NEWS JANUARY 2024 - DECEMBER 2024
WIPO
April 26, 2024
In 2015, all Member States of the United Nations adopted 17 goals as part of the 2030 Agenda for Sustainable Development.
"The Sustainable Development Goals (SDGs) are a call to end poverty, protect the planet and improve the lives and prospects of individuals around the world".
The World Intellectual Property Day is celebrated every year on April, 26th. This year, the chosen slogan by the
World Intellectual Property Organization – WIPO is
"IP and SDGs: Our common future is forged with innovation and creativity".
BRAZIL
April 18, 2024
On April 16th, 2024, the Brazilian Patent and Trademark Office (BRPTO) issued Ordinance No. 15/2024, published in Official Bulletin No. 2780. This Ordinance extends the deadline suspension for filing divisional design applications (BR 32) in response to an office action. The extension period started on April 1st and will end on April 30th, 2024.
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EUROPE
April 04, 2024
On December 22nd, 2023, the Official Gazette of the European Union published Regulation (UE) 2023/2437, amending the Rules of Procedure of the Boards of Appeal of the EUIPO - European Union Intellectual Property Office. This Regulation entered into force on March 1st, 2024.
One month after its entry into force, we analyze the main amendments introduced by the new Regulation, highlighting its implications for the parties and their representatives.
These modifications aim to improve procedural efficiency, transparency and accessibility within the European Union Intellectual Property (IP) framework.
We summarize in our newsletter the main changes, which refer to: (I) extensions of time; (II) suspension of proceedings; (III) alternative dispute resolution at the appeal stage; and (IV) quality control of decisions.
Overall, the amendments introduced by Regulation (EU) 2023/2437 reflect a significant step in strengthening the appeals procedure, facilitating inter partes agreements and eventually improving the protection of IP rights. It also promotes, at the same time, a more accessible and transparent system.
Regulation (EU) 2023/2437 represents a comprehensive effort to improve the procedural framework regulating the resolution of European Union Trademarks and Community Designs disputes within the European Union. By focusing on simplifying proceedings, improving transparency, promoting accessibility and inter-party agreements, as well as quality assurance, this Regulation seeks to strengthen the efficiency and effectiveness of the appeals procedure within the EUIPO.
In order to access the full text of our newsletter, please click on the link below, "Complete bulletin in PDF".
EUROPE
April 02, 2024
On March 19th, the European Patent Office (EPO) published the Patent Index 2023 report.
During 2023, patent filings at the EPO increased by 2,9%, reflecting a dynamic landscape of innovation, particularly in digital and green technologies. This growth underscores Europe's enduring appeal in the global technology market, as evidenced by remarkable increases in filings from China and Korea.
The EPO received a record-breaking 199.275 patent applications in 2023, indicating a rising focus on innovation to address global challenges, with advancements in digital and green technologies at the forefront.
Notably, European applicants remained consistent in their contributions, while the influx of applications from outside Europe highlights the continent's attractiveness to innovators worldwide.
Furthermore, a noteworthy portion of patent applications from Europe stemmed from individual inventors and small to medium-sized enterprises, underscoring diverse sources of innovation.
Eight of the top ten patent-active fields experienced growth, with notable increases in electrical machinery, apparatus, and energy (+12,2%), digital communication (+8,6%), and biotechnology (+5,9%).
These sectors are pivotal in shaping a more sustainable and interconnected world, with technologies like clean energy solutions and artificial intelligence driving innovation.
Digital technology fields, including artificial intelligence and battery technology, exhibited robust growth, while some areas in chemistry and mechanical engineering experienced stagnation or decline.
European applicants continued to show steady growth, with Germany leading the pack, while notable increases were observed from countries such as Finland, Spain, and the UK. Additionally, filings from China and Korea surged, reflecting the growing prominence of these regions in the global innovation landscape.
Over 104.600 patents were granted in 2023 – 17,5% of these patents requested the new Unitary Patent. European patentees were particularly keen, with 25,8% opting for the Unitary Patent, accounting for nearly two-thirds of all Unitary Patents.
The 2023 statistics underline the increasing global appeal of Europe's technology market. With a wide and diverse range of sectors experiencing growth and the introduction of the Unitary Patent, the EPO continues to play a pivotal role in promoting innovation and technological advancement.
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BRAZIL
March 28, 2024
The Brazilian PTO recently updated its Guidelines for Filing Appeals and Post-Grant Oppositions to appeals. These guidelines are set in BRPTO's Ordinance No. 10, published in Official Gazette No. 2774 on March 4, 2024, which replaces previous Ordinance No. 7. They have taken effect on March 19, 2024.
These updates specifically address cases in which the required amendment brief, as outlined in the BRPTO's presidency order published in the Official Gazette No. 2764 on December 26, 2023, was not filed. These changes apply to appeals involving patent applications that received their initial technical opinion (publication code 6.1) or acknowledgement of technical opinion (publication code 7.1) before April 1, 2024. The General Coordination of Appeals (CGREC) has issued an office action requiring appellants to demonstrate and substantiate the technical impossibility of adhering to the Guidelines for Filing Appeals and Post-Grant Opposition Proceedings.
The new guidelines are effective immediately
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BRAZIL
March 07, 2024
On February 27th, 2024, the Brazilian Patent and Trademark Office (BRPTO) published in the Official Bulletin No. 2773, new rules on amendments to patent applications during the appeal stage.
In summary, when amending rejected claims, applicants may make restrictive adjustments aimed at addressing objections raised during the initial examination, subject to certain criteria:
A. Amendments should directly address the reasons for rejection. Those unrelated to the rejection grounds will not be considered.
B. Changes should impose logical constraints on rejected claims. Subject matter removed during the initial examination cannot be reintroduced.
C. Restrictive changes must be consistent with dependent claims or result from a combination of independent/interconnected claims. Limitations based solely on the specification and not included in the rejected claims will not be accepted.
D. Changes to the application's nature are not permitted unless discussed during the initial examination. For instance, a patent application cannot be converted into a utility model application during an appeal without prior consideration.
The BRPTO will accept petitions to amend previously filed appeals until April 2nd, 2024.
In order to access the full text of our newsletter, please click on the link below, "Complete bulletin in PDF".
EUIPO
March 01, 2024
The practice of refiling trademarks in unused classes presents a fascinating legal dilemma. While it offers practical advantages, recent interpretations suggested it could be deemed fraudulent if used to circumvent legal requirements. This note delves into this issue through a specific case: Cancellation No C 52 111, where an application to declare a trademark invalid due to alleged bad faith refiling was rejected.
The applicant argued that the owner, Benetton Group S.R.L., refiled the trademark in unused classes to avoid proving use of an earlier mark and evade potential revocation. However, the Cancellation Division of EUIPO - European Union Intellectual Property Office ultimately ruled against the applicant due to:
- No explicit prohibition on refiling: Current legislation does not explicitly prohibit refiling.
- Insufficient evidence of bad faith: The applicant failed to demonstrate that the owner's sole intention was to avoid legal obligations or prevent third-party competition.
- Legitimate reasons for refiling: Refiling can be justified for maintaining opposition rights against similar trademarks and preventing unauthorized use in unused classes.
This case highlights the complexities surrounding trademark refiling. While not inherently illegal, it requires careful consideration to avoid accusations of bad faith and ensure compliance with the spirit and letter of trademark law.
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CHINA
February 29, 2024
Amendments to the Rules for the Implementation of the Patent Law, issued by the National Intellectual Property Administration (CNIPA), have become effective last January 20th. These modifications bring the regulations more in line with those in force in the most relevant Intellectual Property jurisdictions. Among them, we can highlight some of the most interesting ones, such as the elimination of the 15-day post time for official communications delivered electronically; new deadlines for the restoration, addition or correction of priority; possibility of correction through incorporation by reference; introduction of the principle of good faith as a ground for rejection; recusation of examiner in reexamination; possibility of deferred examination; new rules for partial designs; or the introduction of patent term adjustments and patent term extensions.
You can access the new regulations through the following link:
Complete bulletin.
EUROPE
February 28, 2024
On January 29, 2024, the Italian Foreign Ministry and the President of the Court of Appeal of the Unified Patent Court (UPC), Klaus Grabinski, signed in Milan the “Headquarters Agreement” that brings the third seat of the UPC Central Division to Milan. Technology areas under the competence of this section will be less than those originally assigned to London. It will have jurisdiction over patent disputes in the “Human Necessities” sector that have no supplementary protection certificates. This comprises agriculture, foodstuffs and tobacco, personal or domestic articles (footwear, furniture…), medical or veterinary devices, fire-fighting and life-saving devices, and inventions referred to sport and games. It is expected that the Milan seat begins to operate in the summer of 2024.
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EUIPO
February 27, 2024
On January 2024, the EUIPO - European Union Intellectual Property Office released a report titled "Economic Impact of Counterfeiting in the Clothing, Cosmetics, and Toy Sectors in the EU."
This extensive analysis examines the economic ramifications of counterfeiting on sales and employment across three pivotal sectors: apparel (including footwear), cosmetics, and toys. The study focuses on a meticulous evaluation of the decline in sales within the European Union market. Consequently, these diminished sales lead to a direct reduction in employment within the impacted industries.
Previous studies have shown that the drivers of counterfeiting vary by sector. Therefore, the clothing, cosmetics, and toy sectors key findings are identified separately.
Clothing industry:
- The clothing industry experienced an average annual sales loss of almost EUR 12 billion between 2018 and 2021, which accounted for 5.2% of total clothing sales in the EU.
- As a consequence of sales lost due to counterfeiting, the clothing industry experienced a yearly decrease in employment of 160,000 individuals.
Cosmetic industry:
- Counterfeiting in the cosmetics sector results in estimated losses of EUR 3 billion, equivalent to 4.8% of total sales in the EU.
- The EU cosmetics industry is estimated to have experienced a decline in employment of nearly 32,000 individuals.
Toy industry:
- The toy sector experiences the highest percentage of sales lost due to counterfeiting, at 8.7%, which translates to EUR 1 billion.
- Employment in the toy sector decreased by 3,600 individuals due to counterfeiting.
We cordially invite everyone to read the full report which can be found at the following link:
Complete bulletin in PDF.
EUROPE
February 26, 2024
As from April 1, 2024, the European Patent Office will introduce a new fee reduction scheme to support the growth and development of smaller and less experienced European entities. This new scheme is compatible with the existing reductions for small entities which have their residence or principal place of business in an EPC contracting state and which file a European patent application or request for examination in an official language of that state other than English, French or German. New Rule 7a(3) EPC will apply to micro-entities only, irrespective of their nationality or domicile, and will include non-profit organizations, universities and public research organizations. The reduction will be 30% of the relevant fee, including the filing fee, the European search and examination fee, the designation fee, the fee for grant and the renewal fees for the European patent application. It is important to note that the fee reduction will only apply if the micro-entity has filed fewer than five applications in the last five years.
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UNGRIA
February 20, 2024
We are proud to share that once again UNGRIA has been ranked as Top Tier-1 and Top Tier-3 Intellectual Property firm in Spain for Trademark Prosecution/Strategy and Enforcement/Litigation, respectively, in the recent 2024 edition of the World Trademark Review 1000 (WTR 1000).
We would like to thank our clients for their continued trust in us. UNGRIA continues growing based on our strong belief about the importance of high-quality, commitment and honesty in our services.
Finally, we would also like to thank WTR 1000 for this recognition: https://lnkd.in/dvZSSdA5
EU
February 15, 2024
On January 17th, 2024, the EUIPO - European Union Intellectual Property Office released an announcement regarding a new call for applications for the «Ideas Powered for Business» SME fund.
The Small and Medium Enterprises (SME) Fund provides financial assistance for the protection of Intellectual Property rights to small and medium-sized enterprises established in the European Union.
SMEs can apply for bonds to partially reimburse the official fees paid for registering new IP rights.
Trademarks and Designs:
Applicants may request up to € 1,000.00 for eligible activities:
- Reimbursement of 75% of trademark and design official fees at national, regional and EU levels.
- Reimbursement of 50% of official fees for international trademark and design filings through WIPO's Madrid and Hague Systems.
Patents:
Applicants may request up to € 3,500.00 for eligible activities:
- Reimbursement of 75% of official fees for national patents of EU member states or European patents, up to a maximum of € 1,500.00.
- Reimbursement of 50% of legal fees up to a maximum of € 2,000.00.
Companies established in the EU or Ukraine are eligible to apply.
The submission deadline for the call is from January 22nd, 2024, to December 6th, 2024.
Should you wish to learn more and discover how your company can benefit from this program, please don't hesitate to contact us. We would be pleased to assist you in every step of the process and guarantee the effective protection of your Intellectual Property rights.
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