Monday Miscellany

In time honoured fashion, this Kat presents you, dear readers, with a few nuggets of recent news.

Nagoya Protocol News
Back in March, this Kat wrote about the draft EU Implementing Regulation (as well as the corresponding UK provisions, contained in a Statutory Instrument that was already in final form) in respect of Regulation No 511/2014 "on compliance measures for users from the Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization in the Union".  The EU legislature is cutting it a bit fine, because the Implementing Regulation must be in place by 12 October 2015, since otherwise penal sanctions will apply for failing to comply with provisions whose details have not been set out.  Well, after months of no news, it now turns out that a further draft has been published, substantially different from the previous one.

For example, the rules on Declaration at the stage of Research Funding have been completely changed from the previous draft - they are given in Article 5.  The rules now seem much simpler than previously envisaged - the Declaration is made to the competent authority of the Member State in which the recipient of the funding is established (eg NMRO in the UK).  Only if the recipient is not established in the EU, but the research is carried out in the EU, the due diligence declaration is made to the competent authority of the Member State in which the research is carried out.  There is no longer any reference to making a Declaration to the source of the funding, nor to a Declaration if the funding is from within the EU but the research is carried out outside the EU.  Therefore, it seems that a Declaration is only required if either of the following two conditions are met:  the recipient of the funding is within the EU, or the research is within the EU.  The Declaration is made to the country (EU Member State) of establishment of the recipient of the funding, or if that recipient is established outside the EU, to the country (EU Member State) where the research is carried out.

The IPKat understands that the UK (alone) voted against the draft Implementing Regulation on the grounds that they went beyond the scope of the Regulation and strayed into areas of Member State competence (on Traditional Knowledge); and because they are overly burdensome and did not offer sufficient clarity to users.  Apparently the Implementing Regulation will now be adopted according to the current draft.

OHIM Launches new online form for filing Community Registered Designs
OHIM has launched a new e-filing system for CRDs.  This Kat has not tried it yet, but apparently 3D images can be used to create the views, and the images can be uploaded more easily.  Do let the IPKat know how you find it, and share your experiences with other users.

European Patent Office - examination suspended during renewal grace period
This Kat was very interested to learn in a post over on IPCopy that when a European patent application enters the six-month grace period for payment of an overdue renewal fee, examination is suspended.  An Examiner is then unable to work on the case until the renewal fee is paid.  Apparently previously such a suspension only applied in the final month of the grace period, and even then the Examiner was able to view the file.

European Patent Litigation Certificate 
This Kat was also very interested to read this post on the Kluwer Patent Blog about the European Patent Litigation Certificate (which this Kat wrote about here).  The piece is an interview with Wouter Pors, a frequent commenter on this blog on UPC matters, and records he is "in favour of free competition amongst professionals and I certainly would not want to be seen to use formal requirements to distort competition".  Wouter also suggests "mid-21062016" [edited 18:00] as a start date for the UPC.

Financial Times alleges "Innovations are still being stifled by dense thickets of overlapping patents"
Much has been written on the anti-patent piece in the Economist and various replies to it (see for example on this blog here and here), and so the Financial Times seems to have joined the party, with a piece posted yesterday entitled "Astronomical costs of intellectual property rights patently wrong".  It is not free to access so the IPKat cannot post a functioning link, but readers with access should be able to find it readily.

Indian Patent Office rejects Pfizer patent application for Tofacitinib 
Spicy IP reports in a two-part blogpost by Madhulika Vishwanathan (here and here) that the Indian Patent Office has rejected a Pfizer application for a single stereoisomer of the rheumatoid arthritis drug Tofacitinib, on grounds of anticipation by prior claiming  and Section 3(d).  Both grounds seem rather dubious, and the first ground relies on considering that different stereoisomers are the same thing.  Doubtless this case will run controversially for years.

Monday Miscellany Monday Miscellany Reviewed by Darren Smyth on Monday, September 28, 2015 Rating: 5


  1. Re: grace periods for renewals. Be careful about filing divisionals in the 6 month grace period as the application is in theory no longer pending! Probably everything would be OK, but there is some uncertainty

  2. Spectre, do you have case law for this? The situation seems to be similar to that of filing a divisional after refusal but before the 2 month appeal term has passed, which the EBA considered in G1/09.


  3. Wouter also suggests "mid-2106" as a start date for the UPC..

    2106 a bit pessimistic?

  4. Thank you Meldrew. Merpel has clearly been playfully interfering with the IPKat's posts again. Corrected now.

    Best wishes


  5. Or, KAnt, it could be like further processing where you have to revive the parent before the divisional is considered validly filed. There is no case law because this only applies to the 'recent' EPC 2000 Art 86 deeming the application to be withdrawn when the renewal fee is not paid in time.

  6. Re Grace period:
    This is indeed the case, but the dossier is not officially suspended and the applicant is not informed.
    It is just an EPO-internal suspension so that the examiner cannot work on it.
    No problems will arise for filing divisionals, however should you file a PACE request, your dossier will not be accelerated.
    Even worse, if you had oral proceedings scheduled during the grace period, they will be cancelled and rescheduled until a much later date.
    The reasoning is that examiners should not work on dossiers for which the EPO is not getting paid anymore. Even if the applicant already paid 15+ renewal fees....


  7. Was entering the six month grace period "hoping to receive either an exam report or some other indication on the allowability of the claims before deciding whether to pay the renewal fee" a common strategy?

    I hadn't thought of trying this, but would probably advise my client (even under the old rules) that there is a strong chance that the case will not be examined in the six month grace period, and using the grace period costs 50% extra if you do eventually pay the fee, so the probability of the strategy saving money overall is slim.

    There is an advantage to the new rules in that, if your client stops responding to your correspondence and the case lapses for failure to pay the renewal fee, you more likely to get a search / exam fee refunded to set against your unpaid bills.


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