This year is likely to be considered momentous for Intellectual Property practitioners and users around the world. We have already seen the implementation of the final stages of the America Invents Act (AIA) in the USA, and the signing of the Unified Patent Court Agreement in Europe which should pave the way for the introduction of a European patent with unitary effect (Unitary Patent). Closer to home ‘Down Under’, in April the ‘Raising the Bar’ Act became law in Australia and New Zealand could soon have a new Patents Act.
USA – America Invents Act
On 16 March 2013, the USA moved from a ‘first to invent’ to a ‘first inventor to file’ patent system. This brings the USA substantially into line with most other countries with first to file patent systems. Some other changes introduced by the AIA include:
- Retention of the one-year grace period but only in relation to disclosures personal to the inventor, with a narrower shield relating to a third-party disclosure.
- Expansion of the prior art base to include public uses, sales, offers for sale, etc. anywhere in the world.
Europe – Unitary Patents and the Unified Patent Court
A Unified Patent Court Agreement signed by 25 states of the European Union (EU) in February could see the new Unitary Patent System starting as early as 2014, though it will more likely start in 2015 or 2016. Briefly, the main features of the Unitary Patent are:
- A European Patent with Unitary Effect is a single European patent granted by the European Patent Office covering 25 countries of the European Union, with only Spain and Italy initially opting out.
- The European Unitary Patent will operate alongside the current system, with national patents still available as an alternative.
- The cost of obtaining and maintaining a European Unitary Patent is likely to be similar to the cost for a European patent validated in about 4-5 countries.
- European Unitary Patents will be litigated exclusively in a new Unified Patents Court.
- While large companies may benefit from the new system, SMEs may be better off obtaining national patents in selected European countries of particular interest.
On the trade mark front, in March the EU Commission issued proposals to amend the Community Trade Mark (CTM) Regulation. The aim is to streamline and harmonise registration procedures and make the fee structure more flexible, with reduced costs for a registration in a single class.
Australia – Raising the Bar
The majority of provisions in the ‘Raising the Bar’ Act, which amended all of Australia’s IP laws, came into effect in April. The most significant changes were in the patents area with standards of patentability, including the test for inventive step, being raised from 15 April 2013. This led to a deluge of requests for examination and new 2013 – a year of change in the IP world applications with examination requests being filed before the change in law.
Other changes introduced by the ‘Raising the Bar’ Act include:
- A reduction in the acceptance period for patents from 21 to 12 months.
- The ‘fair basis’ requirement for patents being replaced by a requirement for ‘support in the description’.
- Modified examination and omnibus claims abolished.
- Streamlining Opposition procedures for both patents and trade marks.
- Strengthened provisions relating to customs seizure of counterfeit goods the subject of trade marks or copyright.
It is likely to be some time before we fully see the effect of the changes in examination of patents, due to the backlog of applications to which the old law still applies. However, if you have an Australian application that you would like examined sooner rather than later, expedited examination can be requested voluntarily.
UK – The Patent Box and other changes
In April, the Patent Box scheme giving tax incentives for companies creating and developing patented inventions came into effect. The Patent Box is a scheme designed to encourage innovation in the UK, by allowing a reduction in corporation tax based on profits related to patented inventions. The Australian government also provides R&D tax incentives, with generous benefits for eligible R&D activities.
Watermark Advisory Services has people with R&D tax expertise who are dedicated to assisting companies in claiming R&D tax benefits.
There will be other changes in IP in the UK when the Intellectual Property Bill 2013-2014 becomes law. Among the changes will be stronger protection for owners of UK and European Registered Designs, and some changes to unregistered design rights.
Draft amendments to the Singapore Patents Rules have just been announced. The most significant change is a move from a self-assessment system to a positive grant system. Presently, a Singapore patent can be granted on the basis of a positive or negative examination report. Following the amendments, only patent applications with positive examination results can proceed to grant.
The IP world is constantly changing and 2013 will see more significant changes in many countries than most other years. Watermark Intellectual Asset Management has experts with a vast experience in IP laws, not only in Australia but also in many foreign jurisdictions, who keep abreast of these changes to assist companies large and small in formulating appropriate IP strategies to maximise the value form their intellectual assets.