EPO: Abolishment of the 10-Day Rule for Document Delivery

Posted on November 8, 2023 by Dr. Dirk Franke

From November 1, 2023, the European Patent Office (EPO) will be abolishing the 10-day rule for document delivery. Under the current rule, EPO notifications are considered delivered ten days after the date indicated on the document. Consequently, deadlines set from these notifications also begin ten days after the notification’s date. However, this regulation will no longer be in effect after November 1, 2023.

Instead, the new approach states that documents will be considered delivered on the date they are dated. However, if a document is delivered more than seven days after its indicated date, a safeguard clause comes into play. In such cases, the deadline will be extended by the number of days that exceed seven days. It should be noted that the burden of proof for delivery still lies with the EPO.

This change in policy is part of the EPO’s digital transformation and specifically impacts Rules 126(2), 127(2), and 131(2) of the European Patent Convention (EPC). The EPO is adapting to the growing use of electronic delivery, which allegedly reduces the likelihood of delays.

In summary, the EPO’s abolition of the 10-day rule for document delivery, effective from November 1, 2023, ensures that documents are considered delivered on the date they are dated, reducing reliance on the previous ten-day rule. However, if a document is delivered more than seven days after its indicated date, a safeguard clause extends the deadline accordingly. These changes are aimed at streamlining processes and adapting to the increasing use of electronic delivery within the EPO.

Our Comments

Abolition of the 10-day rule for document delivery by the European Patent Office (EPO) may have some disadvantages for its customers. In our opinion, the new rule has the following potential drawbacks:

  1. Reduced time for response: With the previous 10-day rule, customers had an additional ten days from the date of notification to respond to any deadlines or requirements. By abolishing this rule, the EPO is effectively reducing the time available for customers to prepare and submit their responses.
  2. Potential for missed deadlines: Under the new policy, if a document is delivered more than seven days after its indicated date, the deadline is extended. However, there is still a risk that delays in document delivery could result in missed deadlines. This may occur if the EPO fails to promptly deliver documents, leading to customers inadvertently exceeding extended deadlines.
  3. Burden of proof on customers: While the burden of proof for delivery still lies with the EPO, customers may face challenges in proving the exact date of receipt in case of disputes or discrepancies. This burden may require customers to maintain meticulous records and evidence of document receipt.
  4. Adjustment to internal processes: The change in document delivery rules may require customers to adjust their internal processes and workflows to ensure timely responses and compliance with new deadlines. This adjustment involves additional resources and potential disruptions during the transition period.
  5. Reliance on electronic delivery: While the EPO is adapting to the growing use of electronic delivery, there may still be customers who prefer traditional paper-based communication. These customers may face challenges in adapting to the digital transformation, especially if they lack access to reliable internet connections or face technological barriers.

Overall, while the abolition of the 10-day rule aims to streamline processes and enhance efficiency, it may present certain disadvantages and challenges for some customers of the EPO. Adapting to the new policy and ensuring compliance with revised deadlines will be crucial for customers to navigate the changes effectively.

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Unified Patent Court (UPC): Opt-Out Strategy for Granted European Patents and European Patent Applications

Posted on June 4, 2023 by Dr. Dirk Franke

The Unified Patent Court (UPC) is a central European court, which has become competent for granted European patents and European patent applications.

For a transitional period of 7 to 14 years, the granted European patents will remain within the jurisdiction of national courts (in Germany: the regional courts for infringement proceedings and the Federal Patent Court for nullity proceedings), if an opt-out request is filed with the UPC. In the absence of an opt-out request, the unitary patent court will be competent.

Requirements of the opt-out request:

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

  • The opt-out request can only be filed for active European patents, for active European patent applications and for European patents which have expired.
  • The opt-out request can only be filed as long as no infringement proceedings or nullity action has been brought before the UPC.
  • The opt-out request can only be filed electronically by the patent owner or his authorized representative using the secure communication platform of the UPC. The UPC will not loose competence before the request has been entered into the patent register.
  • The opt-out request can only be filed once. If the request is withdrawn, the patent will remain permanently in the competence of the UPC.

Advantages/Disadvantages of an Opt-Out Request:

Owners of European patents should weigh the following advantages and disadvantages against each other before filing an opt-out request:

Benefits of an Opt-Out Request

  • Due to the sole competency of a centralized court in the EU, there is a risk of losing patent protection in all participating EU validation countries in one decision, if the UPC determines that the European patent is null and void. For a European bundle patent, on the other hand, national courts in all validation countries have to decide individually.
  • There is so far no established case law or established procedural rules for the Unified Patent Court. Hence, all proceedings before the UPC are subject to a high degree of uncertainty.
  • Because the opt-out request can be withdrawn, there are more options available, if there are concerns that infringement proceedings are imminent. If an opt-out request has already been withdrawn, the scope of options is reduced accordingly.

Disadvantages of an Opt-Out Request

  • Through a centralized procedure at the UPC, a uniform decision may be obtained for all participating validation countries, so that parallel procedures before national patent courts and thus procedural costs can be avoided.
  • In case of a shared patent ownership, the consent of all patent owners must be obtained prior to filing an opt-our request.
  • If license agreements have been concluded for the European patent, an agreement must be reached with the licensees.

Our Opinion:

The owners of European patents and European patent applications should consider making use of the opt-out request while this option is still available. The above advantages and disadvantages should be weighed against each other before making a desicion.

For unitary patents, on the other hand, no opt-out request can be filed.

Foto: © MPD01605, [CC BY-SA 2.0]

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Unitary Patent System: Start of the Transitional Measures on January 1, 2023

Posted on January 11, 2023 by Dr. Dirk Franke

The President of the Court of Appeal of the Unified Patent Court (UPC) and the Chairman of the Administrative Committee of the UPC recently announced that transitional measures for the introduction of Unitary patents will begin on January 1, 2023. From this date onwards, applicants for European patents who have received a Rule 71 (3) EPC communication from the European Office (EPO) will have the option to file an early request for unitary effect or request a delay in the decision to grant a European patent. Additionally, from March 1, 2023, applicants for European patents will have the right to opt-out from the UPC.

1. Early Request for Unitary Effect

Under the transitional measures, applicants for European patents can file an early request for unitary effect. This will allow the EPO to register unitary effect immediately after the UPC system begins on June 1, 2023. The request must be submitted using either EPO form 7000 (request for unitary effect) or EPO Online Filing 2.0.

If the proceedings of the European patent application were conducted in German or French, an English translation of the full specification (description, claims, and figures) must be included with the request. If the proceedings were conducted in English, a translation of the full specification into either German or French must be provided.

Once a valid request for unitary effect is filed, the EPO will automatically register unitary effect upon the start of the UPC and communicate the date of registration of the Unitary Patent.

2. Request for Delay in Issuing the Decision to Grant

Separate from the early request for unitary effect, the transitional measures also allow applicants for European patents to request a delay in issuing the decision to grant. This request must be made using EPO form 2025 (request for a delay) and will be made available on the EPO website in due course. The request must be filed before the approval of the text intended for grant, although a request filed on the same day as the approval will likely be considered valid.

If a request is made to postpone the publication of the notice of grant, the publication will be delayed until the date of entry into force of the Convention or immediately after. Following the publication, there will be a one-month period in which the request for unitary effect can be filed if a unitary patent is desired.

This request ensures that a European patent remains eligible for the UPC system and prevents applicants from missing opportunities to obtain a Unitary patent during the transitional phase.

3. Request for Opt-Out from the UPC

Starting from March 1, 2023, applicants for European patents can also file a declaration of an opt-out from the UPC. This opt-out request removes European patents from the jurisdiction of the UPC, allowing applicants to receive national parts of the patent instead of a Unitary patent for participating countries. The UPC’s jurisdiction currently includes Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden.

It’s important to note that the Unitary patent will only have an effect in EU member states that have ratified the Unified Patent Court Agreement (UPCA) and are participating in the United Patent Regulation at the time of registration. Currently, the following EU states are not eligible for a Unitary patent: Spain, Poland, Croatia, Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, Slovakia

Additionally, the Unitary patent does not apply to EPC member states that are not eligible to be signatories of the UPCA, including Iceland, Norway, Turkey, Switzerland, Serbia, Albania, Macedonia, and the United Kingdom (UK).

4. Summary

In summary, after January 1, 2023, applicants for European patents will have the following transitional measures available:

  • A) early request for unitary effect of a European patent
  • B) request for a delay in issuing the decision to grant
  • C) declaration for opt-out from the UPC (after March 1, 2023)

Update (March 8, 2023):

The EPO has now made available the official form 2025 for applicants to request a delay in issuing the decision to grant. This form can be used to submit the request and ensure that the decision to grant the European patent is postponed.

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EUIPO: Discrimination of Applicants and Proprietors Based on Their Place of Business or Nationality

Posted on May 26, 2022 by Dr. Dirk Franke

We have recently encountered a concerning situation with the European Union Intellectual Property Office (EUIPO) regarding the transfer of ownership of a registered EU trademark. It appears that the EUIPO is discriminating against customers based on their place of business, registration, or nationality.

On April 20, 2022, we submitted a request to the EUIPO to register a transfer of ownership from a company based in the European Union to a company registered in the Russian Federation. We provided all the necessary documents to prove the entitlement of the Russian company to the EU trademark, as the EU company and its assets were acquired by the Russian company. However, we did not receive any notifications from the EUIPO for about four weeks. On May 18, 2022, we sent a reminder letter regarding the filed request.

On May 19, 2022, we received a phone call from a First Line officer of the EUIPO Information Center. The officer informed us that our request could not be processed due to an “internal communication” that ordered the suspension or pending action on all transfer requests involving companies from or in the Russian Federation. In other words, our request was unable to proceed.

The reason provided in the internal communication was to protect the interests of non-Russian applicants and proprietors in the European Union (EU) due to the ongoing military conflict in Ukraine.

We discussed the case with the First Line officer and emphasized the importance of applying the rule of law. We requested a legal basis for the suspension and a detailed reason for its application in our case. However, the officer could not provide a legal basis beyond the internal communication and stated that he was only following orders. Furthermore, we questioned the connection between the registration process and the conflict in Ukraine, as well as how the interests of non-Russian applicants and proprietors could be affected by a non-constitutive transfer to correct the register. Unfortunately, we did not receive a satisfactory answer from the officer.

Moreover, the officer could not provide any information about the duration of the suspension.

We have submitted a status request on the processing of our transfer request, which is currently still pending.

Our comments:

In our opinion, it is highly concerning that the EUIPO appears to be discriminating against applicants and proprietors of EU trademarks based on their place of residence, registration, or nationality. Customers rely on the EUIPO to apply the law equally to all, regardless of non-relevant factors. To our knowledge, there have been no other cases at the EUIPO or any national trademark office in Europe where a request was not processed simply because of the customer’s nationality.

Furthermore, the proprietor or applicant of an EU trademark is generally not a party to the military conflict in Ukraine. In this specific case, the company operates internationally and only happens to have a place of business in Russia and a subsidiary in the Czech Republic following a merger.

It is particularly concerning that the suspension was based on an “internal communication” at the EUIPO, without a legal basis or reference to any applicable law. The representatives of the proprietor were only informed of the suspension through a phone call, without receiving a written decision following the conversation.

Foto: © MPD01605, [CC BY-SA 2.0]

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GPTO: Increase of Official Fees on May 1, 2022 and July 1, 2022

Posted on April 2, 2022 by Dr. Dirk Franke

The German Patent and Trademark Office (GPTO) will increase on May 1, 2022 and July 1, 2022, respectively, the annuity fees for patents and supplementary protection certificates (SPCs).

Annuity fees can be paid one year in advance at the GPTO. Therefore, it is possible for applicants or proprietors to make use of the still lower annuity fees, if the official fees for the upcoming year are paid before May 1, 2022 or July 1, 2022, respectively.

1. Annuity Fees for Patents

The fee increase for patent applications and patents at the GPTO are summarized in the following table. The fees for the 3rd and 4th patent year (70 EUR) will not be not changed.

Annuity fee for patent yearFee until June 30, 2022 (EUR)Fee on July 1, 2022 (EUR)
37070
47070
590100
6130150
7180210
8240280
9290350
10350430
11470540
12620680
13760830
14910980
151,0601,130
161,2301,310
171,4101,490
181,5901,670
191,7601,840
201,9302,030

2. Annuity Fees for SPCs

The fee increase for supplementary protection certificates (SPCs) at the GPTO are summarized in the following table.

Annuity fee for SPC yearFee until April 30, 2022 (EUR)Fee on May 1, 2022 (EUR)
12,6502,920
22,9403,240
33,2903,620
43,6504,020
54,1204,540
64,5204,980
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Merry Christmas and a Happy New Year!

Posted on January 1, 2022 by Dr. Dirk Franke

We wish all our readers a Merry Christmas and a Happy New Year 2022!

Foto: © Pedro, [CC BY 2.0]

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Merry Christmas and a Happy New Year!

Posted on December 29, 2020 by Dr. Dirk Franke

We wish all our readers a Merry Christmas and a Happy New Year 2021!

Foto: © Heather Cowper, [CC BY 2.0]

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BREXIT: Implications for EU Trademarks and EU Designs

Posted on November 9, 2020 by Dr. Dirk Franke

The United Kingdom (UK) officially withdrew from the European Union (EU) on January 31, 2020, and is currently in a transition period that will end on December 31, 2020. During this transition period, registered EU trademarks (EUTMs) and registered EU designs (RCDs) continue to be valid and enforceable in the UK.

However, it is important to note that the ending of the transition period will have implications for EUTMs and RCDs. After December 31, 2020, these rights will no longer have automatic protection and recognition in the UK. To ensure continued protection in the UK, right holders will need to take certain actions.

This article explains the implications of the ending of the transition period and the BREXIT for EUTMs and RCDs.

1. Registered EU Trademarks and EU Designs

All registered EU trademarks (EUTMs) and EU designs (RCDs) will be treated as national trademark and design registrations in the UK. These rights will become comparable UK rights and will be entered into the UK register automatically and free of charge. The dates of application, registration, and any priority or seniority dates will be the same as for the EU rights.

The UK Intellectual Property Office (UKIPO) will not issue new certificates for the comparable UK rights. The UK trademark registrations will retain the EUTM registration number, but will be prefixed with “UK009” to indicate that they are comparable UK rights. The UK registered designs will retain the 9-digit RCD number and will be prefixed with “9”.

International design registrations under the Hague Agreement designating the EU, which have been confirmed by the EUIPO for protection in the UK, will be included in the UK register as comparable international designs. These registrations will retain their international registration number, but will be prefixed with “8”.

Proprietors of EUTMs and RCDs have the option to opt-out from these provisions. However, if a trademark has been used in the UK by the registered proprietor or with their consent, it is not possible to opt-out. The same applies to trademarks or designs that have been assigned, licensed, or are subject to pending proceedings based on the comparable UK rights. The deadline for opting out is January 1, 2021.

2. Filed EU Trademark Applications and EU Design Applications

EU trademark and design applications will need to be re-filed at the UKIPO. The new UK applications will retain the original filing date and priority date (if applicable) of the EU applications, as long as they are filed within 9 months after the end of the transition period.

The UKIPO has not provided information on the application process for the comparable UK trademark or design applications derived from the EU applications.

3. Pending EU Trademark Oppositions

The UKIPO has not provided information on how pending EU trademark oppositions will be treated in the UK after the end of the transition period.

It is assumed that the comparable UK rights will follow the fate of the EU rights. If the EU rights are invalidated by the EUIPO in opposition, cancellation, or invalidity proceedings, the UK rights will also be considered invalid by the UKIPO, with the same date of invalidity as in the EU.

4. Renewal of Registered EU Trademarks and EU Designs

Comparable UK rights will have the same renewal date as the EUTM or RCD. Proprietors who wish to maintain the comparable UK rights will need to pay a separate renewal fee at the UKIPO.

For comparable UK rights due for renewal within six months after the end of the transition period, the UKIPO will send a renewal reminder to the proprietor. The proprietor will have a further six-month period to renew the comparable UK right in the UK.

If the renewal date of a registered EUTM or RCD falls after the end of the transition period, an early payment of the renewal fee at the EUIPO prior to the end of the transition period will have no effect on the comparable UK right. The comparable UK right will need to be renewed separately at the UKIPO.

Foto: © Tim Reckmann, [CC BY 2.0]

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Corona: Closures and Extensions of Time Limits at Patent and Trademark Offices

Posted on April 5, 2020 by Dr. Dirk Franke

In the following table, closures and extensions of time limits at the most important patent and trademark offices are summarized (as of April 21, 2020):

CountryTwo letter codeStatusNotification
CanadaCAExtension of time limits until May 1, 2020March 29, 2020
ChinaCN––
EPOEPExtension of time limits until May 4, 2020March 15, 2020
EUIPOEUExtension of time limits until May 4, 2020March 26, 2020
GermanyDE––
ItalyITExtension of time limits until April 3, 2020March 9, 2020
JapanJP–April 9, 2020
SpainESExtension of time limits until further noticeMarch 17, 2020
WIPOWO––
United KingdomGBExtension of time limits until further noticeMarch 27, 2020
USA US––

Some patent and trademark offices have extended only some time limits while other time limits are not extended. For instance, the German Patent and Trademark Office (GPTO) has extended the time limits set by the office in the granting and registration proceedings, while time limits not set by the office, e.g. opposition periods and the time limits for paying fees, are not extended. It is highly recommended to verify with a patent attorney if extensions apply to individual time limits. In case of any doubts, it should be assumed that no extension of the time limits will be granted by the office and that time limits have to be observed.

All information disclosed in this article may not be accurate, may be not be relevant any more or may be only the personal opinion of the author. Please contact a representative in the individual country to receive up to date information and check if up to date information are published on the websites of the patent and trademark offices in the relevant countries. In particular, at the current Corona situation information may change on a daily basis.

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Merry Christmas and a Happy New Year!

Posted on January 1, 2020 by Dr. Dirk Franke

We wish all our readers a Merry Christmas and a Happy New Year 2020!

Foto: © Jason Mrachina, [CC BY-NC-ND 2.0]

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