The Unified Patent Court, under the umbrella of the European Union, will be able to deal in a unified manner with lawsuits relating to the rights granted by European patents. It will have jurisdiction over claims for infringement of European patents and claims for invalidity of European patents.

The Unified Patent Court is made up of Industrial Property experts, which gives the parties involved in litigation greater legal certainty.

The Unified Patent Court will make it easier and cheaper to enforce European patent rights, since infringement suits will be heard in a single court but will be effective in all countries under its jurisdiction.

However, on the other hand, the validity of a European patent may be challenged in an equally unified invalidity proceeding valid for all the above-mentioned countries.

Transitional measures

A transitional period is established until the Unified Patent Court becomes fully operational, starting on March 1, 2023 and extending, in principle, until June 2030, which may be extended for an additional 7 years, until June 2037.

During this transitional period, applicants / holders of European patents may request exclusion from the jurisdiction of the Unified Patent Court (Opt-Out).

This opt-out must be expressly requested by the applicant/patent holder and will be valid until the end of the legal life of the patent in question.

The opt-out request is subject to the following limitations:

• The request must be made by the applicant(s) or the holder(s) of the European application / patent. It may not be requested by applicants/owners not registered in the patent register or by licensees.
• Opt-out may not be requested for a unitary patent; therefore, if in a European patent application, an opt-out has been requested and subsequently, when granted, it is validated as a unitary patent, the opt-out will be annulled and will return to the jurisdiction of the Unified Patent Court.
• It may not be requested for a patent where proceedings (infringement or invalidity) have already been initiated before the Unified Patent Court.
• The opt-out may be revoked at the request of the applicant or holder at any time. After such revocation, the European patent will revert to the jurisdiction of the Unified Patent Court and it will not be possible to request a new opt-out.

In the period from March 1, 2023 to June 1, 2023 (when the Unified Patent Court starts its operation) it will be possible to request opt-out out of a European patent application or patent for any registration, since the unitary patent has not yet entered into force, nor can there be any proceedings pending in the Unified Patent Court.

If you subsequently wish to withdraw the opt-out, it will be possible to do so at the request of the applicant or holder, unless invalidity or infringement proceedings have been initiated in the national courts.

If you would like more information on the convenience of requesting the opt-out for your European patent applications or European patents, please do not hesitate to contact us for advice.

La entrada The Unified Patent Court becomes operational on June 1, 2023. se publicó primero en San Martín.

The Eurasian Patent Organization is an international organization created in 1995 that manages through the Eurasian Patent Office (EAPO) the protection of inventions and industrial designs for several of the Contracting States of the Eurasian Economic Union (EAEU) through the Eurasian patent. We talked about its origins in previous entries of the blog.

Patentes euroasiáticas

It is a regional patent for the protection of inventions that allows unifying the application, examination and granting process of a patent for all the member States of the Eurasian Patent Organization. At the moment it is made up of 8 states, after the departure of Moldova in 2011.

The current member states are: Armenia, Azerbaijan, Belarus,Kazakhstan, Kyrgyzstan, Tajikistan, Turkmenistan and Russia.

Eurasian designs

From June 1st, 2021 the Eurasian Patent Office has started processing industrial design applications. In this way, it is possible to obtain protection for a design simultaneously for several of the Member States.

At this time these countries are: Azerbaijan, Armenia, Kazakstan, Kyrgyzstan, Russia, Tajikistan. In the coming months the entry into force of the agreement with Belarus to join this design granting system is expected.

Eurasian trademarks: a system about to come into force

The Eurasian Economic Union (EAEU) Trademark Treaty introduces a new regional system for the protection of trademarks and appellations of origin. It was signed in February 2020 by five member states: Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia. Through the Treaty, a unified system for filing and registering trademarks and appellations of origin within the member states is created.

Despite entering into force on April 26th, 2021, it is not yet available to applicants and is expected to start operating around July 2022.

La entrada EURASIA: Protecting Industrial Property beyond Russia se publicó primero en San Martín.

With this milestone, a transition period begins before the entry into force of the agreement establishing the Unified Patent Court and the Unitary Patent. Entry into force is expected to take place in late 2022, early 2023.

The countries covered by this Agreement in respect to the Unified Patent Court all those of the European Union with the exception of Spain, Croatia and Poland.

However, as far as the Unitary Patent is concerned, all the countries of the European Union, except Spain and Croatia:

Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia and Sweden

Unified Patent Court

This Court, under the umbrella of the European Union, will be able to process lawsuits related to the rights granted by patents in a unified manner. It will have competence in lawsuits for patent infringement and nullity proceedings of the same.

The Unified Patent Court will be made up of experts in Industrial Property, which will give the parties involved in patent litigation greater legal certainty.

Thanks to this Court, it will be easier and cheaper to enforce patent rights in Europe.

The Unitary Patent

Current situation: The European Patent application

Today, the European Patent Convention (EPC) allows unifying the process of application, search, examination and granting of a patent for 38 countries in the European geographical area and thanks to agreements with third countries, even beyond.

However, once the European Patent has been granted, it must be “validated” in each of the States where definitive protection is desired. This creates a “bundle of national patents” originating from a single European patent. The patents thus originated are subject from that moment to the national legislation of each country.

The validation process is usually expensive, since many Industrial Property Offices request a translation of the granted patent into their official language. In addition, the maintenance of national patents has a high cost, as each one of the Industrial Property Offices requests the payment of their maintenance fees.

The imminent Unitary Patent

The unitary patent comes to offer an alternative tool to the validation process of current European patent applications.

The unitary patent will allow the holder of a granted European patent to maintain protection in a unified way for the 25 countries mentioned above through a single patent.

It is up to the holder to decide whether to apply for unified protection through the unitary patent or to validate his European patent individually in each of the countries of his choice.

The request for unified protection through a Unitary Patent will have the two main advantages:

Cost reduction

• It will not be subject to the payment of official fees.
• It will not be necessary to provide translations of the text granted by the European Patent Office.
• A single maintenance fee will be paid for all States.

Simplified management

• All procedures, from the request to the maintenance, will be managed centrally by the European Patent Office.

For the rest of the 38 Member States of the European Patent Convention (plus the validation and extension States) the process to obtain definitive protection once the European patent is granted remains as it is to date.

Preparations for the unitary patent

With a view to the entry into force of the unitary patent, and in order for applicants for European patents that are currently pending to benefit from its advantages, two transitory measures have been established.

These measures will enter into force once Germany ratifies the Agreement on the Unified Patent Court. Their application will end with the entry into force of the Agreement. It is expected to enter into force in 4 months from its ratification by Germany. Applicants of European patents for which a definitive text has already been proposed for granting in accordance with Regal 71.3 of the European Patent Convention will be elegible for these measures.

Early request for the Unitary Patent

It will be available for applications where, once the grant proposal has been issued, it is expected that the publication of the grant will take place after the entry into force of the Agreement.

The applicant may submit the petition to obtain a unitary patent before the publication of the mention of grant of the European patent. In this way, it will be possible to obtain the unitary patent as soon as the Agreement enters into force.

Once these transitory measures are ended, the request for the unitary patent must be made within a period of 1 month from the publication of the mention of the grant.

Delay in the grant of the European patent

It will be available for applications where, once the grant proposal was issued, the procedures to approve the proposed text have not yet been completed. It must be submitted in cases where it is expected that the publication of the grant may take place before the entry into force of the Agreement and the applicant wants to be able to opt for the unitary patent.

The applicant may request the publication of the mention of grant to be delayed, so that it takes place once the Agreement enters into force. In this way, it will have the possibility to opt for the unitary patent protection of the European patent.

Once the Agreement is in force, all applicants for European patents that are granted will have the option of applying for the corresponding unitary patents.

For more information on any of these issues, do not hesitate to contact us.

La entrada The Unified Patent Court and the Unitary Patent se publicó primero en San Martín.

The “Ideas Powered for Business” SME Fund Grant Programwill be open until December 16, 2022.

SMEs in the European Union will be able to access these funds for the protection of their Industrial Property assets: Trademarks, Designs and Patents.

The aid must be requested before submitting the protection application and wait for it to be approved to incur the expense. That is to say, first the grant is requested for the modality that it is wished and the apllicant should wait its grant (about 15 days). Once granted, there is a period of 4 months to submit the applications, pay the official fees and send proof of expenditure to EUIPO. From EUIPO they will manage the corresponding refund within approximately one month.

The maximum grant amount for Trademarks and Designs is 1,500 euro.

For trademarks and designs in the European Union, there is a refund of 75% of the official fees.

For trademarks and designs in Spain and in the rest of the countries of the European Union, the amount of the refund would also be75%of the fees, but the amount of the fees is lower.

For trademarks and designs outside the European Union that are protected through International Trademarks(Madrid Agreement) and International Designs (Hague Agreement), the refund of official fees will reach 50% of their amount.

The maximum grant amount for Patents is 750 euro.

You can opt for a 50% refund of the amount of the official filing, search, examination, grant and publication fees in the proceedings of national patent applications.

From San Martin Industrial Property Consulting we can manage the application for these Funds for the protection of your Industrial Property assets.

If you are interested in accessing these funds, do not hesitate to contact us.

La entrada Grants for SMEs in Industrial Property Protection. se publicó primero en San Martín.

Jamaica’s entry in these treaties will allow its nationals and residents to access international protection systems to protect their Industrial Property assets in third countries. It also will allow foreign applicants to obtain protection in Jamaica for their trademarks, designs and inventions through these international agreements which simplify and unify the application and registration process.

Trademarks

Regarding the protection of trademarks, Jamaica has signed the Madrid Protocol, thus becoming country number 126 part of this system of protection of International Trademarks. Protection of this territory may be requested as of March 27, 2022, both in new trademark applications filed after that date, and in trademarks already registered through the subsequent designation system.

Designs

With regard to design protection, Jamaica has signed the Hague Agreementon International Design Protection. This way, the new international designs that are filed after February 10, 2022 will be able to request protection in Jamaica in addition to the countries that already signed this agreement, thus a total of 93 member countries. The term of protection for these international designs designating Jamaica will be 15 years from the date of filing.

Inventions

And finally, Jamaica becomes the 154th Stateto sign the Patent Cooperation Treaty – PCT, one of the main international agreements for the protection of inventions. All new PCT international applications filed afterFebruary 10, 2022will also designate this country and will grant their applicants the possibility of obtaining protection for their inventions in this territory.

If you are interested in protecting your Industrial Property assets in Jamaica, do not hesitate to contact us to assess the means of protection that best suits your needs.

La entrada Jamaica joins the main international treaties on Industrial Property se publicó primero en San Martín.

With the objective of safeguarding the Industrial Property rights of both companies and individuals, the different Industrial Property Offices are taking measures that are mainly based on the interruption of the mandatory periods for applicants and rights holders. In this way we want to avoid the loss of rights that could derive from the breach of any legal term.

Below we indicate the measures adopted by the Offices in our environment. We must not forget that all of them continue to work and are open to receive documentation, payment and new requests. Therefore, and given the importance that Industrial Property assets have in the business environment, we recommend that the necessary steps continue to be taken within the terms originally established as far as possible.

Spanish Patent and Trademark Office (OEPM)

All the periods related to the administrative procedures managed by the Office in the field of Industrial Property are suspended and interrupted, so this measure affects, among others and not exhaustively, the files of trademarks, Commercial names, Industrial Designs, Patents , Utility models, European patent validations …

This interruption will take effect at least until March 28, 2020, as indicated in Royal Decree 463/2020, of March 14, but it may be expanded as well as the state of alarm itself declared in said decree.

Update

The interruption of the periods is resumed on June 1, 2020. 

European Union Industrial Property Office (EUIPO)

All the periods that ended between March 9, 2020 and April 30, 2020, which affect both Community Models and Drawings and Trademarks of the European Union, extend until May 1, 2020. In practice, this means that the deadlines are extended until Monday, May 4,since Friday, May 1 is a public holiday.

Update

The interruption of the periods is resumed on May 18, 2020.

European Patent Office (EPO)

The periods that expire from March 15 extend until April 17, 2020. This also applies to international PCT applications. The prior period may be further extended by posting another additional notice.

On the other hand, in the case of residents in high risk areas, any document received late will be considered received on time if the interested party offers evidence that in the ten days prior to the expiration date, it was not possible to meet the deadline due to this exceptional fact and that the document was sent or transmitted no later than the fifth day after the end of the interruption.

Update

The interruption of the periods is resumed on June 2, 2020. 

We will continue to report any news in this regard.

If you have any questions about how this situation affects your Industrial Property rights,contact us.

La entrada Measures taken on Industrial Property due to the coronavirus se publicó primero en San Martín.

Specifically, European patent applications of Spanish origin grew by 6%,following the trend of the last 5 years, reaching a not inconsiderable number of 1,887 applications.

With this record of European patent applications, Spain is ranked 15th of the countries with the most European patent applications.

In the light of these data, we can only congratulate the Spanish researchers, the source of all this innovation. Without forgetting the Spanish companies, increasingly present in the European market.

Congratulations!.

If you also want to protect the innovation you develop, contact us.We will be happy to advise you.

La entrada Record of European patent applications of Spanish origin. se publicó primero en San Martín.

Although the exit is effective on February 1, 2020, as regard to Industrial Property rights, the key date will be December 31, 2020, the date on which the so-called “transition period” will end. Until then, European Union legislation regarding the protection of Industrial Property will remain in force for the United Kingdom.

In this article we are going to shed some light in regards to Industrial Property rights.

Patents

The scenario regarding the protection of inventions remains intact. The United Kingdom maintains its system for the protection of inventions through national patents and continues to be part of the rest of the international agreements signed to date in this field, among which are: The PCT (Patent Cooperation Treaty) and the European Patent Convention( EPC).

It never hurts to remember that the European Patent Convention is an international agreement not subject to the legislation of the European Union. This agreement far exceeds the territorial scope of the European Union. It is currently signed by 38 countries and its protection can be extended through validation agreements to countries such as Morocco or Cambodia. So, despite its name, the European Patent is not a figure subject to the regulations of the European Union.

In conclusion, in what it refers to patent rights, everything remains the same.

Trademarks

Trademarks with effect in the United Kingdom can be divided into two types:

A. Trademarks in the United Kingdom and International trademarks designating the United Kingdom.

These rights are not going to be affected at all.

B. Trademarks of the European Union and International Trademarks that designate the European Union.

These trademarks are the ones that will suffer the effect of Brexit, which will affect them differently depending on whether by the key date of December 31, 2020 these registrations are granted or are still pending.

♦ Granted rights

The United Kingdom will proceed to issue titles equivalentto those already registered within the framework of the European Union. These titles will not have an additional cost to holders, and the application dates, priority will be maintained… corresponding to them.

♦ Pending cases

For the cases that are still pending December 31, 2020it will be necessary to file an equivalent application in the United Kingdom to qualify for protection in that territory. This will imply management and representation expenses for applicants. Of course, the date of application will be respected, that of submission to the EUIPO (Office of Intellectual Property of the European Union). The deadline for submitting these new applications in the United Kingdom will be 9 months.

Designs

We find a practically identical situation to that of the brands.

A. Designs in the United Kingdom and International Designs that designate the United Kingdom

These rights are not going to be affected at all.

B. European Union Designs and International Designs that designate the European Union.

All of the above already mention for trademarks apply here. Of course, we must bear in mind that the processing times in the case of designs are infinitely shorter than for brands. In fact, a European Union design can be granted in just 1 or 2 days after its request if no formal defects are detected in the application. Therefore, it will be relatively easy to prevent a European Union design application from being processed on December 31, 2020, if we have planned our protection strategy well.

Brexit is here and 2020 will be a year to update our portfolio of trademarks and designs. We must plan our protection strategy for the moment of truth, December 31, 2020.

From San Martin we are at your disposal to advise you on the management of your portfolio of trademarks and designs.

La entrada Brexit is here se publicó primero en San Martín.

Hong Kong launches a new patent grant system. With this legislative novelty, the applicant will have the option of choosing the Hong Kong Patent Office as responsible for processing and granting patents for this autonomous territory of China.

The new granting system will coexist with the current one, which relies on the decisions taken by the patent offices of China, the United Kingdom and the European Patent Office (EPO).

It should be remembered that, to date, to obtain protection in Hong Kong it was necessary to have previously applied for a patent before any of these offices. Only under this premise was it possible to file a patent application in Hong Kong. And that patent had effect only if the application filed with the Patent Office of China, the United Kingdom or the EPO was finally granted. This way, the weight of the processing and examining the invention was delegated to foreign Industrial Property Offices of proven reputation and with which Hong Kong maintains close historical-political ties.

You can find all the information on this new system of granting of patents, as well as the novelties introduced with respect to short term patents, in the following document:

HONG KONG NEW PATENT SYSTEM

If you are looking for advice on how to protect your inventions abroad, contact us. We will help you find the solution that best suits your needs.

La entrada Hong Kong launches a new patent grant system se publicó primero en San Martín.

On October 3, Vietnam signed the Hague Agreement for the protection of international designs.

As from January 3, 2020, this country will be elegible for designation within the new international design applications submitted.

If you want to know more about protecting your designs internationally, contact us.

Welcome¡

La entrada Israel joins the Hague Agreement on designs se publicó primero en San Martín.