Recent amendments to international IP systems and collaborations
Madrid Agreement
Changes to the Implementing Regulations to the Madrid Protocol on the International Registration of Trademarks went into effect on November 1, 2022.
As a result of the amendments, owners of intellectual property rights will now be able to submit an application for the renewal of an international trademark along with payment of the applicable fee at least six months prior to the renewal date. Such requests were previously only accepted three months prior to the deadline.
In addition, as opposed to the former procedure where the renewal would only be confirmed following the right’s expiration, the WIPO will now notify the right holder of renewal confirmation immediately upon payment of the applicable amount. After the previous period has expired, an international trademark will continue to be valid for 10 years.
The Madrid Agreement’s modifications to the Regulations give rights holders the chance to demonstrate the continuous validity of their international marks earlier, setting the way for a quicker and more effective procedure for international trademark renewal.
EAPO
On November 1, 2022, the Eurasian Patent Office (EAPO) introduced the amendment to the Eurasian Patent Convention’s Patent Regulations.
The ability for applicants to submit digital three-dimensional models for Eurasian patents and industrial designs is one of the most important changes to the Regulations. More clarity regarding the core of a claimed invention and the appearance of products in the case of industrial design protection is expected to be provided by the digitalization and acceptance of 3-dimensional representations of application subject matter. The change represents a modernization of the framework and is intended to improve the effectiveness and efficiency of the application review process for Eurasian applicants.
The amendments also provide the extension of deadlines for submitting oppositions to applications for Eurasian patents and industrial designs. As a result, as of the date of publication, the new deadline for submitting a notice of opposition is nine months. Additionally, the submission of revised patent claims is now only authorized prior to the applicant receiving notification of authorization to grant a Eurasian patent.
The changes also result in an extension of the procedures checked in connection with the substantive review of industrial design applications and the methods for excluding product beautiful designs for which legal protection is not requested.
Additionally, if the priority document is already included in the WIPO Digital Access Service system, the new requirements indicate that it is no longer essential to submit a certified paper copy of it.
PCT
The handling fee for a PCT application in Japan was recently increased, one of many changes to different fees related to the PCT system that has recently been made in the context of global inflation. As a result, the handling charge increased by almost 6% as of November 1, 2022, from 26,900 JPY to 28,600 JPY.
The Norwegian fee schedule also takes into account various PCT charge amendments that took place as of October 1, 2022, as a result of an increase in tax. As a result, from 13,030 NOK to 13,830 NOK, the charge for a foreign application has increased by around 6%. Additionally, the extra charge for each additional page beyond 30 has increased from 150 NOK to 160 NOK, or by roughly 7%.
However, there have been fewer reductions in the official fee savings for overseas patent applications filed to the Norwegian Patent Office as a receiving authority via the ePCT or eOlf methods. The fee for submitting a filing request in character-coded format has decreased by approximately 6% from 1,960 NOK to 2,080 NOK (provided that the application is filed via e-filing), while the fee for submitting a request, description, claims, and abstract in character coded format has decreased by the same percentage to 3,120 NOK from 2,940 NOK.
The international filing fee for PCT applications in Sweden has increased as well, going from 13,470 SEK to 14,650 SEK, up around 9%. The fee for each additional sheet beyond 30 is now 170 SEK, up roughly 13% from 150 SEK.
