Author: pat

This year hundreds of delegates from WIPO’s 193 Member States have joined the July 9-17 WIPO Assemblies to negotiate the future of the global intellectual property (IP) ecosystem and WIPO’s activities in promoting the economic, social and cultural development of all countries.

Maria Nilova attended the special meeting organized in WIPO headquarters, dedicated to 30th anniversary of the Eurasian Patent Organization. She congratulated the Head of the Eurasian Patent Organization, Grigory Ivliev, on behalf of Patentica Company, its partners, attorneys, lawyers and staff.

From the date of signing the Eurasian Patent Convention in 1994, the Eurasian Patent Organization (EAPO) has been a driving force of the legislative development of the regional patent system and has served as a consolidating basis for facilitating and advancing national patent regulations in the member states of the Commonwealth of Independent States (CIS).

The creation of a regional system in Eurasia similar to the European Patent Organization has come as a brilliant solution to the problems evolved after the disintegration of the Soviet Union.

Thanks to invaluable help of the WIPO, and personally, WIPO Director General Arpad Bogsch, the Eurasian Convention survived already 30 years without changes and nowadays serves as a center point for further expanding the economic progress in the Eurasian region.

Over those 30 years, the level of collaborative activities among member states have increased to cement economic, scientific, technological and ecological relations.

EAPO acts now as an International Searching Authority and an International Preliminary Examination Authority in accordance with the Patent Cooperation Treaty (PCT).

EAPO is also nowadays a member of Patent Prosecution Highway Programme (PPH Programme) and accepts requests from several jurisdictions, including China, Japan, EPO and the Republic of Korea.

In 2019, a protocol to the Eurasian Patent Convention on the protection of industrial designs was signed. The protocol has been in effect since June 2021, and in future, the EAPO is expected to join the Hague system of international registration of industrial designs.

The agreement on Eurasian utility models and the long-awaited agreement on Eurasian trademarks are also something to look forward to.

Further development plans of the Eurasian Patent Organization are impressive and include:

– creating a centralized information and examination database to provide exchange of patent information between the regional and national patent offices;

– complete digitalization of services, including the use of big data;

– development of the Eurasian dispute resolution system;

– further developing the Eurasian Pharmaceutical Register established in 2021 with the information on valid Eurasian patents for inventions related to active pharmaceutical ingredients with international non-patent names.

– expanding educational projects by creating IP commercialization and technology transfer centers in technoparks.

Patentica congratulates the Eurasian Patent Office for these achievements and expresses its support to the Eurasian Patent Organization in its new endeavors to integrate several IP systems within a single intergovernmental body, including patents for inventions, designs and in future, utility models and trademarks.

In order to promote the long-term sustainability of the EPO, a budget-neutral fee policy reform has been implemented, which includes targeted fee discounts to improve access to the patent system for underrepresented micro-entities through moderate fee adjustments.

The revised fee structure, effective from 1 April 2024, offers micro-enterprises, natural persons, non-profit organizations, universities, and public research organizations a 30% reduction on all main fees in the patent granting process. To date, eligible micro-entities have saved more than €1 million through this scheme, benefiting over 1,900 applications and resulting in over 4,000 reduced fees. Over 70% of all requests come from users based in EPC Member States, with the top ten countries being Italy, Germany, UK, France, Switzerland, Spain, Finland, Poland, Sweden, and Austria. The overall percentage of beneficiaries among applicants remains at 2%.

Through targeted fee discounts, the EPO assists underrepresented key players in the innovation ecosystem in safeguarding their most valuable inventions at a lower cost, which have resulted from significant investments of time and effort over many years. These fee discounts are just one part of complementary measures aimed at improving the accessibility of the patent system. These measures include established language-related fee discounts as well as the Deep Tech Finder – a free digital tool designed to help investors identify and evaluate European startups that are bringing inventions to market in critical technology areas.

The fee reduction for micro-entities is applicable to new and pending applications, as long as the micro-entity has not filed five or more previous applications within the past five years. It can be combined with other fee reductions, especially language-related fee reductions.

The first scientific and practical conference organized by the Assembly of Eurasian Patent Attorneys (AEPA) and dedicated to the 30th anniversary of the Eurasian Patent Convention was successfully held on June 13-14.

IP professionals and R&D and industry representatives discussed important issues relating to the development of the Eurasian patent system including various aspects of introducing unified protection of a Eurasian trademark, patenting of utility models and technology licensing in the Eurasian space. The speakers has also considered case-law of the EAPC member countries.

Patentica’s patent attorneys actively participated in the conference.

Eduard Shablin, the President of the AEPA and partner at PATENTICA, presented his view on significance of the essential features in the claims of a utility model and its assessment when opposing utility model patents in administrative proceedings.

Ekaterina Petrova, Eurasian patent attorney, partner at PATENTICA, revealed difficulties which applicants face when applying for Eurasian patent term extensions in the field of pharmaceuticals.

Maxim Ikonnikov, patent attorney at PATENTICA, presented a comparative analysis of a national and Eurasian system requirements for protecting industrial designs.

We thank the AEPA and the Eurasian Patent Office for the opportunity to share our knowledge and experience in the field of intellectual property protection.

The European Patent Office (EPO) and National Institute of Industrial Property of Chile (INAPI) have signed a Memorandum of Understanding on the Patent Prosecution Highway (PPH) pilot programme on July 11, 2023. It came into effect on June 1, 2024, and will operate for a period of three years, concluding on May 31, 2027 with the potential for adjustments along the way based on mutual agreement.

In addition to the new program with Chile, the EPO PPH programmes currently established with the following countries:

the European Patent Office (EPO),

the Japan Patent Office (JPO),

the Korean Intellectual Property Office (KIPO),

the National Intellectual Property Administration of the People’s Republic of China (CNIPA) and the United States Patent and Trademark Office (USPTO), as well as with the national Patent Offices of Australia, Brazil, Canada, Colombia, Israel, Malaysia, Mexico, Peru, the Philippines, Singapore and Saudi Arabia.

On June 4, 2024, the Supreme Court of Russia ruled in favor of AstraZeneca (patentee) against KRKA (opponent) regarding the validity of AstraZeneca’s patent RU2746132 for “Forxiga” (INN: dapagliflozin), which is used to treat heart failure and chronic kidney disease in type 2 diabetic patients. This patent was extended by RUPTO based on “Forxiga’s” first marketing authorization, and remains valid until May 15, 2028.

This decision is obviously significant for AstraZeneca, which is currently involved in lawsuits against several generic manufacturers in Russia. Moreover, it holds substantial importance for the validity of approximately 600 other drug-related enforceable Russian patents granted on divisional applications.

By reversing the earlier IP Court decision, the Supreme Court thereby confirmed the legal correctness of RUPTO’s approach to acknowledging the priority dates of consecutive patent applications based on the first original parent application.

As a result, the divisional filing strategy at RUPTO remains as usual, maintaining a more convenient and innovator-friendly approach compared to potential alternative, which might have been appeared otherwise.

Representatives of Patentica, Denis Yachmenenko, Kseniya Golyatkina and Dmitriy Stakhiy, visited the Suzhou Intellectual Property International Service Center in China on May 28, 2024. Denis Yachmenenko, a lawyer and head of foreign filings, conducted a workshop titled “Intellectual Property Response to Exhibitions” for local Suzhou enterprises, organized by the Center.

During the workshop, Denis covered various topics such as the importance of IP protection before participating in exhibitions, preparation procedures, priority dates, application filing dates, exhibition priorities, exceptions to lack of novelty, and special aspects of applying exceptions to lack of novelty in countries like Russia, Eurasia, and CIS.

The Suzhou Intellectual Property International Service Center (SIPISC) was established as a pilot project to assist entrepreneurs and individual inventors in protecting their intellectual property overseas. Since its inception, the center has facilitated a number of exchange activities to foster collaboration between enterprises, citizens, and international IP service providers in Suzhou.

Violations of intellectual property rights and unauthorized use of means of individualization will face harsher penalties. This proposed bill was approved by the Supreme Council of the Kyrgyz Republic in its second reading.

Under the current Article 225 of the Criminal Code, the unlawful use of another’s trademark, service mark, appellation of origin or similar trademarks for similar goods, if done repeatedly or causing significant damage, can result in a fine of 50,000 to 100,000 soms (570-1140 US dollars) or imprisonment for up to 2 years.

With the proposed bill, the illegal use of another’s trademark, service mark, appellation of origin or similar trademarks for similar goods, if done repeatedly or causing significant damage, can lead to a fine of 100,000 to 1.5 million soms (1140-17000 US dollars) or imprisonment for 2 to 5 years.

This was announced on May 27, 2024 during a seminar focusing on the protection of intellectual property rights and combating counterfeit products within the member states of the Eurasian Economic Union.

The seminar was jointly organized by the Eurasian Economic Commission and Kyrgyzpatent, and brought together participants from the judiciary, law enforcement agencies, Customs Service, Antitrust Service, and Ministry of Economy and Commerce.

According to the seminar attendees, Kyrgyzpatent received 39 applications for intellectual property rights violations during 2022-2023. Based on these applications, 13 decisions were made resulting in fines totaling 117,500 soms (1340 US dollars).

The most recent collaborative report released by the European Investment Bank (EIB) and the European Patent Office (EPO) offers a comprehensive overview of Europe’s cleantech pioneers, showcasing their work and the necessary support to bring their innovations to the market.

As per the report, over 750,000 inventions focusing on clean and sustainable technologies were published between 1997 and 2021, constituting nearly 12% of all inventions during this timeframe. The period from 2016 to 2021 witnessed a 33% increase in clean tech inventions, with nearly 55,000 inventions documented in 2021 alone.

From 2017 to 2021, EPO member states contributed 27% of all high-value cleantech inventions globally, as indicated by the number of international patent families (IPFs), with Germany, France, and the UK leading the regional contributions. On a global scale, Japan, the United States, and China continue to be major players, with China experiencing rapid growth in its clean tech sector in recent years.

More than 70% of companies patenting clean and sustainable technologies in the EU have less than 5,000 employees. While one-third of these companies currently focus on the national market, two-thirds see the EU as their primary future market. To enhance business prospects, EU cleantech innovators point to consistent regulation within the European Union and expedited access to funding as their most sought-after forms of policy support.

Clean and sustainable technologies are aimed at enhancing energy efficiency, utilizing sustainable resources, reducing pollution and waste, and addressing the adverse impacts of climate change. Leading the way is low-carbon energy technology, followed by clean mobility solutions. Alternatives to plastics are not far behind, with significant patent filings. Clean manufacturing, as well as construction, Information and Communication Technologies (ICT), and climate change adaptation technologies, also exhibit notable patent activity, with various growth patterns in different sectors.

The US Patent and Trademark Office (USPTO) recently suggested a new regulation for submitting terminal disclaimers to overcome obviousness-type double patenting rejections, that could significantly impact patent practice.

Under this new rule, a terminal disclaimer would contain an agreement that the patent in which the disclaimer is submitted would not be enforceable if a claim in another patent tied to the subject patent through the terminal disclaimer is found to be unpatentable or invalid. In essence, patents tied through a terminal disclaimer would be treated together, meaning that if one patent is deemed invalid or unenforceable, the others connected to it via a terminal disclaimer would also be invalid/unenforceable.

In the current practice of terminal disclaimers, a patent owner may file multiple applications with the same effective filing date, where the sets of claims in each application are distinct variations of the same invention that can avoid a statutory double patenting rejection. However, the USPTO may still determine that the differences in the claims between patents are obvious under the obviousness-type double patenting doctrine.

An obviousness-type double patenting rejection can occur if the claims in different patents or patent applications share the same inventive entity, at least one inventor in common, or a common applicant, owner, or assignee. When faced with an obviousness-type double patenting rejection, applicants have the option to challenge the rejection, amend the claims, or submit a terminal disclaimer, which is a common approach.

The USPTO has outlined several reasons for the proposed modifications. The main concern is that an owner of multiple patents covering obvious variations of an invention could hinder competition, as the expense of disputing the validity of each patent individually could be prohibitive. By tying the disclaimed patents, a competitor could potentially invalidate multiple patents by proving the anticipation or obviousness of one claim, leading to significant reductions in litigation costs. The USPTO also believes that the changes will encourage innovation by making it more difficult to maintain patents on minor variations. If applicants are aware that their continuation patents may be more vulnerable, they may be more discerning in their pursuits.

Partners of Patentica Maria Nilova and Elena Dmitrenko participated in the LESI 2024 Annual Conference in Madrid, held from April 28 to 30, 2024.

The theme of the conference was “Log in to the future”. The conference focused on cutting-edge and rapidly evolving trends, such as data-driven economies, the tokenization of business models, the new internet architecture (web 3), the fast-paced advancement of artificial intelligence, and the rise of decentralized management models. The goal of the conference is to embrace this new reality and comprehend how these shifts affect technology transfer and licensing professionals in order to better support innovators and investors in achieving best outcomes.

LESI (Licensing Executives Society International) is a global business association consisting of 33 national and regional societies. It represents over 6,500 individual members from more than 90 countries, all engaged in the licensing, transfer, and management of intellectual property rights. The individual members include management representatives from companies of various sizes, scientists, engineers, academics, government officials, lawyers, patent and trademark attorneys, and consultants.

The latest enhancements made to the EPO’s popular Deep Tech Finder are enhancing its utility for investors seeking investment-ready deep tech startups and vice versa.

Introduced last October, this complimentary online tool combines business profiles and funding histories for a multitude of European startups with their collections of European patent applications and/or granted patents. As of now, the Deep Tech Finder boasts profiles from over 8,000 startups, organized into more than thirty distinct industry sectors and over fifty diverse technology fields, encompassing smart industries, green technologies, oncology, and now even quantum computing.

In response to favorable user responses, the recent additions to the tool this week provide users with improved access to essential funding and patent details on European deep tech startups:

Search results using specific industry and technology filters may be showcased either in list form or plotted on a map by location.
The patent portfolios for chosen startups clearly indicate the status of each patent application (pending, granted, withdrawn, or refused) as well as whether a Unitary Patent has been granted.
Results can easily be exported with a single download (CSV file).
The Deep Tech Finder seamlessly merges business insights with the EPO’s extensive patent data, covering the legal status of every application managed by the EPO. Future updates to the tool will introduce additional categories of patent holders beyond deep tech startups and a broader range of technology fields.

Deep Tech Finder offers an up-to-date platform for identifying and evaluating startups and emerging enterprises introducing groundbreaking innovations across diverse technological domains.

In addition to its role in technological intelligence, this tool proves immensely beneficial for potential investors (both public and private), startup representatives, and professionals at large seeking to stay abreast of the latest technological advancements in the market. It underscores the current importance of industrial and intellectual property rights for burgeoning technology firms.

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.