Brazilian PTO and CAS Establish Technical Cooperation Agreement to Strengthen the Fight Against Patent Backlog

By Moeller IP Team.

BRPTO and CAS, a non-profit division of the American Chemical Society, signed a technical cooperation agreement (ACT) to expedite the examination of patents. ACT was published in the Federal Official Gazette this Wednesday (06/10). The agreement establishes INPI’s participation in a CAS Search Report pilot, with the objective of improving the patent workflow at the Institute.

The technology, which will be tested and optimized, is able to assess similarities with the state of the art from parameters of a patent application important for the examiner’s analysis. In addition, the system combines machine learning and data selected by humans, which improves the results offered.

Source: https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inpi-e-cas-estabelecem-acordo-de-cooperacao-tecnica-para-reforcar-combate-ao-backlog-de-patentes

American Region Suspension Deadlines COVID-19

By Moeller IP.

The latest update about the suspension of deadlines in the American Region Patent and Trademark Office.

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European Patent Office Issued Opinion G 3/19 (Pepper) on 14.05.20

By José Santacroce. Partner and Head of Patent Department.

The Enlarged Board of Appeal of the European Patent Office issued opinion G 3/19 (Pepper) on 14.05.20 and concluded that plants and animals exclusively obtained by essentially biological processes are not patentable.

The key concepts of opinion G 3/19

The Enlarged Board of Appeal of the European Patent Office adopted a dynamic interpretation of the exception to patentability under Article 53(b) of the European Patent Convention (EPC) and held that the non-patentability of essentially biological processes for the production of plants or animals also extends to plant or animal products that are exclusively obtained by means of an essentially biological process.

Background

The Enlarged Board of Appeal is the highest judicial authority under the EPC, which provides for an autonomous legal system that is separate from the European Union. The Enlarged Board’s main task is to ensure the uniform application of the EPC.

Under Article 53(b) EPC, European patents shall not be granted in respect of plant or animal varieties or essentially biological processes for the production of plants or animals. Rule 28(2) EPC provides that under Article 53(b) EPC, European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.

Rule 28(2) EPC was introduced by the decision of the Administrative Council of the European Patent Organisation and came into force on 1 July 2017.

In 2015, the Enlarged Board had concluded in its decisions G 2/12 and G 2/13 within the then applicable legal framework, i.e. before the introduction of Rule 28(2) EPC, that the non‑patentability of essentially biological processes for the production of plants or animals under Article 53(b) EPC did not extend to products that are exclusively obtained by means of an essentially biological process.

In 2018, a Technical Board of Appeal held in decision T 1063/18 that new Rule 28(2) EPC had no impact on the interpretation of Article 53(b) EPC, and followed the Enlarged Board’s earlier decisions G 2/12 and G 2/13.

In 2019, the President of the European Patent Office referred a point of law to the Enlarged Board of Appeal under Article 112(1)(b) EPC concerning the interpretation of Article 53(b) EPC in view of legal and other developments occurring after decisions G 2/12 and G 2/13, and in particular in view of new Rule 28(2) EPC.

Key considerations

In its opinion issued today, the Enlarged Board of Appeal held the referral by the President of the European Patent Office to be admissible within the terms of a re‑phrased question. On the merits of the referral, the Enlarged Board endorsed its earlier findings on the scope of Article 53(b) EPC, which were based on the classical (i.e. the grammatical, systematic, teleological and historical) methods of interpretation. However, the Enlarged Board found that a particular interpretation which has been given to a legal provision can never be taken as carved in stone, because the meaning of the provision may change or evolve over time. This meant that decisions G 2/12 and G 2/13 did not settle the meaning of Article 53(b) EPC once and for all.

Taking account of the Administrative Council’s decision to introduce Rule 28(2) EPC, the preparatory work on this provision and the circumstances of its adoption, as well as legislative developments in the EPC contracting states, the Enlarged Board concluded that new Rule 28(2) EPC allowed and indeed called for a dynamic interpretation of Article 53(b) EPC.

In adopting this dynamic interpretation, the Enlarged Board abandoned its earlier interpretation of Article 53(b) EPC in decisions G 2/12 and G 2/13. It held that, after the introduction of new Rule 28(2) EPC, Article 53(b) EPC was to be interpreted to exclude from patentability plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process.

In order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board ruled that the new interpretation of Article 53(b) EPC given in G 3/19 had no retroactive effect on European patents containing such claims which were granted before 1 July 2017, or on pending European patent applications seeking protection for such claims which were filed before that date.

Source: www.epo.org

China Becomes Top Filer of International Patents in 2019

By José Santacroce. Partner and Head of Patent Department.

The World Intellectual Property Organization (WIPO) published on 7 April 2020 a press release summarizing the main activities of the Organization in 2019.

The highlights of the above-mentioned press release are the following:

With 58,990 applications filed in 2019 via WIPO’s Patent Cooperation Treaty (PCT) System, China ended the United States (57,840 applications in 2019) reign as the biggest user of the PCT System, a position previously held by the U.S. each year since the PCT began operations in 1978.

International patent applications filed via the PCT grew by 5.2% (265,800 applications) in 2019, while international trademark applications via the Madrid System for the International Registration of Marks increased by 5.7% (64,400 applications). Protection for industrial designs via the Hague System for the International Registration of Industrial Designs saw a 10.4% growth (21,807 designs).

International patent system, Patent Cooperation Treaty (PCT)

In 2019, the top ten users of the PCT were: China (58,990 PCT applications), the U.S (57,840), Japan (52,660), Germany (19,353), Republic of Korea (19,085), France (7,934), United Kingdom (5,786), Switzerland (4,610), Sweden (4,185) and Netherlands (4,011).

Top PCT Applicants:

For the third consecutive year, China-based telecoms giant Huawei Technologies, with 4,411 published PCT applications, was the top corporate filer in 2019. It was followed by:

• Mitsubishi Electric Corp. of Japan (2,661);
• Samsung Electronics of the Republic of Korea (2,334);
• Qualcomm Inc. of the U.S. (2,127);
• Guang Dong Oppo Mobile Telecommunications of China (1,927);
• Boe Technology Group of China (1,813);
• Ericsson of Sweden (1,698);
• Ping An Technology of China (1,691);
• Robert Bosch of Germany (1,687);
• LG Electronics of the Republic of Korea (1,646);
• LG Chem of the Republic of Korea (1,624);
• Panasonic of Japan (1,567);
• Sony (1,566);
• Hewlett-Packard of U.S. (1,507) and
• Microsoft of U.S. (1,370).

Top technologies:

Among fields of technology, computer technology (8.7% of total) accounted for the largest share of published PCT applications, followed by digital communication (7.7%), electrical machinery (7%), medical technology (6.9%) and measurement (4.7%). Among the top 10 technologies, semiconductors (+12%) and computer technology (+11.9%) were the fields with the highest rates of growth in 2019.

International trademark system (Madrid System)

U.S.-based applicants (10,087) filed the largest number of international trademark applications using WIPO’s Madrid System in 2019, followed by those located in Germany (7,700), China (6,339), France (4,437), Switzerland (3,729), United Kingdom (3,460), Japan (3,160), Italy (2,649), Australia (2,094) and Turkey (1,980).

Top Madrid filers:

L’Oréal of France with 189 applications headed the list of top filers, followed by Novartis AG of Switzerland (135), Huawei Technologies of China (131), Nirsan Connect Private Limited of India (124), Rigo Trading of Luxembourg (103), Apple of U.S. (101), Shiseido of Japan (84), BMW of Germany (78), Henkel of Germany (77) and Richter Gedeon of Hungary (69).

Top classes:

The most-specified class in international applications – computers and electronics – accounted for 10.1% of the total, followed by services for business (8.3%) and technological services (6.7%). Among the top 10 classes, pharmaceuticals and other preparations for medical purposes (+12.4%), and services in the area of education, training, entertainment, sporting and cultural activities (+9.6%) saw the fastest growth.

International design system (Hague System)

The number of designs contained in applications filed under the Hague System grew by 10.4% in 2019, reaching a record 21,807 designs.

Germany, with 4,487 designs, continued to be the largest user of the international design system. The Republic of Korea (2,736 designs) surpassed Switzerland (2,178) to become the second largest users of the Hague System in 2019. Italy and the Netherlands ranked fourth and fifth, respectively, with 1,994 and 1,376 designs.

Top Hague filers:

Samsung Electronics of the Republic of Korea with 929 designs in published registrations headed the list of top filers, followed by Fonkel Meubel marketing of the Netherlands (859), LG Electronics of the Republic of Korea (598), Volkswagen of Germany (536) and Procter & Gamble of the U.S. (410).

Top fields:

Designs related to recording and communication equipment (13.6%) accounted for the largest share of total designs in 2019 followed by furnishing (10.1%); means of transport (9.4%); packages and containers (6.4%); and lighting apparatus (6.2%). Among the top 10 classes, recording and communication equipment (+46.4%) and clothing (+35.1) saw the fastest growth.

Source: www.wipo.org

INPI Brazil | New Extension of Deadlines in Brazil by Ordinance No. 166/2020

By Carlos Cavalcanti. Lawyer, Managing Partner at Moeller IP Brazil.

Brazilian PTO published this Tuesday (04/28), Ordinance No. 166/2020, which extends until May 15, 2020, the suspension of deadlines referred to in Ordinance No. 120 and 160/2020, due to administrative measures to prevent infection and the spread of COVID-19.

• The Ordinance applies to all processes pending at Brazilian PTO, regardless of their nature. Therefore, deadlines are suspended for all cases.
• The Ordinance also implies the interruption of the counting of the deadlines that are in progress, which will flow again for the time remaining at the end of the suspension period. In other words, the term will be counted from where it left off.
• The terms that start in this period will start counting after the end of the suspension.
• The use of term suspension is optional and the user can petition at the INPI, through the online systems, if they prefer.

We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.

Please do not hesitate to contact us at any time with any doubt or questions you may have.

Source: www.inpi.gov.br/noticias/inpi-prorroga-suspensao-de-prazos-e-teletrabalho-temporario-ate-15-de-maio/view

INPI Brazil | Brazilian PTO Extends Suspension of Terms Determined by Ordinance No. 120 / 2020

By Carlos Cavalcanti. Lawyer, Managing Partner at Moeller IP Brazil.

Brazilian PTO published this Tuesday (04/14), Ordinance No. 161/2020, which extends until April 30, 2020, the suspension of deadlines referred to in Ordinance No. 120 / 2020, due to administrative measures to prevent infection and the spread of COVID-19.Temporary work on teleworking for employees and employees of the Institute was also extended until the same date.

– The Ordinance applies to all processes pending at Brazilian PTO, regardless of their nature. Therefore, deadlines are suspended for all cases.

– The Ordinance also implies the interruption of the counting of the deadlines that are in progress, which will flow again for the time remaining at the end of the suspension period. In other words, the term will be counted from where it left off.

– The terms that start in this period will start counting after the end of the suspension.

– The use of term suspension is optional and the user can petition at the INPI, through the online systems, if they prefer.

Source: http://www.inpi.gov.br/noticias/inpi-prorroga-suspensao-de-prazos-ate-30-de-abril/view

Argentinian Patent and Trademark Office Extends Suspension of Terms Determined by Resolution Nr. 34-2020

By Moeller IP. 

The Argentinian Patent and Trademark Office published the Resolution Nr 34-2020 in the Electronic Official Bulletin of April 13, 2020, introducing the following:

Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020 and 22-2020, until April 26, 2020, inclusive.

We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.

Please do not hesitate to contact us at any time with any doubt or questions you may have.

Source: https://www.boletinoficial.gob.ar/detalleAviso/primera/227720/20200413

INPI Brazil | On COVID-19 Priority Examination for Pharmaceutical Products and Processes

By Moeller IP.

The Official Bulletin 2570 from April 07, 2020, published the right to request priority examination for pharmaceutical products and processes and equipment and/or materials for use in health for the diagnosis, prophylaxis, and treatment of Covid-19.

The transcript of the Resolution issued follows below:

Art. 1 BRPTO Resolution No. 239, from June 4, 2019, published in RPI No. 2528, July 18, 2019, becomes effective with the following changes:

“Art. 12-A. The patent process in which one the object is related to pharmaceutical products and processes and equipment and/or materials for use in health for the diagnosis, prophylaxis and treatment of Covid-19 will have priority in the processing.

• 1 The request for priority processing must be filed until June 30, 2021, by the applicant, attorney or interested third party, individual or legal entity, and must contain a clarification indicating the relationship of the matter of the process with the diagnosis, prophylaxis of the population and/or treatment of patients at Covid-19.
• 2 The Directorate of Patents, Computer Programs and Topographies of Integrated Circuits (DIRPA) may regulate the submission and examination process and even temporarily suspend, in whole or in part according to the effectiveness of the service provision, the receipt of requests of the caput of the article for patent processes.

Source: http://www.inpi.gov.br/

The European Patent Office – Patent Index 2019

By José Santacroce. Partner and Head of Patent Department

Patent Index 2019

The European Patent Office (EPO) just published its Patent Index 2019, below a summary of the key statistics.

The EPO received last year a record 181 000 patent applications, 4% more than in 2018.

In total, nearly half of all patent applications came from companies based in Europe, with Germany alone accounting for some 15%. From the other regions, US firms dominated with a quarter of all applications, followed by companies from Japan, China and South Korea.

Origin of patent applications in 2019

In terms of growth, patent applications filed by European companies increased modestly. There was a strong rise in demand from the US. The steepest growth rates were posted by Asian companies, in particular Chinese and South Korean firms.

Top 10 applicants at the EPO in 2019

• 1.HUAWEI 3 524

• 2.SAMSUNG 2 858

• 3.LG 2 817

• 4.UNITED TECHNOLOGIES 2 813

• 5.SIEMENS 2 619

• 6.QUALCOMM 1 668

• 7.ERICSSON 1 616

• 8.ROYAL PHILIPS 1 542

• 9.SONY 1 512

• 10.ROBERT BOSCH 1 498

Top 10 countries for patent applications at the EPO in 2019

Among European countries with large volumes, the greatest increases in filings came from Sweden, the UK, and Switzerland. Filings from Germany remained stable and Italy saw moderate growth, while France and the Netherlands saw decreases.

Looking at countries with mid-range patenting volumes, Spain saw the biggest rise in applications. There were also increases in filings from Belgium and Austria.

Further significant growth was seen from companies in Portugal, Ireland, and Norway, albeit from small overall patenting volumes.

The patent applications filed with the EPO in 2019 also indicate Europe’s position as a key market for the next wave of digital transformation technologies.

Technical fields with most patent applications in 2019

Digital communication: The new top technology field at the EPO

Digital communication was the new top technology field at the EPO, reflecting the rapid development of 5G technologies.

China, the US, and Europe were the most active regions of origin. They each account for roughly a quarter of the patent applications in this field.

Computer technology: The second fastest-growing field

It was fuelled by the growing importance of Artificial Intelligence. Patent applications concerned especially machine learning, data retrieval, image data processing, and pattern recognition. Overall, US companies led this field, with European applicants not far behind.

The dominant position of digital technologies was clearly reflected in the list of leading applicants. Huawei topped the table, followed by Samsung, LG, United Technologies and Siemens.

Overall, European companies retained the largest share in seven of the ten most active technology fields. These include transport, where Europe continued to excel in the automotive sector. The same was also true for clean energy technologies.

Source: www.epo.org

Patent Linkage in Mexico

By Moeller IP.

Patent Linkage in Mexico

The Mexican linkage system refers to the cooperation between the Mexican Institute of Industrial Property (IMPI) and the Federal Commission for Protection against Health Risks (COFEPRIS) to avoid the granting of marketing authorizations for allopathic drugs which may infringe any in-force patent.

This linkage system was issued on September 19, 2003. It is established in articles 167 bis of the Health Supplies Regulations and article 47 bis of the Industrial Property Regulations which state the system procedure.

Authorization for an allopathic drug

Allopathic drugs are defined in article 224 of the Mexican Health Law as natural or synthetic substances having therapeutic, preventive or rehabilitative effects, which may be identified by their pharmacological activity, physical, chemical or biological characteristics and are presented in a pharmaceutical form.

Whenever a marketing authorization application for an allopathic drug is submitted to COFEPRIS, the applicant is required to either submit the documents which demonstrate that owns the patent or patents related to the active pharmaceutical ingredient (API), possess the corresponding license, both registered at the IMPI, or, according to the Mexican Linkage Gazette, declare under oath that it complies with the provisions applicable in patent matters.

In the case of the latter, COFEPRIS will request IMPI to confirm this statement. COFEPRIS will file a form detailing the following information about the marketing authorization application and deliver it to IMPI:

• Applicant of the marketing authorization
• Name of the API, salts as APIs or International Nonproprietary Name
• Chemical name according to the International Union of Pure and Applied Chemistry
• Structural formula of the API
• Pharmaceutical formulation, API and excipients
• Dosage form
• Therapeutic indications
• Dosage
• Drug presentations
• Drug characteristics
• Any additional information submitted by the applicant

The above information is considered confidential, thus only COFEPRIS and IMPI are aware of its contents.

Authorization procedure

Based on the information received, IMPI will have ten business days to confirm whether an in-force patent may be infringed. If no patent is found to be infringed, the marketing authorization application will comply with this administrative requirement and follow its normal procedure. Otherwise, IMPI will notify COFEPRIS which in turn will notify the applicant of the possible infringement. COFEPRIS will request the applicant to submit the corresponding license and if the applicant fails to do so the marketing authorization will be denied.

Mexican Linkage Gazzete

Regarding the Mexican Linkage Gazette, this document is published semi-annually by IMPI and its purpose lies in keeping a record of the in-force Mexican patents associated with specific APIs.

Patents listed in the Mexican Linkage Gazette include those of composition of matter, formulations, medical uses or combination thereof. These are listed automatically by the IMPI whenever a patent is granted. Alternatively, patent owners may also request the Mexican PTO to include a certain patent in the Gazette. Lastly, patents related to processes or methods of producing the drugs are expressly excluded from being published in the Mexican Linkage Gazette.

Conclusions

Mexican Patent Linkage System is limited to cases related to IMPI and COFEPRIS involving potential patent litigation between patent owners and applicants submitting new marketing authorizations. It was designed to avoid unnecessary litigation from these private parties, thus Its current design does not allow the direct participation of the patent owners or applicants of new marketing authorizations.

Patent owners may participate indirectly through ensuring its most relevant patents are listed in the Mexican Linkage Gazette. On the other hand, applicants of new marketing authorizations may submit additional information to argue its product does not infringe the patents listed in the Mexican Linkage Gazette.

Given the limited participation from the parties in the current Patent Linkage System so far, patent owners have resorted to filing patent infringement procedures to prohibit the production and commercialization of the infringing products while applicants of new marketing authorizations have resorted to nullity actions over patents. Both procedures are handled by the IMPI and its ruling may be appealed before the Federal Court of Administrative Justice, which, in turn, may be appealed before the Collegiate Courts.

Overall, in our opinion, the Mexican Linkage System remains imperfect as it could benefit from increasing the transparency of the procedure to both parties, patent owners and applicants of new marketing authorizations.

Source: www.gob.mx/impi