Brexit – A special package offer from Valet Patent Services for UK and EU trademarks and designs

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EU (European Union) trademarks and design will soon not be applicable to the UK (United Kingdom).  This is because the UK is leaving the EU on 31 December 2020, assuming there is no extension to current transition period.

 

As from 1 January 2021, if applicants wish to protect designs and trademarks in both the EU and the UK, separate applications must be submitted before the UK patent and trademark office and before the EU patent and trademark office.  Valet Patent Services, LLP is well placed to assist clients in applying for trademarks and designs because we have offices in the UK (in greater London) and in the EU (Munich area) and because we have qualified UK, German and EU design and trademark attorneys.  In order to assist applicants with this new burden, we are offering a package price when applications are filed for both UK and EU design application and when applications are filed for both UK and EU trademark applications.

 

Specifically, our combined fees are as follow:

 

 

UK and EU Trademark application:  
Combined flat service fee for UK and EU application (for 1 class) 450.00 €
EU – Official fee for 1 class 850.00 €
UK – Official fee for 1 class 170.00 GBP  (~190.00 €)
TOTAL 1490.00 €

 

 

UK and EU Design application:  
Combined flat service fee for UK and EU application (for 1 Design) 350.00 €
EU – Official fee for 1 design 350.00 €
UK – Official fee for 1 Design 50.00 GBP (~56.00 €)
TOTAL 756.00 €

 

On 1 January 2021, all EU designs and trademarks that have already been registered will automatically be converted to UK designs and trademarks.  No Action is needed by the applicant to convert the EU trademarks and registered design to UK trademarks and registered designs.

 

Any pending (not yet registered) designs and trademarks do not automatically convert to UK designs and trademarks.  Instead, the applicant must apply for extension to the UK by 30 September 2021.  In order to avoid the potential procedural difficulties in applying for the conversion of pending cases, we suggest to already begin filing in both the UK and in the EU when filing design and trademark applications.

 

For further questions, please do not hesitate to contact us here.

 

 

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A smidgen of a sliver of hope for business method patents at the European Patent Office.

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Hold your horses! There has been a positive Decision on business method related patent applications from the EPO’s Boards of Appeal: https://www.epo.org/law-practice/case-law-appeals/recent/t141749eu1.html

The Decision is an Appeal from the EPO’s examining division 1958, which is notorious for considering that, more or less, all patent applications before them can be considered akin to notorious prior art (plus business method specifications). I do not know the refusal rate of this examining division, but I would guess over 80%. Perhaps Tony Afram with the amazing technology at ipQuants AG could provide some insight on the refusal rates of this examining division or in the IPC technical field G06Q20/00.

I have copied a bunch of the reasoning below because it seems to be more generally applicable than the facts of the case. I am excited by the reasoning because maybe it could bleed into other difficult technical fields at the European Patent Office like recommendation engines. Just because there is a business or administrative scheme in the background, the implementation of an idea(the “how to” of an invention) is often technically complex. I like the idea in the Decision of genuinely trying to divide out which parts of a invention would have been at the behest of the business side (or the administrative side or whichever non-technical discipline) and which parts require technical knowledge that has not been led by the men/women in grey suits.

Usually, examining divisions, especially in the business subject matter area, take an “in for a penny, in for a pound” approach to assessing non-technicality. Under this approach, any sniff of non-technical (e.g. business) subject matter results in the whole claim going in the non technical bucket – minus the words computer or processor or network (or some other nonce computer term) – which are, of course, notoriously well known. In this new Decision, a more nuanced approach is suggested that really tries to consider the limits of the capabilities of the notional businessperson.

Similarly liberal Decisions from the Boards of Appeal have come out before, which were along these lines. In T/0136/13, the Board writes:

3.4    According to the Comvik approach (T 641/00 – Two identities/COMVIK), non-technical features cannot contribute to inventive step. Instead, the non-technical features may legitimately appear in the formulation of the problem as part of the framework of the technical problem to be solved. Very often, the problem takes the form of a requirement specification that the skilled person has to implement. The first step in formulating the technical problem is, thus, to define the non-technical features of the invention.

 3.5 In doing that, it may be helpful to consider the notional business person defined in T 1463/11 (Universal merchant platform /Cardinalcommerce). Anything that can be formulated by the business person is non-technical and part of the requirement specification”.

Also in T 0817/16:

3.12 …A useful test for determining whether such technical considerations are present is to ask whether the non-technical features would have been formulated by a technical person rather than by a non-technical person or persons (see e.g. Decisions T 1214/09 of 18 July 2014, reasons 4.8.8; T 1321/11 of 4 August 2016, reasons 5.3.5; T 1463/11 of 29 November 2016, reasons 20 and 21; and T 136/13 of 11 September 2018, reasons 3.6). This is not an enquiry into the actual state of technical or non-technical knowledge at the effective filing date; the question is rather whether the knowledge required for coming up with the non-technical features in the particular case is of a kind that only a technical person, i.e. a person not working exclusively in areas falling under Article 52(2) EPC, could possess”.

I have tried these arguments on many occasions and have mostly received a refusal Decision slapped around my chops in reply. It would be great if the Boards of Appeal could consolidate, and push down to examining divisions, case law that takes a more real-life view on where the invention is coming from – the admin people or the research people. Taking an example from personal experience and in the field of search engines: if the invention is conceived by inventors holding PHDs in artificial intelligence, are you sure that this should be dismissed as having no technical merit? Worse still, should the EPO be telling these inventors that they have spent their careers playing with mere administrative schemes?

For those patent attorneys in fields walking the line between the technical and the non-technical, I hope you can use some of the nuggets from this Decision that are copied below:

The examining division argued that no technical problem was solved by the differences over D1, which were only cognitive business aspects providing no technical contribution. The problem to be solved was therefore merely to implement the idea of defining the entry point of the transaction as the property of the customer which was an obvious automation not modifying the standard and expected intrinsic behaviour of the technical features of D1 (see page 3, last paragraph of the decision).

The notional business person, as introduced in T 1463/11 (Universal merchant platform / CardinalCommerce), knows all about the business related requirements specification and knows about the fact that such business related concepts can be implemented on a computer system (stand-alone or networked, including the Internet). What the notional business person does not know, however, is how exactly it can be implemented on a computer system. This is in the sphere of the technical expert and subject to the assessment of inventive step (see T 1082/13).

In the Board’s view, in the present case the notional business person might come up with the abstract idea of avoiding the customer having to provide PIN and account information to the merchant. Even when considering this to be an abstract business concept for carrying out POS transactions, it cannot however be convincingly argued that it would be sufficient to implement this idea on a standard general purpose mobile POS terminal infrastructure as known from D1 with standard programming skills. It requires a new infrastructure, new devices and a new protocol involving technical considerations linked to modified devices and their capabilities as well as security relevant modifications of the transfer of sensitive information using new possibilities achieved by the modifications to the mobile POS infrastructure.

This goes beyond what the notional business person knows, but rather concerns technical implementation details (how to implement) which are more than a straight-forward 1:1 programming of an abstract business idea. Just as T 1463/11 (supra) considered the security relevance of centralising authentication services in view of avoiding maintenance of software plug-ins in merchant computers contributed to the technical character, the Board considers the security relevance of the modifications according to point 4 above contribute to the technical character of the present invention“.

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European patent validation – Why is quality of translation so important?

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At Valet Patent Services, we believe that the quality of the patent translation filed at the national offices during European patent validation is of paramount importance.  Our team is made of a blend of experienced patent paralegals and patent attorneys.  As such, we recognize that low quality translations can significantly impair the rights of patent holders in each jurisdiction.  This is why we only use patent professionals who are native speakers for our translations.  Our translators are usually patent attorneys before the local patent office relevant to the patent validation.  In this way, we can guarantee the technical and linguistic quality of our patent translations that are filed during validation.

 

Under Article 69 of the European Patent Convention, the authentic text of a European patent is the translated version in the official language of the validation country when the translation is narrower in scope than the original language version and unless that country has given notice otherwise.  In some countries, if the translation does not correspond to the text in the original language of the European patent, the protection conferred only extends to the subject matter disclosed in both texts.

 

We have translation quality as a central pillar of the validation services that we provide.  Unlike some of our competitors, we will not work with generalist translators who are not technically familiar with the subject matter of the European patent, who are not familiar with the unique language of patents and who are not native speakers.  You have worked too hard to get your European patent granted only for that work to be undone by an unreliable translation provider compromising the scope of protection of your European patent.

 

Get a quote for our high-quality, low-cost European patent validation service here.

 

 

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Update on Corona situation – European Patent Office (EPO) and European Intellectual Property Office (EUIPO) – Extension of deadlines

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In view of the current situation of the Corona outbreak, we are mindful of the current developments and the world-wide impact. We are closely monitoring the situation and all official announcements.

Valet Patent Services keeps fully operational as our system operates online and all Valet Patent Services team members are able to work from home. We continue to be fully available for all our clients’ needs.

In light of the current situation with the COVID-19 Virus, we would like to inform you of the update announced by the European Patent Office (EPO) and European Intellectual Property Office (EUIPO)

 

European Patent Office (EPO) – extension of time limits

The EPO informs that all due dates are extended to 17 April 2020 (and may be further extended depending on further Notice from the EPO).

This means that all deadlines for filing responses to search reports and examination reports, etc. are extended to 17 April 2020. Also EPO regional phase entries  that are due can be filed by 17 April 2020.

 

European Intellectual Property Office (EUIPO) – extension of time limits

The EUIPO has announced the Decision to extend all time limits to 1 May 2020. In practice, this means that time limits are extended until Monday 4 May, given that Friday 1 May is a public holiday.

 

Information on Oral Proceedings before the European Patent Office

Oral proceedings before the Boards of Appeal will not be held in the premises of the Boards of Appeal from 16 March 2020 until 27 March 2020.

Oral proceedings before Examining and Opposition Divisions will in principle take place as scheduled.

Oral proceedings involving parties or representatives who have recently visited high risk areas will be held by videoconference or postponed, upon request.

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Amazon Brand Registry

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Amazon Brand Registry provides a way to protect your intellectual property and create an accurate and trusted experience for customers on Amazon.  To enroll for Amazon brand registry in Europe, you should have a registered trademark under which you are selling your products.

 

Obtaining trademark protection in Europe is relatively straightforward and can be quite low cost.  The UK, German and EU trademark offices will grant your trademark application in just a few months, assuming there is no opposition to registration.

 

We can help you with your trademark applications in Europe by offering a one stop service provider for fixed fee German, French, UK and EU trademarks.  As part of our low fixed fee, we will also conduct a search of your trademark to assess viability of your application and to reduce the chances of oppositions, which will significantly delay your Amazon brand registry process.

 

To be eligible for Amazon Brand Registry, your brand must have an active registered trade mark in each country where you wish to enroll.  If you sell in the five key Amazon markets in Europe (Italy, Spain, France, UK and Germany), the most cost effective route is to apply for an EU trademark and a UK trademark.  Assuming 1 class the official fees are 170 GBP for the UK and 850 EUR for the EU trademark.

 

The trade mark owner must enroll the brand (corresponding to the registered trademark).  To enroll a brand, you will need to provide the following information:

Your brand name that has an active registered trade mark.

The associated government-registered trade mark number.

A list of product categories (e.g., apparel, sporting goods, electronics) in which your brand should be listed.

A list of countries where your brand’s products are manufactured and distributed.

 

After you’ve submitted this information, Amazon will attempt to get in touch with the contact associated with the registered trade mark that you provided in your application.  Assuming you have filed your European trademark with Valet Patent Services, LLP, we will immediately forward to you the verification code sent by Amazon.  You are then required send this verification code back to Amazon to complete the enrolment process.

 

Amazon brand registry offers a number of potential advantages for your Amazon store.  Valet Patent Services, LLP is here to help you to quickly and inexpensively obtain trademark protection for you in Europe and to support you in the verification process during enrollment.

 

Please do not hesitate to contact us if you require any information on applying for trademarks, any IP related issues on Amazon (e.g. take-downs or appeals) or if you would like support during the Amazon brand registry process.

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IP and Brexit

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The UK’s 47-year membership of the European project (spanning the EEC and the EU) formally comes to an end as of 23.00 GMT today (31st January 2020).

 

What does Brexit mean for Patents?

 

The UK’s exit from the EU will have no effect on the UK’s participation in the current European patent system, as the European Patent Office (EPO) is established under the European Patent Convention (which is an international treaty that is independent of the EU).  The EPO has issued a formal notice to this effect. It is therefore “business as normal” for patents. The rights of British EP patent attorneys to act before the EPO are unaffected.

 

That said, Brexit may prevent implementation of the proposed Unitary Patent System that was expected to come into force in the near future (barring various outstanding legal challenges).  If the unitary patent system were ever to be implemented, it is presently unclear whether the UK would be able to participate in that system.

 

What does Brexit mean for Trademarks and Registered Designs?

 

There will be a transition period beginning 1st February 2020 and ending on 31st December 2020, during which time the UK will continue to abide by EU law.  As such, the UK will remain part of the EU trade mark (EUTM) system and EU registered community design (RCD) system throughout the transition period. EU trademarks and Registered Community Designs (RCDs) will continue to extend to the UK during this time.

 

Businesses, organisations or individuals that have applications for an EUTM or RCD that are pending at the end of the transition period will have a period of nine months from the end of the transition period to apply in the UK for the same protections. We will keep everyone regularly informed as this period draws to a close.

 

Upon expiry of the transition period, comparable UK rights for RCDs and EUTMs (that are already in force at that time) will be automatically created by the UK Intellectual Property Office.

 

The above arrangements set out the default positions that would be adopted by the UKIPO at the expiry of the transition period.  Of course, it is possible that alternative arrangements may be agreed between the UK and the EU during the transition period. If alternative arrangements are agreed, we will keep everyone updated.

 

Irrespective of what happens in the EU/UK negotiations, Brexit will not result in the loss of any existing trademark and design rights.

 

And what about Unregistered Designs?

 

The UK will remain part of the EU unregistered community design system throughout the transition period. This means that two- and three-dimensional designs (including, for example, clothing designs and patterns) disclosed in the UK or an EU Member State can be automatically protected in both territories as unregistered Community Designs. This right provides three years of protection from copying.

 

Unregistered community designs arising before the end of the transition period will continue to be protected in the UK for the remainder of their three-year term.

 

Designs disclosed in the UK after the end of the transition period may be protected in the UK via a supplementary unregistered design, which will protect two- and three-dimensional designs for three years.

 

Again, this would be the default position in the UK at the expiry of the transition period.

 

How can Valet Patent Services help?

 

As detailed above, there will be no change to patent practice caused by Brexit. There will also be no changes to any trademark or design practice until around the end of 2020.  What happens thereafter is largely dependent upon the EU/UK negotiations.

 

Valet Patent Services has offices and attorneys in both the UK and EU.  As such, we are well placed to be able to continue providing our clients with the same level of IP protection in Europe as we do now.

 

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European Patent Validation – Now in Morocco

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For the first time in EPO (European Patent Organization) history, a non-European state will begin validating European patents. Morocco has entered into an agreement with the European Patent Organization that went into effect on March 1st, 2015 that will make it possible to validate European patents in Morocco that will be subject to Moroccan patent law.

Under this new agreement, European patents and applications (once validated for Morocco) will offer the same IP protection in Morocco as patents filed via the PCT or Paris Convention route. This includes PCT applications containing a designation for a European patent. However, validation in Morocco it will not be available for PCT applications filed prior to March 1st, nor for any European patents resulting from such applications.

The agreement was announced by Benoît Battistelli, the President of the European Patent Office (EPO), along with Moulay Hafid Elalamy, the Moroccan Minister of Industry, Trade, Investment and the Digital Economy, back in January of this year.

EPO President Battistelli was quoted as saying, “This is a historic step for the European patent system, and it brings to 41 the number of countries for which patent protection can be obtained simultaneously with a single European patent application… Morocco’s strategic vision with regard to building up a national patent system that is firmly anchored in the international system”.

In terms of patent translation, in the past a French or Arabic translation was required of the specification, claims and abstract—but not anymore. The only translation that will need to be submitted to the OMPIC is a French or Arabic translation of the granted claims. Since a French translation of the claims must already be filed as part of the EPO grant procedure, no further translations will be required for Morocco.

Morocco joining the European patent system is an exciting development, and other non-European countries are expected to follow in its path. Both Moldova and Tunisia have signed agreements with the EPO and are expected to begin validating European patents in mid to late 2015.

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Cambodia – fourth validation state for EP applications

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From 1 March 2018, Cambodia will join Morocco, the Republic of Moldova, and Tunisia as an available validation state for European patent applications.

Validation in Cambodia will be possible for all European applications filed after that date.

What is a validation state?

A validation state is a non-contracting state to the European Patent Convention (EPC) that has entered into a validation agreement with the European Patent Office (EPO). The first validation agreement (with Moldova) took effect in 2015.

A validation agreement enables the validation of European patent applications in a validation state. After validation, the resulting patent will confer in the validation state essentially the same protection as patents granted by the EPO in contracting states to the EPC. As is evident, validation agreements are not limited to European countries.

How can I choose to validate a European patent application in a validation state?

The EPO validation system is largely the same as the designation system for contracting states to the EPC, although separate validation fees are payable if an applicant wishes to pursue the option of validation in any of the validation states. The period for payment of the validation fee is the same as the period for payment of the designation fee for contracting states to the EPC. Following grant, the relevant national validation requirements will need to be met.

Limitations: pharmaceutical products

As the validation system is based on the relevant national law modeled on the EPC, rather than on direct application of the EPC, it is subject to the national validation rules of the country concerned.

It is important to note that, under the Law on Patents in force in Cambodia, pharmaceutical products are excluded from patent protection. Cambodia benefits from the World Trade Organisation waiver allowing Least Developed Countries (LDCs) to avoid granting and enforcing IP rights on pharmaceutical products until 2033. This waiver would also apply to European patents providing protection for pharmaceutical products, for which validation is sought in Cambodia.

Applicants can, however, benefit under Article 70.8 TRIPS from what is known as a ‘mailbox system’. Under the ‘mailbox system’, Cambodian legislation authorizes the filing of patent applications for pharmaceutical products, despite the fact that they are excluded from patent protection. These national applications will not be examined as to their patentability until the end of the transitional period. Following that period, protection may be granted for the remainder of the patent term, calculated from the filing date of the application.

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London Agreement

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The Agreement on the application of Article 65 EPC – the London Agreement – is an optional agreement aiming at reducing the costs relating to the translation of European patents. It is the fruit of the longstanding efforts to provide for a cost attractive post-grant translation regime, which began in the 1990s in the framework of the European Patent Organisation and gained momentum at the Intergovernmental Conference held in Paris on 24 and 25 June 1999 (see OJ EPO 1999, 545). It was concluded at the Intergovernmental Conference held in the London on 17 October 2000 (see OJ EPO 2001, 549).

The EPC contracting states which have ratified or acceded to the Agreement undertake to waive, entirely or largely, the requirement for translations of European patents. Under Article 1(1), (2) and (3) of the London Agreement,

  • a state which has an official language in common with one of the official languages of the EPO shall dispense entirely with the translation requirements provided for in Article 65(1) EPC;
  • a state which does not have an official language in common with one of the official languages of the EPO shall dispense with the translation requirements provided for in Article 65(1) EPC if the European patent has been granted in the official language of the EPO prescribed by that State, or translated into that language and supplied under the conditions provided for in Article 65(1) EPC. These states may however require that a translation of the claims into one of their official languages be supplied.

Download Agreement dated 17 October 2000 on the application of Article 65 EPC.

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