From 1 October 2007 the United Kingdom Intellectual Property Office (UK-IPO) will no longer refuse trade mark applications at examination stage because of earlier conflicting trade marks. As part of the new procedure the UK-IPO will notify the applicant if there are any prior trade marks that the new trade mark may be confused with. The applicant will then have two months to respond to the report and elect if they want their application to proceed to publication. If the applicant does not respond in this time it will be assumed that they do want their application to be published.

At the same time that the new trade mark application is published, the UK-IPO will notify the owners of the earlier trade marks that they may oppose the new trade mark. The earlier trade mark owners will have three months from the new trade mark’s date of publication to lodge their formal opposition to the registration of the new trade mark.

If no opposition is received then the trade mark will be registered. Otherwise the applicant has three months to decide whether to file a defence against the opposition. If they choose to do so, then the Registrar may issue a preliminary indication of the likely success or failure of the opposition. Although the primary indication is not binding, it will be taken as being the outcome if the unsuccessful party accepts it. Otherwise if the preliminary indication is rejected then the parties have three months to file further evidence to support their case which will be heard by a Hearing Officer. If the opposition is successful the applicant may have to pay costs, while if it is unsuccessful the opposing party will have to pay costs. The amounts that will be awarded are based on a published scale of costs and are "awarded as a contribution to the other side's expenses, not as compensation and not as a penalty".

It will be possible to appeal the decision of the Hearing Officer to the independent judicial authority known as The Appointed Person, or to the High Court.

Sources and further information

UK-IPO Press Release - Changes to the examination process on relative grounds

UK-IPO Fact Sheet - Changes to Examination

UK-IPO Fact Sheet - Changes to Opposition

The Office for Harmonisation in the Internal Market (OHIM) has announced that the CTM-ONLINE database now provides access to CTM (Community Trade Mark) files. Such files usually contain all the correspondence between the OHIM and the CTM owner (or owner’s representative).

Confidential documents and those relating to non-published CTM applications will not be available to the public generally, however the owner of representative of the particular mark may view the files through the “My Page” section.

Currently the service is only available in English, with further language versions available in the future.

Source and further information

OHIM online information - Online Access to CTM files: New e-business tool enhancing CTM files accessibility

CTM-ONLINE

“Under the new rules, applicants may file two new continuing applications and one request for continued examination as a matter of right. Also, under the new rules, each application may contain up to 25 claims, with no more than five of them independent claims, without any additional effort on the part of the applicant. Beyond these thresholds, however, the new rules require applicants to show why an additional continuation is necessary or to provide supplementary information relevant to the claimed invention to present additional claims.

Placing conditional boundaries on a previously unbounded process provides for more certainty and clarity in the patent process. The result is that application quality will be improved and piecemeal or protracted examination will be avoided, enhancing the quality and timeliness of both the examination process and issued patents.”

The new rules are available in the Federal Register.

Source and further information

USPTO news article - USPTO Publishes Measures to Improve Patent Quality

Last week IP Australia announced that it received the first patent application though their new business to business channel. This service allows larger organizations to lodge high volume business transactions through a secure internet channel, where the transaction fees are automatically paid. The information is then loaded into IP Australia’s business system for processing.

The IP Australia press-release lists the following benefits for attorney firms using the business to business channel:

• “reduction in the time and costs involved in lodging patent applications;
• reduction in risk that the application could be lost in transit or miss a lodgement date due to a courier stuck in traffic; and
• the service is available 24 hours a day, 7 days a week, (except during standard system maintenance periods meaning when you’re ready to file, so is IP Australia.”

“IP Australia initially established a B2B reference group comprising IP attorneys and firms interested in pursuing electronic service delivery such as Phillips Ormonde and Fitzpatrick [whose independent service company, IP Organisers, produces IP Menu], Spruson and Ferguson, FB Rice, Davies Collison Cave, and CPA Software Solutions.”

Source and further information

IP Australia Press Release - IP Australia receives first business to business transaction

• “Advanced post-processing options that make results easier to use, review, edit, analyze and distribute. Pre-made templates turn search results into professionally formatted reports ready for immediate distribution in Microsoft® Word or Excel.
• An updated graphical interface with menu icons for common tasks, making navigation easier.
• Easy fill-in-the-blanks forms for editing and revising SearchSaves, Alerts and other stored data
• Links to fulltext journal articles and other documents are supported including Dialog eLinks, and document images for D&B® Company Reports, NTIS Technical Reports and Investext® Broker/Analyst Reports.
• 30-day history of all Dialog search activity, including document downloads
• Create and edit your search strategy in the Type-ahead buffer before running it
• Enter command statements up to 2,000 characters long
• Load saved search strategies from a file on your computer
• Save search results in Word, HTML, Text or Adobe PDF formats
• New XML, HTML and TEXT commands enable output in these formats for easy integration into other applications
• View links to Bluesheets and other reference materials in the new Databases pane
• Navigate your search with the new Session navigation pane
• Streamline post-processing with new mark-and-copy features
• Search Chemical Structures using drawing files (MOL) to retrieve data on relevant molecules from drug and chemical databases.”

Avantiq has also been updating their INSPIRO database, with the newest addition of the Chilean trademark database. This is the second South American database to be added to INSPIRO, with the Argentinan PTO database added late last year. The Chilean database currently contains over 350415 trademark registrations and applications and will be updated weekly.

The European Patent Office (EPO) is trailing a program to investigate if the work carried out by a patent office when the patent is first filed can be utilised by other patent offices in subsequent filings. The initial trial of the Utilisation Pilot Program (UPP) is to run until April 2008 for filings in Austria, Denmark, Germany and the UK, with the view to full-scale implementation in the future.

“The UPP offers participants fast track handling of the search application. The extended European search report (EESR) will be issued within a maximum of six months. Currently, UPP participants are receiving search reports within 2 months!”

Sources & further information

UK Intellectual Property Office: Utilisation Pilot Project (UPP)

European Patent Office news: UPP: Get on the fast track

European Patent Office: Utilisation Pilot Project

On 1 January 2008 Norway will become a member of the European Patent Organisation (EPO). It will be the final participant and signatory of the 1973 Munich diplomatic conference to join the EPO.

“Norway intends to deposit the instrument of ratification with the German government in October, in accordance with the rules set out in the EPC…”

Source & for further information

European Patent Office news: “Norway to join EPO”

Last week the Russian esp@cenet was launched, providing online access in the Russian language to over 60 million patent documents. The establishment of the service has been a joint project of the European Patent Office (EPO) and the Russian Federal Service for Intellectual Property, Patents and Trademarks (RosPatent).

“The EPO has been co-operating with Rospatent in the framework of the CIS and Mongolia project since the 1990s. The two offices signed a Memorandum of Understanding, with a focus on patent information promotion, at a meeting in April this year.“

Further Information

European Patent Office news: “Russian esp@cenet launched”

After becoming a sovereign state in June 2003, Montenegro has recently established a national Intellectual Property Office. Once the necessary forms are organised and a schedule of official fees are prepared trademark applications will be accepted.

For the time being, Montenegro has adopted the trademark legislation of the former State Union of Serbia and Montenegro without any modifications. It is expected that it will be possible to revalidate trademark applications applied for or granted under the form State Union.

(From ‘Intellectual Property Office is Established’, World Intellectual Property Report, Vol 21, No 4, July 2007, BNA International, p 104)