Publications, press articles, rankings, awards
Early request for Unitary Patent possible from January 1st, 2023
The European Patent with unitary effect (“Unified Patent”) will be introduced soon. The final missing ratification is expected to be deposited by Germany in December. (more…)
EPO abolishes 10 day “delivery grace period”
1. Under the current EPC system, letters from the EPO are deemed to be delivered to the addressee on the tenth day following its handover to the postal service provider. (more…)
Infringement of the Protected Geographical Indication COGNAC
The INPI recognizes an infringement of the Protected Geographical Indication COGNAC by a trademark claiming eaux de vie benefiting from the geographical indication “Cognac”.
The COGNAC appellation is protected as a Protected Geographical Indication (PGI) at the European level.
The use of the COGNAC appellation is therefore regulated so that only spirits produced within a delimited production area and respecting the particular conditions of production as to the method of production, ageing and alcoholic strength defined by the specifications attached to this PGI, can benefit from it.
On November 3, 2021, the company COGNAPEA filed an application for the French trademark Cognapea which, following an objection from the INPI, claimed “Eaux de vie benefiting from the geographical indication “Cognac” in class 33.
Following the publication of this trademark application, the Institut National de l’Origine et de la Qualité (INAO) and the Bureau National Professionnel du Cognac (BNIC) jointly filed an opposition to the registration of this trademark application on the basis of the infringement of the geographical indication COGNAC.
INPI recalled that the geographical indication COGNAC is protected at the European Union level and that any infringement must be examined exclusively in the light of Regulation (EU) 2019/787 of April 17, 2019, which provides in particular in Article 21 that geographical indications are protected against “any usurpation, imitation or evocation, even if the true origin of the goods or services is indicated (…)“.
INPI further clarified that, according to the aforementioned article of the Community Regulation, geographical indications may be used by any operator marketing a spirit drink that complies with the corresponding specifications, but that according to the same article, the “evocation” of these geographical indications for such products is not allowed.
The INPI recognized that this trademark application constituted an infringement by “evocation” of the COGNAC indication insofar as it consisted of the sequence COGNA- and claimed products identical to those benefiting from the geographical indication.
It also admitted that such an evocation, by only partially reproducing the geographical indication COGNAC, could lead to a weakening of its reputation by trivializing it.
Consequently, and even though the contested trademark application claimed exclusively “Eaux de vie benefiting from the geographical indication “Cognac”, the INPI pronounced the total rejection of the Cognapea trademark application (INPI Opposition Decision n°OP22-0433 of 26/08/2022).
National measures accompanying the implementation of the unitary patent
It is expected that the Agreement on a Unified Patent Court (UPCA) will enter into force in spring 2023. At the same time the European Union regulation 1257/2012 and 1260/2012 will enter into force relating to the European patent with unitary effect (Unitary Patent) and the translation arrangements.
The booklet “National measures accompanying the implementation of the Unitary Patent” is inspired by the online publication “National law relating to the EPC” and contains information regarding the most important national measures accompanying the implementation of the Unitary Patent. It is accessible on the website of the EPO.
The booklet contains information about:
• a safety net for validating a EP patent in a participating member state in case the request for the unitary patent protection is rejected – this concerns for example the payment of annual fees, filing of a translation or other formalities;
• the simultaneous protection of a Unitary Patent or a classic European patent and a respective national patent;
• territorial field of application of a unitary patent, namely the effect of the unitary patent in overseas territories and areas; and
• other various aspects.
The booklet is regularly updated in its HTML version. A pdf version will be published soon.
The information published by the EPO depends on the information provided by the member states and the information may be not accurate or incomplete. The booklet is intended to give a first overview and before taking any decision the information is to be confirmed by a specialized national patent attorney, patent agent, or attorney-at-law.
Systematic top-up search for earlier national rights by the EPO
The EPO will conduct additional searches to determine earlier national rights and further determine their prima facie relevance starting September 1, 2022.
The EPO already carries out a search for prior European patent applications, which are filed before, and published after, the filing date of a European patent application in question. Such earlier European patent applications are relevant for novelty in the sense of Art. 54(3) EPC.
As of September 1, 2022, the EPO will further conduct systematic searches to further identify prior national rights and assess their prima facie relevance free of charge.
An earlier national right is a national application filed before, and published after, the filing date of a European patent application in question.
Earlier national rights are not considered prior art in the context of a European substantive examination, but may be invoked in national proceedings to revoke the European patent in the country in which the earlier national right was filed, according to Art. 139(2) EPC. To address an existing earlier national right in a particular country, applicants may file separate sets of claims for said country before the European examination is complete, as stipulated in R. 138 EPC.
The examining division will forward any relevant national rights together with a communication under R. 71(3) EPC informing on the EPO’s intention to grant a European patent.
This newly offered service of the EPO intends to help applicants to make informed decisions when considering applying for a Unitary Patent, which allows only one set of claims for all participating EU Member States.
More details on the additional search may be found under https://www.epo.org/news-events/news/2022/20220725.html.
EPO welcomes Montenegro as new member state
Montenegro accomplished the final step towards acceding to the European Patent Convention on July 15, 2022, and will thus become the 39th member state of the European Patent Organisation from October 1st, 2022.
1. Until now, Montenegro had the status of Extension State and it was thus possible to extend to Montenegro the protection conferred by the European patent applications or patents by paying the corresponding extension fee within six months of the date on which the European Patent Bulletin mentions the publication of the European search report, or, where applicable, within the period for performing the acts required for entry of an international application into the European phase.
The extension system remains applicable to European and international patent applications filed before termination of the relevant Extension Agreement and to European patents granted on the basis of such applications.
2. It will be possible to seek protection in Montenegro as a designation state through payment of the designation fee for all European and international patent applications filed from October 1st, 2022.
3. The current list of member states of the EPO with the corresponding accession dates can be found at: https://www.epo.org/about-us/foundation/member-states.html.
This IP Alert is for information purposes only and does not constitute legal advice.