New Patent Prosecution Highway possibilities for both Danish, Swedish and European applicants

As the PPH expands further, both Danish, Swedish and indeed European patent applicants are offered new possibilities of speeding up and simplifying examination of their patent applications. In the following the Awapatent IP Blog sums up these new possibilities.

To recall, for a given PPH-agreement the PPH allows for requesting accelerated examination at the one office participating in this agreement based on the search results and a set of claims accepted for grant in an analogous application at the other participating office. For the Global PPH this principle applies for any combination of two participating offices.

Effective 1 November 2014, the Austrian and Singaporean IP offices have joined the Global PPH network, thus bringing the number of participants in the Global PPH up to 19. The Global PPH network already counts i.a. the IP offices of Sweden and Denmark as well as the Nordic Patent Institute as members. Hence, the IP offices of Sweden and Denmark as well as the Nordic Patent Institute now all have PPH agreements with the Austrian and Singaporean IP offices.

Furthermore, the EPO has recently announced the upcoming launch of three new PPH agreements, namely with the IP offices of Canada, Mexico and Singapore. The three new PPH agreements are to enter into force in January 2015. It remains yet to be seen whether they will apply also to PCT work products. The press release of the EPO may be found here.

Finally, it is worth mentioning that also the Thai and Malaysian IP offices have entered the PPH-network, both by signing an agreement with the Japanese patent office, JPO.

The complete overview of existing and working PPH agreements at the time of writing can be seen on the graphic below, courtesy of the PPH web-page compiled by the Japanese Patent Office, JPO:

PPH-1nov2014

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

Revisions to Canadian Trademark Act

Earlier this year Canada’s government proposed Canada major changes to the Canadian Trademark Act and in June the bill (C-31) received royal assent.

The changes enable Canada, as one of the last (if not the last) western industrialized countries, to accede to the Madrid Protocol, Nice Agreement and the Singapore Treaty.

Some of the most significant changes will inter alia mean that the following:

• The term of registration is reduced from 15 to 10 years.

• Divisional trademark applications in order to avoid that uncontested goods or services are delayed by issues with other parts disputed by an examiner or opponent.

• Further types of trademarks such as sounds, scents, 3-D shapes, tastes and textures are now explicitly permitted.

• The requirement to identify whether a trademark has been used or is proposed to be used at the time of filing is removed.

• Trademarks with features consisting mainly of a utilitarian function are not possible to register and a utilitarian feature embodied in a trademark will not prevent a third party from using that feature.

With the above Canada is finally in line with the majority of the trademark world. This will of course make it much easier and more interesting for trademark holders to apply for registrations in Canada when costs and administrative burdens are reduced. Not the least since it is possible use the Nice Classification system and designate Canada in an international registration via WIPO.

This is also the ambition of the Canadian government which expects that the above modernization, which aligns Canadian trademark regime with international practice, will make things easier for Canadian companies as well as attracting foreign investors.

The changes are expected to be fully implemented within a year.

Peter Hermansson, Attorney at Law

European patent validation in Morocco and Tunisia

Recently, the EPO has initiated work on a new interesting possibility for European patent applicants.

Namely, the EPO has reported having signed an agreement with the Tunisian government on the validation of European patents for Tunisia. A similar agreement has previously, in 2013, been signed with the Moroccan government.

According to the agreements, European patents validated in these countries will have the same legal effect as Moroccan and Tunisian national patents, even if neither Morocco nor Tunisia is an EPC contracting state. Also, European patents validated in these countries will be subject to Moroccan and Tunisian patent legislation. Morocco and Tunisia will thus become States recognizing European patents upon request or, in terms of the EPC, Extension States.

However, the Moroccan and Tunisian governments will first have to ratify the agreements before they enter into force. To do so it is also possible that the Tunisian and Moroccan legislation must first be amended.

Furthermore, it is not yet established what documents will be required for validation, what the official fees applicable will be and what the translation requirements will be.

Until, and by all likelihood also after, ratification of these agreements patent protection in Morocco and Tunisia may be obtained by filing national patent applications and/or PCT national phase applications.

Furthermore, in light of the above, it is worth noting that patent protection in Morocco extends to Tangier and Western Sahara.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

Link to the EPO press release