International Patents

A recently published UPC implementation roadmap Indicates the UPC will start receiving cases on April 1, 2023. A three-month “sunrise” period, currently scheduled to begin on January 1, 2023, will allow users to access the Case Management System which will allow users to register as representatives and opt-out their patents.

U.S. sanctions and a Russian decree put a cloud of uncertainty around any efforts to protect intellectual property.

In April, President Biden issued an Executive Order prohibiting U.S. entities from making payments, directly or indirectly, to identified Russian banks, including the Central Bank of Russia, which is the only bank processing payments for Rospatent, the Russian patent office. The Department of the Treasury issued General License 13 which allows payments to continue until June 23. Then, on May 5, the Treasury Department issued General License 31 that specifically authorizes U.S. entities to continue seeking, obtaining, maintaining, prosecuting and defending Russian patents. This provision has no expiration date. Despite this relief, it may still be difficult to complete payments to sanctioned Russian banks.

Furthermore, it is uncertain whether IP owned by U.S. entities is or will be enforceable in Russia. Specifically, Russia's Decree 299 provides that patent holders associated with foreign states who “commit unfriendly actions” are entitled to “0 percent” of the actual proceeds of the person who used the invention without consent of the patent holder.

• Summary

The UK High Court has issued a ruling holing that software patents can be patented after all. Thanks to I/P Updates for passing this along.

• UK Court Ruling
• Summary and links

Indonesia recently launched a new online library for searching patents, copyrights, trademarks, and designs.

• Main portal

Korea is making substantive changes to its patent law effective July 1, 2007. The changes relax disclosure and claim requirements. In addition, the national-phase deadline is extended to 31 months from 30 months, it will not be possible to institute separate proceedings for correction of an issued patent while an opposition or nullity suit is in progress, and you can now select which claims you want to pay registration fees on when an application is allowed, in case you do not want to pay registration fees, as well as maintenance fees, on unneeded claims. In addition, Korea is changing their pre-grant opposition period to a post-grant opposition period.

• Discussion
• Summary of changes
• Detailed description of KIPO procedure

Lloyd-Wise, a law firm with locations in Singapore and other countries, has published a paper entitled “Problematic features of Singapore Patent Law.” The paper describes many potential pitfalls and legal complexities peculiar to Singapore. As stated on the front page of the paper, “many incurably invalid patents are being issued.”

The UK Patent Office has issued a Practice Notice in response to court decisions in Aerotel v Telco and Macrossan’s Application. This notice provides instructions as to how to discriminate between statutory and non-statutory subject matter.

• Read more.

Singapore Patents Registry reduces block extension fees to $0 (from S$1800, currently US$1,140). This applies to PCT national phase applications, with an international filing date on or after July 1, 2004. This means that for PCT national phase entries it will now be possible to make use of the significantly more flexible slow track option, by which the deadlines for examination and grant of the application are increased by 18 months, without incurring the substantial official fee. Lloyd Wise recommends that block extension of time be requested whatever the current status of the application, to give more time to decide on the final form of the claims. Even if a rapid grant is desired, there is no disadvantage in requesting the extension. Additional recommendations are found in their announcement.

More lenient grace period; PCT national filing time limit changes from 30 months to 31 months; Saturday now regarded as official holiday; new bar for public use outside of Korea; opposition system subject to being abolished.