Monday miscellany

WIPO's new IP dispute
resolution service motto
Mediate, arbitrate -- here's a WIPO update. For those who prefer a more discreet way of resolving their intellectual property disputes than that of litigating them in full view of competitors, Kats and sundry others, the WIPO Arbitration and Mediation Center is one of a number of bodies that offers alternatives via its mediation, arbitration and expert determination services.  While the WIPO structure for informal dispute resolution is, well, somewhat formal, new rules, which come into force on 1 June 2014, should make its services a little more flexible -- and swifter too.  For example, contrary to the somewhat limiting basis of "two is company; three is a crows", the new rules provide for the joinder of additional parties to proceedings and give the Center the power to consolidate a new arbitration with proceedings that are already in progress. The rules also now make it mandatory for a preparatory conference to take place within 30 days of the establishment of the tribunal. There are special provisions for emergency relief, even before an arbitral tribunal is established, on the basis that the applicant for such relief has to commence substantive proceedings within 30 days of the emergency relief proceedings kicking in.  For more details click here.

Post-Fordham Catch-Up.  This Kat understands that some folk who unfortunately will not be able to attend this year's Fordham IP Conference have been fortunate to sign up for fellow Kat Eleonora's imaginative and informative Post-Fordham Catch-Up event, in which this weblog's resident copyright enthusiast will be reviewing the latest opinions of judges, scholars, copyright giants and practitioners in some of that subject's most keenly-contested areas.  If you haven't yet signed up, do take this chance to do so since spaces are limited -- and if you can't make 6 May (for that is the date), but would have liked to attend, let Eleonora know. If there's enough interest she may be able to run another one.

Jubilant Spanish IP applicants take to the streets
to rejoice at the ruling. From now, 29 January
will be celebrated as Stuff the Deadline Day
Article 33.3 sidelined: massive impact expected.  From Colm Ahern (Elzaburu, Madrid) comes some cheering news for Spanish patent applicants -- and indeed for others too. But let's start with the bad news: Article 33.3 of the Spanish Patent Act 1986 is perfectly clear. If you do not ask for a search report in the 15 months following your patent application, the application will be deemed to be withdrawn. Now for the good news: in Case no. 458/2011 of 29 January 2014, in appeal no. 7/2014, the Madrid High Court ordered the Spanish Patent and Trade Mark Office to resume prosecution of a patent application which protects an innovative test for detecting the presence of certain viruses in the body, after the applicant argued successfully that Article 76.3 of the Administrative Procedure Act (APA), which governs all applications to government offices, should prevail over Article 33.3 since it was passed by Parliament four years after the Patent Act. The APA treats the citizen much more benevolently than the Patent Act, as it allows him to remedy this defect even though the time limit for doing so has expired. In fact, he can remedy it at any time up to and including the day the public office notifies him of the expiration of the time limit. In the case of the search report, is the day on which the withdrawal of the application is published in the Official Gazette. The applicant may request the search report and pay the fee that same day. Apart from breaking with previous Office practice, this ruling has enormous implications since the same reasoning is applicable to any occasion on which an applicant for a patent, trade mark or industrial design fails to comply with a step in the procedure, for instance if he forgets to pay the renewal fee.

The amended Rule 19 was tested under normal
conditions of use and was found to have no
significant impact at all
Rule 19 replaced: no impact foreseen.  Regular readers of this weblog will have noted how, in recent times, occasional patent-related posts on the filing of divisional patent applications, on poisoned divisionals (see eg Katposts here and here) and other fascinating topics have aroused the passions of otherwise sane and sedate readers. Now here's something that will probably calm them down a bit, at least in the United Kingdom: it's the Patents (Amendment) Rules 2014 (2014/578), which you can read at your peril leisure here.  In short, on 6 April 2014 a replacement rule 19 of the Patents Rules 2007 comes into force, replacing rule 19 of the oft-amended Patents Rules 2007 (2007/3291). The new version of the rule clarifies the time limits for filing divisional applications, which may only be made before the earlier application has been granted, terminated or withdrawn. The best bit, says Merpel, can be found in the Rules' Explanatory Note which reads :"A full impact assessment has not been produced for this instrument as no, or no significant, impact on the private, voluntary or public sectors is foreseen".

Around the weblogs. On Class 46, Laetitia narrates American Express's unsuccessful attempt to colonise a bevy of "IPZONE" Community trade marks for "hosting an on-line portal for disclosing, selling, buying, licensing and general transactions for intellectual property", notwithstanding its success in obtaining registration for those marks in the United States. The 1709 Blog carries updates from Ben on the Innocence of Muslims saga and, with a nod to ZDNet, on the aftermath of the iiNet litigation in Australia. IP Draughts, in a blogpost that really is authored by Mark Anderson this time, reflects on the old argument about whether information is property in the light of a new Court of Appeal, England and Wales, ruling. Finally, the jiplp weblog features the attractions of the April issue of the Journal of Intellectual Property Law & Practice, together with the full text of fellow Kat Neil's editorial on the provocative topic of whether intellectual property theories are worth the effort.
Monday miscellany Monday miscellany Reviewed by Jeremy on Monday, March 17, 2014 Rating: 5


  1. It appears from the new rule that where a section 18(3) report has issued, the deadline for filing divisional applications will be unknown, being the date of notification of the 18(4) report. Will we therefore (like the current EPO situation before it changes soon) have no choice but to advise clients who may be interested in a divisional to file a provisional divisional application alongside or soon after a response to a section 18(3) report is filed, as we will not know when the s18(4) notification will be issued closing off the possibility of divisional applications.

    This represents a significant burden especially to SMEs, both in the additional cost required, and in the extra costs of monitoring an unknowable deadline and on the potential precautionary measures necessitated by this change to rule 19.

    If I have misunderstood the changes to R19, please could some kind reader explain.

  2. It seems that this rule changes nothing, as the Manual of Patent Practice 15.20 already has this requirement:

    15.20 ... However, if the first report of the substantive examiner under section 18 is made under section 18(4), a new application may only be filed within two months of the comptroller notifying the applicants that the earlier application complies with the Act and Rules

    The rule change seems to be just implementing this. Previous rule 19 was certainly less than clear on that front!

  3. Hi Andy
    Thank you for replying
    I am not sure there is no change

    see this link

    and the UK IPO explanatory comment (as follows).....

    If the earlier application was found to meet the requirements for the grant of a patent after one examination, a period of two months is available for filing a divisional application following notification to the applicant of the successful examination. If the earlier application was found to meet the requirements for grant after more than one examination, that period does not apply and a divisional application cannot be filed once the applicant has been notified that the earlier application complies with the requirements of the Patents Act 1977 and the Patents Rules (see new rule 19(4) of the Patents Rules).

    Please do let me know, I hope I am simply misreading it.

  4. It appears that the new rule could just be a codification of current practice. I've updated my article with an excerpt from the Black Book:

    "If the first report of the examiner, is issued under s.18(4), rather than under s.18(3), a period of two months is set for (a) the possible filing of a divisional application under r.19(3)(a)...If objection under s.18(3) has previously been taken, the notification is simply a statement that administrative grant took place on the date of the notification. From that date, the filing of a divisional application is precluded by r.24(2)(c)", CIPA Guide to the Patents Acts (7th Edition), Section 18.10.

  5. Thank you for reokying. However, I understand that it is intended to comply with current practice as laid out in the references you mention. I am puzzled as to why the black letter law of Rule 19 is seemingly not followed in current practice, namely that it is 2 months from the section 18(4) notification, (seemingly in all circumstances, not just if no section 18(3) report is issued) ? Why is it that this passage in rule 19 as presently drafted ( as far as I understand it) cannot be relied upon (am I missing something?)

    19. (1) A new application for a patent may be filed as mentioned in section 15(9)—
    (a)before the end of the relevant period; ........
    (a)where an applicant is notified under section 18(4) that his earlier application complies with the requirements of the Act and these Rules, two months beginning with the date of that notification; or
    (b)in any other case, the period ending three months before the compliance date of the earlier application.


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