USA: Recently the USPTO launched the After Final Consideration Pilot Program 2.0 (AFCPP 2.0), which provides examiners with additional time to consider an applicant’s response to a final office action and to conduct a further search. AFCPP 2.0 is currently scheduled to run through September 30, 2013. The advantage of filing a response under AFCPP 2.0 is that, unlike filing a response with an RCE, there are no additional USPTO fees to participate in this program, with the exception of any applicable extensions of time or other USPTO fees.
Europe: Proposed legislation in relation to a European Union patent (EU patent) will likely come into force on or after 1 January 2014. The legislation will allow applicants to obtain an EU patent that covers all of the countries in the European Union apart from Spain, Italy and Croatia. In particular:
- An EU patent can be requested within one month from the grant of a European Patent Office patent (EP patent). There is no separate application, prosecution or granting process;
- An EU patent can be requested after the grant of any EP patent after the legislation comes into effect, regardless of the filing date of the EP patent;
- Renewal fees are paid with a single payment (per renewal fee) to the European Patent Office; and
- No translation of the EU patent is needed in order for it to be in force in participating states.
A Unified Patent Court will be set up to hear patent cases related to EU patents. The Unified Patent Court will have a central division in Paris with sections in London and Munich, and a court of appeal will be located in Luxembourg.
India: Official fees in relation to patents in India will be increased. The Draft Patent (Amendment) Rules outlining the proposed increases were released on 12 June 2013. The rules are expected to come into effect soon after the Indian Parliament resumes on 26 July 2013, although no date has yet been confirmed. The official fees will be increased by up to double the current official fees, together with a 10% additional surcharge when an application or any other document is filed in hard copy format. As the current official fees payable in India are nominal compared to many other jurisdictions, applicants should not be deterred from seeking patent protection in India.
Canada: The Canadian Intellectual Property Office (CIPO) has recently revised its examination guidelines on medical use claims. The examination guidelines now indicate that inventions preventing physicians from exercising their skill and judgment in using a known compound for an established purpose should not be considered to constitute a patentable invention. This change is likely to affect claims that recite dosage regimens or dosage ranges, or claims which focus on how to administer or refine a treatment rather than what to use to treat the patient.
India: Indian Trademarks law has undergone significant changes effective 8 July 2013. Some of the key changes are as follows:
- India has acceded to the Madrid Protocol for the International Registration of Marks. The development makes filing applications in India easier and cost-effective. The development is also expected to hasten the trade marks examination and registration process in India, which to date has been slow. Under the Madrid Protocol, India is required to examine a registration request within 18 months. If no objections or oppositions are raised within this period, the mark will be deemed registered in the Indian territory;
- India will now follow the current edition of the NICE Classification for the purposes of classification of goods and services. The development will further streamline the trade mark filing process in India and will make it easier for applicants to deal with formalities objections in India;
- The term for filing an opposition against published marks has been revised to four months (without extension) from the date of publication as opposed to the earlier term of three months which was extendible by one month. The change is anticipated to expedite opposition proceedings in India. Prospective opponents must, therefore, commence their strategic research and assessment of launching opposition proceedings as soon as possible after the advertisement of an application; and
Mexico: Mexico has adopted the Madrid Protocol for the International Registration of Marks. This makes filing for trade mark protection in Mexico easier and less expensive. Applicants filing an International Application to protect their mark in the US may consider also designating Mexico under their International Application;
Canada: The Federal Court of Canada has issued an important ruling relating to applications based on foreign use and registration. Justice Manson held in the recent decision in Thymes, LLC v. Reitmans (Canada) Limited FC 127 that the use required to perfect the filing basis of “foreign use and registration” needs to have occurred at the time the Canadian application was filed and in the home country of the applicant. Prior to this ruling, the use relied upon for satisfying the filing basis of “foreign use and registration” could have been made anywhere and did not have to be use in the applicant’s home country. Moreover, the use had to have occurred at the time that ground was asserted in the Canadian application (not on the filing date of the Canadian application). This afforded applicants tremendous flexibility in obtaining registration of their Canadian applications. However, the Federal Court’s decision appears to have significantly eroded this flexibility. Overseas applicants who are looking to rely on “overseas use and registration” as a filing basis in Canada should ensure that they have used their trade mark in trade and commerce in their home country at the filing date of the Canadian application.