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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.
METAVERSE: How to protect trademarks and designs in a virtual universe?
The Metaverse is a new place of exchange, not only for playful activities but also for commercial ones. Brands and products known on the traditional markets are offered to Metaverse users.
A new trend is to use the Metaverse as a base for launching new products, in particular through a NFT (Non Fungible Token) which represents the virtual image of a product offered for sale on the traditional market. Thus, the purchaser of a NFT representing the image of a product, will be able to get the product upon presentation of the NFT, the NFT being used as proof to establish the property of the purchased product, proof of authenticity and the right to have the product delivered on request.
There is thus a certain porosity between the traditional markets and the virtual world of Metaverse.
Therefore, how to prevent the use of a trademark or a design in the Metaverse? Conversely, how to protect a trademark or a representation of a product which has been created in the Metaverse in order to prevent third parties from using it on the traditional markets?
Given this new economic challenge, which is the strategy to protect trademarks and creations?
Trademarks are registered for the products in respect of which they are intended to be used, e.g. clothing, shoes, perfumes, sports goods. Is this protection sufficient for a trademark use in the Metaverse?
The use of a trademark in the Metaverse can be done in different ways:
- Use for the promotion of a product sold on the traditional market, and/or
- Use for the offer or sale of a NFT representing the virtual image of a product, on the Metaverse,
A company could offer for sale with the same mark both the real product and the NFT representing the virtual image of this product.
In such a case, the protection of the trademark must be adapted to the market on which it is to be used, this use being a use in the course of trade. Thus, it will be appropriate to extend the protection of the trademark to goods and services offered on the Metaverse, such as digital images of footwear, computer programs, services for the presentation of goods through virtual images for sale and services for the presentation of virtual images of goods for recreational or educational purposes.
The trademarks used on the Metaverse will also have to be protected against their use in the virtual world and on the traditional market too.
As regards designs, if they are new and have an individual character, we shall have to examine the opportunity to register them not only for the physical product (e.g. for shoes) but also for the digital representation of the image of the product (e.g. the virtual image of the shoe).
Designs may also be registered for the representation of avatars, virtual environments, and also logos when these are used for decorative purposes in the Metaverse.
Watch is also recommended to ensure that third parties are not using the trademark or design without the owner’s consent.
Watch of marketplaces such as Amazon or Alibaba must be complemented by a watch of NFTs’ sales platforms, such as OpenSea, in order to identify and stop the sale of NFTs representing virtual images of trademarked products, often proposed under accounts identified with the owner’s trademark, without its consent.
Lavoix remains available to discuss the above at your best convenience.
Creation of a European patent with unitary effect and a unified patent jurisdiction
Damien Colombié, Industrial Property Attorney, and Camille Pecnard, Attorney at Law at LAVOIX, come back on the impact of the European Patent with Unitary Effect and the Unified Patent Jurisdiction, in page 5 and 6 of the weekly La Semaine Juridique.
To read the full article of La Semaine Juridique, click here.
EPO survey on grace period
1. The European Patent Office published recently the result of a survey regarding a grace period for novelty.
The EPC requires to date strict novelty for the subject matter of EP patents, rendering publication of claimed subject matter before filing of the EP patent application opposable to the patent irrespective of the question whether the publication stems from the applicant.
Other jurisdictions (e.g. US and JP) provide grace period systems that permit obtaining valid patents even if the claimed subject matter was published by the applicant before filing the patent application.
The survey assesses the impact of the current strict system and the possible impact of a system with grace period.
2. Most of the users of the EPO grant system are aware of the constraints and comply if needed by postponing disclosure of an invention. The highest rate of negative impact of the current system is borne by research organizations (universities), due to their need of early publication of research results.
Universities also have the highest rate of EP applications that are prevented due to the subject matter being disclosed before the possibility to file. Second to universities, applications from US companies are prevented due to pre-filing disclosure.
3. European SMEs, universities and Japanese/Korean companies suffer most from postponed disclosures with a negative impact rate of 68%, 71% and 82% respectively.
Public research organizations (PRO), European universities and Japanese/Korean companies are most impacted by pre-filing disclosures with a negative impact rate of 100%, 95% and 99% respectively.
4. The report also presents possible advantages and inconvenients of four grace period systems: an unrestricted grace period system in which the applicant does not need to accomplish any supplementary act in order to benefit from the grace period; a declaration based system in which the applicant has to declare the pre-filing disclosure; a prior user rights system in which use based on the pre-filing disclosure is not infringing; and a safety net system which combines the two latter systems.
Whether the EPC will be amended in the future, and if so in which way, needs to be seen.
The whole survey is available here
This IP Alert is for information purposes only and does not constitute legal advice.
The final rules for the European Patent Litigation Certificate are being adopted on 15th June 2022
Article 48 of the Agreement on the Unified Patent Court (UPCA) defines the obligation for parties to be represented before the Unified Patent Court (UPC).
EPO publishes second edition of the Unitary Patent Guide
Background
It is expected that the Agreement on a Unified Patent Court (UPCA) will enter into force end of 2022 or beginning of 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 Select Committee of the Administrative Council of the European Patent Organisation has prepared the secondary legislation, in particular the Rules of procedure relating to Unitary Patent Protection and the Rules relating to the Fees for Unitary Patent Protection. Recently, some of the rules have been updated together with the Unitary Patent Guide.
Unitary Patent Guide
The Unitary Patent Guide explains in detail the procedure at the EPO for obtaining a Unitary Patent and the annex procedures.
In particular, it provides:
• General information about the Unitary Patent (Section A);
• Details how and when the request for unitary patent protection has to be filed and which information has to be provided to the EPO (Section B)
• The compensation scheme for specific SME and organisations (Section C);
• How and when the renewal fees have to be paid (Section D);
• The publication of the EPO regarding the Unitary patent, in particular the content of the register and a file inspection (Section E);
• Details how to register transfers, licences and other rights and file statements on licences of right (Section F);
• Other procedural questions like the language regime, representation and fee payment (Section G);
• Legal remedies against the EPO decisions, in particular the role of the Unified Patent Court and interlocutory revision by the EPO (Section H); and
• Transitional Measures.
The Unitary Patent Guide is regularly updated in its HTML version.