Administering global industrial design portfolios just got a little bit easier: The EUIPO becomes a Depositing Office for the Digital Access Service for Industrial Designs from 11 July 2020.
I’ve tried really hard to come up with a title for this piece that does justice to its subject, but I’m not sure I’ve nailed it… maybe I need to admit that there’s just no way to make design portfolio administration and priority-claiming processes sound sexy. But I promise this is some truly excellent news for registered design filers. I felt tangible relief – and yes maybe even excitement* – when I stumbled upon this hidden snippet: From the 11 July 2020 the EUIPO will become a Depositing Office for WIPO’s Digital Access Service (DAS) for Industrial Designs, which relieves quite a significant administrative burden on big design filers that whose registered designs start their life at the EUIPO. An opportunity to put our collective feet up for a moment, and let DAS do some of the work for us…
The EPO will increase its fees with effect from 1 April 2020, with an increase of around 4% for most fees. The 4% increase is fairly consistent across the board with the notable exception that the EPO appeal fee for non-SMEs*, will increase by from €2255 to €2705, representing an increase of €450 or 20%.
Most fees are associated with particular payment deadline. The fee you pay is dictated by the EPO’s fee schedule** on the day of payment, rather than the fee schedule on the day of the deadline. This means that even if a relevant deadline falls on or after 1 April, you may be able to pay the fee early, on or before the 31 March, to take advantage of the current, lower fee rate. (more…)
On 19 April 2016, two members of Keltie’s Design and Trade Mark Team, Emily Weal and Manuela Macchi, hosted a panel at the Managing Intellectual Property (MIP) Luxury Brand & Retail Forum in New York. Please see here for the conference programme.
The conference was attended mostly by New York based attorneys representing both US and European luxury and retail brand owners as well as by a good number of US private practitioners and a few European attorneys.
The Keltie-hosted panel included also Lynn Schreier, Senior Intellectual Property Counsel of the crystals, jewellery and accessory manufacturer Swarovski and brought to the delegates a European perspective on design protection, pre-product launch design clearance and 3D trade marks as a complement to design protection. (more…)
Keltie LLP was pleased to sponsor Managing IP’s Luxury Brands and Retail Forum which was held in London on 23 September 2015. Keltie’s panel focussed on design protection, and in particular on strategies involving registered designs. Manuela Macchi chaired the panel, Emily Weal spoke on the benefits of registered designs, and Benjamin Wright from JLR spoke about international filing strategies for registered design. Emily’s slides are available below – watch this space for accompanying blog posts giving more details of the design cases discussed in the talk. (more…)
Applications for Petitions for Review at the EPO do not have a have a high success rate. Of the 105 currently-available Decisions relating to Petitions for Review, the vast majority have been found to be inadmissible; only four have resulted in a successful outcome for the applicant (i.e the decision under review being set aside) – R15/11, R21/11, R3/10 and R7/09, and one in a successful interim decision for the Petitioner, with the final decision still pending – R19/12, putting the current hit rate at just under 5 %.
Decision R19/12 issued in the last month or so, and makes for interesting reading. The Decision is only available in German – mine’s somewhat rusty, so there’s a (very!) crude machine translation here for anyone who is interested to see it*. It isn’t going to be affecting practice for any EPA’s, but it will have a significant impact on internal organisation at the EPO.
As well as taking a look at the reasons for the success-so-far of R19/12, this post will also delve a little deeper into the four successful Petitions to see how they come to succeed, and see what became of the patents after the proceedings were reopened… (more…)
Okay – I admit it – that’s a massive lie. Decision G1/12 of the Enlarged Board of Appeal, which issued on 30 April, is not exactly a thrills-and-spills ride. The questions are uninspiring, and there is some pretty beardy, academic stuff in the Decision, but it’s all about the sort of procedural stuff that could just save a representative’s behind from the gluepot one day, so if you’re an EPA, I suppose it might be worth a cursory glance.
If you don’t have the time to wade through it yourself, the headline is: if you accidentally name the wrong Appellant on a notice of appeal, but you intended to name the right one, and the right one is inferable from the file, you can correct it. Which we pretty much knew (or at least suspected) already given existing case law, but now we know it a bit more. If you want to find out how getting to that earth-shattering conclusion could possibly have required the input of the EBA, here’s a run-down of events. Peruse through it while I write to Alton Towers and suggest that they call their next rollercoaster the G1/12-o-nator.
Cast your mind back to December 2012 when the Unitary Patent Regulation and Unified Patent Agreement were approved by the European Parliament, and you may recall a lot of press releases explaining what great value for money the unitary patent would be. In particular, we were told that the unitary patent would bring patent protection in Europe financially in line with patent protection in other countries, such as the US and China.
Back then, the fees relating to the unitary patent were completely unknown. Fifteen months later, we know little more than we did then: it seems likely that there will be no fee for validating a unitary patent, and rumours are that the opt-out fee will be in the region of €50 – €100, but we are still in the dark when it comes to the most important fees of all: the renewal fees of the unitary patent. The only titbit that has recently escaped the lips of anyone in the know came from the EPO president, who said cryptically in December 2013 that the renewal fees would be “higher than many would hope, but lower than some might fear”.
The level at which the renewal fees are set will be key in determining whether the unitary patent can deliver on its promise of value for money. The Select Committee responsible for setting the renewal fees must balance on the one hand the need to keep the unitary patent financially attractive to industry, and on the other hand the need for the unitary patent to be self-financing. The second part of this equation is difficult for us to assess from the outside. The first half, however, is susceptible to a bit of speculation.
So, in this post, which will feature a lot of graphs, we will be taking a look at how value-for-money (in terms of renewal fees) differs among countries within the EPC and how the EPC and Unitary Patent countries currently compare to the US and China, and we will consider what level the Unitary Patent fees might need to be if they are to match the value-for-money offered by Chinese and US patents. We’re even going to go so far as to put out a prediction. We fully expect to be proved completely wrong, but hope that throwing out some actual numbers might generate some interesting discussion from commentators…
Back in September we reported on the result of the Magmatic v PMS case in which the Trunki faced off against the Kiddee Case at the High Court before the Hon. Mr Justice Arnold. At the High Court, PMS’s Kiddee case was found to infringe Magmatic’s Community Registered Design (CRD) for the Trunki.
However, PMS were given leave to appeal the case, and in January the case was heard in the Appeal Court before Lord Justice Moses, Lady Justice Black and Lord Justice Kitchin. The judgement has just been made available, and reveals that the Appeal Court reversed the High Court’s judgement, and ruled that the Kiddee case did not, in fact, create the same overall impression as Magmatic’s CRD, and so did not infringe. IPcopy takes you for another ride through the suitcase-animal fair…
The Lego movie. Is. Awesome. And certainly much more fun than revising for the EQE pre-exam, which is what I probably should have been doing with my Saturday afternoon (here’s hoping the claim analysis section is all about co-operable building blocks). There are thrills; there are spills; there’s some beautifully poignant humour. It’s the Matrix meets Toy Story 3.
Enough advertising: the reason I get to write about the Lego Movie here is that there’s a delightful little patent sub-sub-sub-plot involving Lego Batman. Which gives me the perfect excuse to assess the IP reference for our IP Hit or Miss series, in the interests of IP education, you understand. The potential ‘spoilers’ are so minor as to be barely worthy of the word, but if you don’t want to see a few paraphrased words from the movie, you may wish to look away now.
IPcopy commentator Antonio Pizzoli has pointed us in the direction of the EPO’s draft rules relating to the Unitary Patent Regulation which you can find here (thanks Antonio!). IPcopy hadn’t come across this document before, and it makes for an interesting, if slightly worrying, read.
Clearly it is a work in progress, and the draft is peppered with interesting comments and alternative proposals.