The EPO has decided that all time limits expiring on or after 15 March 2020 are further extended until 2 June 2020 (see here).
On April 9, the WIPO International Bureau issued a statement that interprets the current circumstance of global COVID-19 disruption as falling under PCT Rule 82quater.1 providing for excuse of delay in meeting PCT time limits (which may relate to the submission of documents and/or the payment of fees) due to reasons of force majeure. Namely, the current global pandemic should be considered to be a “natural calamity …. or other like reason”. The International Bureau of WIPO urges all PCT Offices and Authorities to likewise adopt this interpretation.
The International Bureau of WIPO will treat favorably any PCT Rule 82quater request made citing COVID-19 related issues and not require evidence to be provided that the virus affected the locality in which the interested party resides. Again, the International Bureau of WIPO urges PCT Offices and Authorities to do likewise.
Although this provision would not be an effective remedy in a situation in which an international application had lost its legal effect as a result of having been declared considered withdrawn, for example, for having failed to pay the appropriate fees within the prescribed time limit, the receiving Office of the International Bureau of WIPO has decided to delay the issuance of any such notifications until May 31, 2020.
Furthermore, the International Bureau of WIPO recommends that:
a. for at least one further month (potentially to be further extended), such notifications should only be issued in relation to deadlines which have expired over two months previously; and
b. receiving Offices waive the charging of late payment fees under PCT Rule 16bis.2.
See the full statement.
The EPO has decided that all time limits expiring on or after 15 March 2020 are further extended until 4 May 2020 (see here).
With a non-unanimous decision, the German Federal Constitutional Court held today that the Act of Approval to the Agreement on a Unified Patent Court is void (see the decision).
Personally, I hope that from the rubble caused by recent events, including this decision, the EU can build a better European integration, within which there is also a more solid and shared package of legislative measures for a Unitary EU patent and a Unified Patent Court.
On April 26, 2018, the United Kingdom has deposited the instruments of ratification of the Agreement relating to the Unified Patent Court (UPCA).
The Preparatory Committee of the UPC has confidently declared that this year has begun well, although there remains more work to do before the provisional application phase can commence – not least the outcome of the complaint against the UPCA pending in the German Federal Constitutional Court which will influence the speed of moving to the final stage of the project. See Committee full communication.
Actually, the announcement from the UK Intellectual Property Office and the statement delivered by the Minister for Intellectual Property, Sam Gyimah MP make clear that such ratification triggers another significant issue of the Brexit negotiations, rather than being a positively decisive event for the UPC. Namely, the UKIPO has pointed out that “the unique nature of the proposed court means that the UK’s future relationship with the Unified Patent Court will be subject to negotiation with European partners as we leave the EU” (see full announcement). The Minister for IP has stated that “now we are well placed to make sure we turn the changes – which will be the central part of our exit – into opportunities. One of those opportunities is to make sure we continue to strengthen and develop the international IP framework” (see full statement).
In this regard, even the controversially optimistic opinion on consequences of Brexit for the UPC, given in September 2016 by Richard Gordon and Tom Pascoe (from Brick Court Chambers), pointed out that the UK would be required to accept the supremacy of EU law in its entirety as regards all patent disputes as fall within the jurisdiction of the UPC, and that this may be politically significant.
In fact, Art. 20 UPCA establishes that the Court shall apply Union law in its entirety and shall respect its primacy (see also Arts. 21 and 24 UPCA).
Even the UPCA will need to be amended as to (only apparently) formal provisions. For instance, Art. 1 UPCA establishes that “the UPC shall be a court common to the Contracting Member States and thus subject to the same obligations under Union law as any national court of the Contracting Member States”, but Art. 2 UPCS establishes that “‘Member State’ means a Member State of the European Union” and “‘Contracting Member State’ means a Member State party to this Agreement”. Another noteworthy amendment is required to Art. 7 UPCA, currently establishing that one section of the UPC will be in London.
Therefore, it appears that a Diplomatic Conference would be needed to introduce the possibility for the UK, after having left the EU, to be party to the UPCA.
Provided that the Court of Justice of the EU will not issue any decision against this possibility.
In the end, the ratification by the UK makes the start of the UPC provisional application phase closer, but it does not render the UK participation to the UPC more certain.
According to a decision of the Administrative Council of 13 December 2017, from April 1, 2018, the search fee for the supplementary European search for Euro-PCT applications where the international search report was drawn up by the United States Patent and Trademark Office, the Japanese Patent Office, the Korean Intellectual Property Office, the Chinese Intellectual Property Office, the Federal Service for Intellectual Property (Russian Federation) or the Australian Patent Office is no more reduced. The supplementary European search amounts to € 1.300,00.
According to Rule 111(2) EPC decisions of the European Patent Office which are open to appeal shall be reasoned. The Board of Appeal pointed out that the purpose of this requirement is to enable the party or parties and, if an appeal is filed, the Board of Appeal to examine whether a decision taken by a department of first instance was justified or not. It is the established case law of the Boards of Appeal that, in order for a decision to be reasoned, it must contain, in logical sequence, those arguments which justify the decision. The conclusion drawn from the facts and evidence must be made clear. Therefore, all the facts, evidence and arguments which are essential to the decision must be discussed in detail.
The appeal concerned an opposition decision stating that “the opposition division agrees with the analysis of the opponent. Claims 1 and 10 of the main request thus introduce subject-matter which extends beyond the content of the application as filed. Hence, the main request as a whole is not allowable”.
The Board of Appeal disputed such statement, holding that it remained entirely obscure why the opposition division reached these conclusions and, in particular, for what reason the opposition division could not follow the arguments of the appellant-proprietor. A reasoning for its conclusion, in the form of a logical sequence of arguments, taking into account the facts, evidence and arguments essential for reaching it, dealing especially also with those of the party negatively affected by this conclusion, here the appellant-proprietor, have not been given.
Similarly, the opposition decision stated the conclusion of the opposition division with the sentence: “The opposition division could not follow the arguments of the opponent and agreed on the other hand with the arguments put forward by the proprietor”.
Again, the Board of Appeal pointed out that such statement did not constitute adequate reasoning.
Also, the Board held that the failure to provide adequate reasoning in the decision in accordance with Rule 111(2) EPC amounted to a substantial procedural violation.
see full decision
The decision of the Board of Appeal concerns a patent, claim 1 of which recites: a method executed within a base station for registering a wireless terminal with a home agent, comprising:
- receiving … identifying indicia associated with a subscriber from the wireless terminal when the wireless terminal requests access to a network;
- providing the identifying indicia to an authentication server;
- receiving, at said base station, a profile associated with the subscriber, wherein there are a plurality of home agents to which registration information from the wireless terminal could be routed, wherein the plurality of home agents are associated with different mobile virtual network operators, wherein the profile identifies a plurality of home agents that are assigned to a mobile virtual network operator associated with the subscriber in a list, and wherein the profile is received from the authentication server; and
- routing registration information from said wireless terminal to an identified home agent, wherein routing registration information comprises receiving a registration request at the base station, resolving at the base station which home agent to utilize during registration by selecting one of the identified plurality of home agents in the profile, and transmitting the registration request from the base station to the selected home agent.
The examining division had commented that “the question of whether the network operator accepts to have an entity outside his own network … is a business policy decision as this is not imposed by technical limitations”.
On the contrary, the board held that moving the selection of the home agent to the base station is not just related to a business policy decision, since in a mobile network there will clearly be technical consequences, for example concerned with hand-over from one base station to another which will impact on the various tunneling connections required.