News Updates

Welcome to our news update section. We aim to include current topics of interest as and when developments occur in Intellectual Property matters. However, these brief notes serve only as a general guide and are not designed to address any specific issues that you may be concerned with. In consequence, Baron & Warren cannot accept any liability or responsibility for any decisions or actions taken on the basis of these notes. However, we would be happy to discuss any particular matters of interest with you.

TRADE MARKS

§ As of October 2007, radical changes to UK trade mark examination law and practice will take effect.

§ Hitherto, the UK Registrar undertook an examination on both absolute grounds (an assessment of distinctiveness, descriptiveness, deception, etc) and relative grounds (a binding official search for earlier identical and similar registrations and applications covering identical or similar goods and services).

§ However, this has given rise to anomalies with the CTM system as OHIM does not examine on relative grounds. This has lead to CTM marks being registered in the face of earlier UK marks. Conversely, UK applications are routinely held up by earlier CTMs, requiring argument, letters of consent, evidence of honest concurrent use, etc, in order to secure acceptance – significantly adding to the cost of registration.

§ In order to address this, the UK Registrar concluded that there was a need to try and harmonise with the CTM system. Having consulted widely amongst the interested parties, the Registrar has concluded that a search must be still be undertaken, especially to prevent SMEs from being unduly prejudiced, but that any marks identified in the search will no longer be a barrier to progress.

§ The new approach will be as follows:-

o An examination on absolute grounds will still be undertaken; but

o Any marks identified in the search rounds will merely be notified to the proprietors of the earlier marks upon advertisement of the application but will not be binding citations or barriers to further progress. Accordingly, the onus will be on the proprietors to raise the earlier rights in opposition. However, the mere fact that marks are to be notified will not be tantamount to an indication from the Registrar that the mark is likely to form the basis of a successful opposition.

o However, only the proprietors of UK registrations / applications will be notified of the later filed application via their address for service. The owners of CTM registrations / applications will have to opt into the notification process – subject to a fee as yet to be determined.

o New Applications filed after 2 April 2007 will be subject to the new regime.

o Existing Applications pending as of 2 April 2007 can be suspended upon request in order to ensure that they are subject to the new regime.

§ As of 1 January 2007, Bulgaria and Romania joined the European Union with automatic extension of existing CTMs to these jurisdictions unless there exists a prior conflicting national right. The European Union now comprises 27 member states; namely Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, and the United Kingdom.

PATENTS

§ As of 1 October 2005, the following provisions of the Patents Act 2004 came into effect:-

§ Mention of inventor – Before publication of a patent application, the inventor may apply in writing to the Comptroller to waive his rights to have his address, and additionally his name, mentioned as those of the inventor. The application must include reasons if the application is in respect of both the name and address.

§ Patent renewal fees – Any period prescribed for payment of the patent renewal fee now does not expire until the end of the month in which that date falls. The period of grace for late payment of the patent renewal fee and the period for applying for restoration of a patent now end at the end of the relevent month. It is also noted that, as of 1 January 2005, restoration of a patent is allowed where the owner of the patent can show that failure to pay the renewal fee in time was unintentional.

§ Co-ownership and revocation of patents – It is clarified that any person applying for revocation of a patent can include the proprietor. Where there are joint proprietors, a proprietor needs the consent of the other(s) before applying for revocation of the patent. He also needs their consent for amending or applying for amendment of the patent specification.

§ Opinions on validity or infringement – A person can now make a request to the Patent Office for a non-binding opinion on the questions of validity or infringement of a patent.

§ Security for costs – The Comptroller may make an order for security for costs against any party in proceedings before him if certain conditions are met.

§ Expansion of the Patent Cooperation Treaty (PCT)

§ Bahrain became the most recent country to accede to the PCT, effective as of 18 March 2007.

§ Malta has acceded to the PCT, effective as of 1 March 2007.

§ Expansion of the European Patent Convention (EPC)

§ Malta became the most recent member of the EPC, effective as of 1 March 2007.

§ As of 1 March 2007, the European Patent Organisation (EPO) comprises the following 32 member states: Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the United Kingdom.

§ Further to Latvia becoming a member of the EPC on 1 July 2005, its extension agreement with the EPO, whereby European patent applications and patents can be extended to Latvia, was consequently terminated.

§ As of 1 July 2005, the countries which have an Extension agreement with the EPO are: Albania, Bosnia and Herzegovina, Croatia, the former Yugoslav Republic of Macedonia, and Serbia and Montenegro.

§ European Patent Office (EPO) online filing

§ The EPO is encouraging on-line access for the filing of applications, payment of fees, etc. and we are taking advantage of this facility. Many of the actions that we take before the EPO are now by means of on-line access. It should be noted that it is still the case that documents relating to opposition and appeal proceedings cannot be filed on-line.

§ The Language Problem

§ Implementation of the London Agreement, to reduce the requirements for translations of granted European patents, is being held up by the failure of France to ratify it. Meanwhile the Dutch Patent Office has a more radical proposal for reducing translation costs. Please use the following link for a detailed summary on the latest position.

§ The new European Patent Convention (“EPC 2000”)

§ The new European Patent Convention (“EPC 2000”) is set to come into force on 13 December 2007. This is the first major revision of the EPC since it originally came into force in 1978. Please use the following link for a detailed summary on the latest position.

REGISTERED DESIGNS

§ As of 1 October 2006, some significant changes came into effect concerning registered designs in the United Kingdom. The major changes are summarised below.

§ Examination - applications will no longer be examined for novelty and individual character. Such matters can however still be raised if and when a requirement to invalidate a registration arises.

§ Multiple designs can now be included in a single application. The official application fee for the first design is £60 and for the second and each subsequent design in the same application is £40. Unlike the provisions for EU Community Registered Design Applications, plural designs in a single application do not all need to fall within the same class of the Locarno classification.

§ Deferring publication - it will no longer be possible to withhold some applications from public inspection. Instead, there is now a provision to allow a 12 month delay in publication to be requested. Taking advantage of this provision will incur an additional fee.

§ Restoration - for designs registered on or after 1 August 1989, if renewal does not occur within 6 months of the renewal date, it will be possible to restore the registration if the non-payment was merely unintentional.

§ Forms - new forms have been provided.

§ Public inspection - provisions introduced to allow public inspection of files relating to the acceptance of applications and their maintenance.

§ Publication – there is now a statutory provision to publish new designs in a journal. In the past they were published but on a voluntary basis.

§ As of 1 January 2007, Bulgaria and Romania joined the European Union with automatic extension of existing Registered Community Designs to these jurisdictions unless there exists a prior conflicting national right. The European Union now comprises 27 member states; namely Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, and the United Kingdom.

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