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UPC and the Bolar exemption
The so-called ‘Bolar exemption’ finds legal basis in EU Directive 2004/27/EC modifying Directive 2001/83/EC on the Community code relating to medicinal products for human use. Article 10(6) of EU Directive 2001/83/EC states that:
Double Protection between national Patent and European Patent with or without the unitary effect
The European Patent with unitary effect (“Unitary Patent”) will be introduced soon. The final stage of the preparatory work will be accomplished by the end of this summer and the final missing ratification will then be deposited by Germany.
Germany has deposited its ratification for the UPC Agreement
Germany has ratified the UPC Agreement on February 17, 2023, see
This means that the UPC agreement will enter into force on June 1st, 2023. The UPC Agreement is one of the most important evolutions in the patent landscape in Europe for more than 40 years.
As a consequence, the sunrise period for requesting an opt-out starts on March 1st, 2023. This means that EP patent, EP patent application as well as SPC owners can file from this date on an opt-out according to Art 83(3) UPC to opt-out from the jurisdiction of the UPC. For more information, please refer to our blog, see.
Since January 1st a delay of grant and early request for unitary patent is available at the EPO. For the patents, for which a delay of grant has been requested, the grant will be published on or after the entry into force of the UPC Agreement.
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.