Forget it. They also amended Art 7(1)e so you cannot register:
‘(e) signs which consist exclusively of:
(i) the shape, or another characteristic, which results from the nature of the goods themselves;
(ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result;
(iii) the shape, or another characteristic, which gives substantial value to the goods;’

Now Arnold J had a go at the Taxi CTM not long back and at paragraph 215 of his judgement killed it under  the substantial value provision. The same has to be the case for the smell of perfumes. Even if the representation is not graphic it is still required to be clear, precise, self-contained, easily accessible, intelligible, durable and objective. I don't know of any self-contained sound representations. Even a recording needs something to play it and the sound file also needs to be easily accessible and durable - quite a challenge. My best advice is stick with registration for traditional marks.

The amendments allow for Certification EU TMs but these points of the Regulation will not apply until 1 October 2017 so we have more time to prepare for those.

We have already seen the benefit of the reduced renewal fees when renewing EU TMs that were due to expire after 23 March.

Thinking of Brexit, the provisions on representation  Art 93(1)b now simply says
(b) professional representatives whose names appear on the list maintained for this purpose by the Office.
If UK representatives are on that list they will still be there after Brexit so the old campaigners should be able to continue to represent. The requirement for representation is also amended so that it is only applicants outside the European Economic Area who need representation as opposed to outside the Community. Its possible, but uncertain, that the UK will stay in the Economic Area. This is the area for free movement of people and that is a big issue for many LEAVE voters who might feel betrayed if we stayed in the EEA and were simply told what to do by Brussels without any say in the negotiations.

A lot more of  the changes are less likely to affect our daily lives, but there are a lot of them so we might be surprised.