Category: News

On the 8th of February, 2024, amendments and additions were made to the order “On approval of the Rules for the examination of applications for selection achievements, industrial property objects, trademarks, service marks, geographical indications, appellations of origin of goods, on registration of topographies of integrated circuits” (hereinafter – the Rules).

The key addition to the Rules allows Applicants the option to accelerate the consideration of a trademark application from seven to three months through an accelerated examination process.

In the current landscape of rapidly evolving market dynamics and the rise of electronic commerce platforms, the accelerated examination of the trademark application is commonly utilized in countries such as Singapore, USA, Japan, China, Great Britain, India, and Georgia.

This recent innovation within the Republic of Kazakhstan was instigated by inputs from the business community and patent attorneys.

There are several scenarios where an accelerated examination may be beneficial, including if the Applicant is already operating a business without a registered trademark, planning to sell products on an online e-commerce platform, or initiating a new business venture.

Dengue fever is a severe viral disease spread by vectors. The viruses responsible for dengue fever are known as arboviruses. Currently, dengue fever mainly affects countries in South and Southeast Asia, Africa, Oceania, and the Caribbean. Each year, between 50 and 528 million people contract the disease, resulting in approximately 10,000 to 20,000 deaths.

“Serum Institute of India Pvt. Ltd.” has obtained a Eurasian patent (No. 046342) for a live attenuated flavivirus vaccine composition. This patent pertains to an immunogenic composition comprising one or more live attenuated dengue viruses comprising a plurality of live attenuated dengue (DEN) viruses of different serotypes selected from a group consisting of DEN-1, DEN-2, DEN-3 and DEN-4, in which the dengue virus is present at a dose of 2.5 – 3.0 log 10 PFU per 0.5 ml and excipients. The composition preserves desired characteristics of the virus, including virus viability, immunogenicity and stability.

The suggested vaccine compositions are proven to be effective in treating and preventing dengue infections, as well as preventing, ameliorating or delaying the onset or progression of the clinical manifestations thereof.

“Serum Institute of India Pvt. Ltd.” is currently recognized as the largest vaccine manufacturer globally, with over 1.3 billion doses produced and distributed worldwide, including vaccines for Polio, Diphtheria, Tetanus, Pertussis, Hib, BCG, r-Hepatitis B, Measles, Mumps, and Rubella.

New regulations for submitting patent applications in Uzbekistan have been implemented as of May 2023. Now, applicants can file their patent applications electronically through the new Ministry of Justice’s online portal. Along with the standard application details, the Ministry of Justice is now requesting additional information from applicants, such as the establishment date and tax number of the company for corporate entities, and individual tax numbers and dates of birth for individuals. Authors are also required to provide their dates of birth. All of this information must be entered into the Ministry of Justice’s database before a new application can be submitted, although it is assured that this information will be kept confidential.

Moreover, under the new guidelines, for PCT applications, a full translation of the patent application shall be provided instead of just translating the claims as previously required. Additionally, a signed power of attorney shall be uploaded immediately upon application submission, as the new system will conduct a quick check to ensure that all required documents are complete. This new process, however, does not align with the current patent application requirements, as the two-month deadline for submitting a power of attorney has not been abolished. The Ministry of Justice claims that this change was made to simplify the application process and prevent errors. Despite requests from the Association of Patent Attorneys to align the filing procedures with existing requirements, all the new filing regulations remain in effect.

The multinational companies that have maintained their presence in Russia are exploring avenues to enhance the efficacy of protecting their trademarks. For instance, the affiliate of “Unilever”, LLC “Unilever Rus”, has been granted the rights to use in Russia the trademarks “Chistaya Liniya”, “Barkhatnye Ruchki”, “Chernyi Zhemchug”, “Lesnoi Balsam”, “Inmarko”, “Ekzo”, and others that are popular in Russia.

Previously, the ownership of these trademarks was held by the Dutch entity “Unilever IP Holdings B.V.” and the British entity “Unilever Global IP”. This move will enable the company to streamline risk management, particularly in combating counterfeit goods.

During legal proceedings in such disputes, although unsuccessfully, arguments frequently revolve around the relinquishment of trademark protection solely based on the jurisdiction of the trademark holder.

Consequently, the swift response to potential breaches concerning well-known trademarks of foreign origin has become more crucial in recent times. Some entrepreneurs have begun to replicate prominent trademarks more actively, hoping that some trademark holders may have ceased monitoring violations in Russia. Additionally, there are risks of premature termination of trademark protection due to claims of non-use.

The landscape has shifted from the “patent trolls” of the early 2000s to entities focusing on identifying unused trademarks and attempting to revoke their protection for personal gain, although such occurrences are sporadic. While endeavors by individual market players to obtain renowned trademarks have always existed, they have witnessed a surge in 2022. Nonetheless, the Russian Federation remains committed to safeguarding intellectual property, including that of multinational corporations. The number of disputes over the protection of foreign trademarks declined in 2023 following an uptick in 2022.

The U.S. Patent and Trademark Office (USPTO) has announced an extension of the First-Time Filer Expedited Examination Pilot Program. This program aims to improve access to the patent system for inventors who are new to the patent application process, particularly those in historically underserved areas. Through this pilot program, eligible first-time filers can have their patent applications expedited for examination and receive early feedback from patent examiners, known as the “first office action.”

To be eligible for this program, the applicant and inventor must meet the following requirements at the time of filing the petition to make special:

– The applicant must confirm that the inventor, or if there are joint inventors, each joint inventor, has not been named as the sole inventor or joint inventor in any other U.S. nonprovisional application.

– The applicant must confirm that both the applicant and inventor, or if there are joint inventors, both the applicant and each joint inventor, qualify for micro entity status based on gross income basis requirement (the current maximum qualifying gross income is $223,740).

– The applicant must confirm that the inventor, or if there are joint inventors, each joint inventor named in the application, has a basic understanding of the USPTO’s patent application process. For applicants uncertain about meeting this requirement, resources for patent application training can be found on the pilot program’s webpage (https://www.uspto.gov/FirstTimePatentFiler).

Originally set to conclude on March 11, 2024, the USPTO has decided to extend the pilot program until either March 11, 2025, or until the USPTO has approved a total of 1,000 petitions from the start of the program, whichever comes first.

In the program’s first year, over 350 petitions requesting participation have been submitted, with more than 142 accepted and 15 patents granted.

Rospatent refused registration of the trademark “Latisse” for eyelash growth stimulators under Russian trademark application No. 2022727161 submitted by the “Beautymarket” company. This decision was based on the fact that the trademark was already known to Russian consumers through its usage by the foreign company “Allergan, Inc.” for similar goods.

In addition, Rospatent identified a potential for confusion between the claimed trademark and the previously registered trademark “LEUTHYS” for similar goods in the name of another party. Despite the opposition filed by “Beautymarket”, Rospatent maintained its decision to refuse the registration.

Rospatent highlighted that information about the “Latisse” product of the “Beautymarket” company was widely available on the Internet before the trademark application was filed, indicating its familiarity to Russian consumers. They also emphasized that the product continued to be sold in Russia despite exit of the “Allergan, Inc.” company from the market.

Moreover, Rospatent pointed out the presence of similar products with the label “analog of Latisse” in the Russian market, indicating the widespread recognition of the “Latisse” trademark among consumers.

Consequently, Rospatent concluded that the trademark was misleading consumers about the true manufacturer of the goods. Rospatent further noted that “Beautymarket” did not provide sufficient justification for their claim to a trademark already in use by another party for similar products, deeming it a contradiction of good faith in commercial practices.

In the first instance, the Intellectual Property Rights Court (case No. SIP-457/2023) rejected Rospatent’s arguments. However, the decision was overturned by the Presidium of the Russian Intellectual Property Right Court (case No. С01-2301/2023), which upheld Rospatent’s Refusal.

The United States Patent and Trademark Office (USPTO) has officially released Inventorship Guidance for AI-Assisted Inventions, as outlined in the Federal Register. This initiative aligns with the Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence (AI).

Effective as of February 13, 2024, the guidance offers clear instructions for examiners and stakeholders on evaluating the significance of human contributions to an innovation when AI is also involved. It acknowledges and supports the integration of AI in the innovation process, emphasizing that AI-assisted inventions are not automatically deemed unpatentable. Examiners are provided with directives on identifying the rightful inventor(s) in cases where humans collaborate with one or more AI systems. The USPTO has gone a step further by illustrating hypothetical scenarios, aiding both examiners and applicants in understanding the application of the guidance. For instance, it clarifies that merely recognizing a problem and presenting it to an AI system is insufficient for inventorship, but constructing a meaningful prompt may meet the criteria.

The fundamental objective of these guidelines is to strike a balance in the patent system, promoting patent protection for AI-assisted inventions with significant human contributions while avoiding unnecessary hindrance to future innovations.

Contrary to evaluating whether AI contributions would equate to human inventorship, the guidance focuses on whether the human named on a patent has made a substantial contribution. A patent’s eligibility for protection hinges on having at least one named human inventor meeting this requirement.

Anticipating the increasing ubiquity of AI, where individuals build upon each other’s AI-assisted inventions, the USPTO refrains, at present, from imposing new disclosure requirements for AI usage beyond existing rare circumstances mandated by USPTO rules.

Looking ahead, the USPTO aims to collaborate with international counterparts to discuss and harmonize inventorship guidance for patenting AI-assisted inventions, fostering a cohesive AI policy across borders.

Changes to fees for European patent applications will come into effect on April 1, 2024, as per the Decision of the Administrative Council dated December 14, 2023. The European Patent Office (EPO) will witness an increase in some of its official fees starting from the specified date. These amendments are applicable to fee payments made on or after April 1, 2024, for both European patent applications and Euro-PCT applications that have entered the European phase, regardless of their filing date.

While the majority of official fees will experience a moderate increase of around 4%, the third and fourth renewal fees will see a significant rise of 30% and 28%, respectively. However, certain official fees such as filing, opposition, and appeal fees will remain unchanged this year, with some fees being abolished.

In addition to these changes, starting from April 1, 2024, the EPO is introducing a new micro-entity fee system, an extension of the current system for small entities. Micro-entities, in this context, encompass microenterprises, natural persons, non-profit organizations, universities, and public research organizations, provided they have filed fewer than five patent applications in the last five years. It’s important to note that small and medium-sized enterprises (SMEs) are not considered micro-entities.

For micro-entities, there is a 30% reduction in fees for filing, search, designation, examination, grant, and renewal. Similarly, small entities will benefit from a 30% reduction in the filing fee, including any additional fees that form part of the filing fee, as well as the examination fee.

The Eurasian Patent Office has registered for the first time a pledge of the exclusive right to an industrial design.

LLC Scientific Industrial Enterprise – Lossew (RU), which is the owner of Eurasian patent No. 000038, transferred the exclusive right to an industrial design as a pledge. LLC Lossew is an enterprise producing LED lighting and optics.

The exclusive right to the ornamental aspect of the lamp was pledged to the Moscow Small Business Lending Fund.

This will allow LLC Lossew to use the patent as an intangible asset and obtain a pledge in relation to it for further business development.

Thus, the patentee exercised their right on the basis of a Eurasian patent for an industrial design, which not only allows to protect exclusive right to an original ornamental aspect of an article in seven countries simultaneously, but is also an intangible asset of the patentee, who has the right to transfer the exclusive right to an industrial design to another person or to register a pledge in relation to it, as well as to provide the right to use the industrial design under a license agreement.

Rospatent refused to register an individual entrepreneur’s trademark for telecommunications services on Russian trademark application No. 2022718292, since the verbal element of the claimed trademark “ФАЙБЕРБРИДЖ” (which is a Cyrillic transliteration of the English word “FiberBridge”) phonetically reproduces the designation “FiberBridge” used by a US equipment manufacturer (ATTO Technology, Inc.) for communication services, which has become widely known to the Russian consumers of the relevant services and, therefore, may mislead them in relation to the provider of these services.

In the cassation appeal of the Intellectual Property Court (case No. SIP-394/2023), the entrepreneur referred, among other things, to the fact that the foreign manufacturer is registered in the United States, which country is committing unfriendly actions towards Russia. According to the entrepreneur, this circumstance confirms that the American manufacturer is not interested in using the trademark in the Russian Federation. Furthermore, the US company has not registered the designation “FiberBridge” as a trademark.

The Presidium of the Russian Intellectual Property Right Court did not agree with these arguments and its decision of 12 January 2024 noted as follows:

1. The specifics of applying intellectual property rights legislation to persons from countries committing unfriendly actions are determined by the government, but not the individual entrepreneur;
2. Unfriendly actions of the state are not a reason to mislead Russian consumers, since they may think that the disputed trademark refers not to the services of the individual entrepreneur, but to the American company.

New Federal Law No. 390361-8 passed in Russia amends provisions of the Civil Code that concern the administrative consideration of disputes in the field of rights to inventions, utility models, trademarks and other objects of intellectual property, introducing a possibility of reimbursement of expenses of the winning party.

Previously, legislation allowed reimbursement only for the expenses incurred during consideration of the matter at court, including pre-trial costs. The costs of preliminary administrative disputes were not included into this scope, while in a number of cases the interested party was required to begin the dispute with an administrative hearing in the Chamber of Patent Disputes (a branch of the Russian Patent and Trademark Office), and only then go to court. The litigants were left with no ability to ensure their rights at some of the stages of the proceedings.

The Constitutional Court pointed out this omission in the legislation in its Resolution No. 1-P/2023, issued on January 10, 2023, following consideration of the complaint of OOO “NIKA-PETROTEK”. The company’s patent for a group of inventions was partially cancelled by the Board of Chamber of Patent Disputes following an objection filed by OOO “FORES”. Unwilling to accept only partial satisfaction of its demands, OOO “FORES” attempted to appeal the decision of the Chamber in court, but the court refused to satisfy the appeal. OOO “NIKA-PETROTEK”, forced to defend its patent, managed to reimburse some part of the legal costs – however, it was not possible to reimburse the costs of the initial consideration in the Chamber of Patent Disputes. Obviously, this is not the first patent owner to face such a situation.

Following the instructions of the Constitutional Court, a new Federal Law was drafted, intended to amend Article 1248 of the Civil Code of the Russian Federation regarding the consideration of disputes related to intellectual rights. The legislator clarifies that expenses incurred during administrative proceedings can be reimbursed (including official fees, as well as the fees of experts, translators and patent attorneys involved in the proceedings).

The law will come into force on 10 February 2024, after which any party involved in patent or trademark disputes will be able to more effectively protect their intellectual rights.

From January 15, 2024, inventors and businesses are able to validate in Georgia on the basis of the country’s national law their European patent applications and patents granted by the European Patent Office (EPO).

As a result, those European patent applications and patents validated in Georgia under the agreement will have the same effect and be subject to the same conditions as Georgia’s national patents.

The accompanying technical co-operation between the EPO and the National Intellectual Property Center of Georgia, SAKPATENTI, will bolster the development of Georgia’s national patent system and further foster innovation. The validation of European patents is also an important element for attracting foreign investment to Georgia.

The European Patent Organisation has 39 member states, including 27 member states of the European Union and 12 non-EU member states. Georgia will be the 5th country with the validation status and the 45th country where patent protection will be possible on the basis of a European patent application.

Under validation agreements, inventors and businesses are provided with a simple, timely and cost-efficient way of achieving high-level protection for an invention in the validation state, based on one single European patent application and without having to file a corresponding national patent application.

Validation for Georgia may be requested for any European patent or international (PCT) application filed on or after January 15, 2024.