From the monthly archives: March 2013

In February this year the European trademark community took note of a leaked version of the European Commissions’s draft trademark legislation in reaction to the widely discussed Study on the Overall Functioning of the European Trademark System presented by the Max Planck Institute for Intellectual Property in February 2011 (pdf, 4.5 MB).

The so called ‘leaked proposal’, which immediately received a considerable press coverage (see e.g. WTR or MIP), basically consists of two draft regulations and one draft directive:

  • draft amended Council Regulation No 207/2009 on the CommuniyEuropean Trade Mark,
  • draft amended Regulation (EC) No 2868/95 on the fees payable to the OHIM,
  • proposal for a Directive to approximate the laws of the Member States relating to trademarks (Recast).

The leaked proposal is a pre-final text which gives extensive insight into the EU Commission’s plans to substantively refurbish the Community Trademark (CTM) system as we know it today.

The reasons why and by whom the legislative proposal was ‘leaked’ instead of being officially published on the EU servers lie in the dark, but it can be assumed that the political intentions outweigh the legal ones. As the drafts have been sent, inter alia, to the member organisations of the so called OAMI Users’ Group, a consortium of international NGO’s active in the IP sector and accredited to the OHIM, the leaker apparently intends to provoke a reaction of stakeholders, for instance to test the acceptance of the new legislation in a more conspirative way instead of risking open and public criticism. 

The MARQUES association considers itself as a defender of trademark owner’s and system user’s interests. Compared to other member organisations of the OAMI Users’ Group, MARQUES appears to be more interested in a public discussion as it now again involved the public in a discussion that many other stakeholders consider a topic for closed expert circles only. The extensive comments (pdf, also here) published yesterday (20 March 2013) also include a detailled summary of the substance of the draft legislation.

By this open approach MARQUES refuses to become a silent accomplice of the leaker and his political interests and, even more important, reminds lawmakers that openness and public consultation are vital to a democratic community and the acceptance of its laws.

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The new European patent system will provide two concurrent routes to patent protection on the continent, (i.) the classical EP bundle patent, “which does not benefit from unitary effect by virtue of EU Reg No 1257/2012” and thus has to be validated in each EPC member state where protection is sought and (ii.) the European Patent with unitary effect effective in all ‘contracting member states’ that have signed and ratified the Unified Patent Court Agreement (UPCA) at the time of grant.

While Unitary Patents are mandatorily subject to proceedings and lawsuits before the Unified Patent Court (Art 3 (a) UPCA), this is not the case for classical EP patents (cf. Art 3 (c), (d) UPCA). For EP patents and applications pending at the date of entry into force of the Agreement, Article 83 UPCA defines a rather liberal transitional scheme allowing EP patent proprietors and applicants to make use of the present European post-grant patent system for many years to come. This transitional scheme consists of two basic elements, a transitional period and an opt-out mechanism.

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With Document 7265/13 dated March 08, 2013, the Irish EU Presidency has published some information concerning setting up of the Preparatory Committee in the context of the Agreement on a Unified Patent Court. A meeting of the Friends of the Presidency group (Patents; see Document CM 1560/13) was convened on  February 27, 2013, with the objective of both hearing and considering delegations’ views on how this Preparatory Committee could be organised. According to the recently published Document, a clear consensus emerged from the Signatory States endorsing a non-paper circulated by The Netherlands and Sweden, including the proposal that the work be driven by the Member States, and thus outside the framework of existing institutional structures. In this latter respect, a number of Signatory States offered to put their resources – human and/or logistical – at the service of the Preparatory Committee once it begins its work. The European Commission offered its expertise, as and when requested by the Preparatory Committee.

Now, the Permanent Representatives Committee (COREPER) is invited to take note:

  • of the agreed position of the Signatory States regarding the Preparatory Committee of the Agreement on a Unified Patent Court, as set out in the paper contained in the Annex to Document 7265/13 and in the cover note thereof;
  • of the intention of the Presidency to convene the inaugural meeting of the Preparatory Committee on 26 March 2013 in Brussels; and
  • that Council, at the appropriate level, will be kept informed of progress of the work of the Preparatory Committee when needed.

A list of four main tasks to be elaborated in groups with project teams can be identified:

  • Legal framework,
  • Financial aspects,
  • IT & Facilities, and
  • Human resources & Training.

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U.S. President Obama signs the AIA into law on 16 September, 2011

The final package of the Leahy-Smith America Invents Act (H.R.1249, pdf) will enter into force on 16 March 2013 (for a list of amendments and their effective dates, see here). By this date, the most significant amendments of the new Act will enter into force, namely the transformation from the traditional first-to-invent regime to the new first-inventor-to-file regime.

Besides reducing the USPTO’s backlog of approx. 680.000 patent applications and improving patent quality, the main objective of the America Invents Act is to harmonise the US patent system better with international patent law standards and by that facilitate second filings of US applicants in foreign jurisdictions.

This is indeed a brilliant idea, not only for US applicants but also for European applicants and practitioners, as it will align the US system closer with the European patent system. However, event for those legal instruments that are clearly adapted to the European point of view, important differences remain. Some of those tiny differences that may have a huge impacts on practice are outlined below: 

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On March 16, 2013, the final (third) package of the Leahy-Smith America Invents Act (H.R.1249, pdf) will enter into force. This will include the transition from the traditional US fist-to-invent system to the first-to-file system as used in the rest of the world. In a recent press release the USPTO announced publication of the

On this blog’s German sister blog ksnh::jur we recently published a series of three postings dedicated to the changes the America Invents Act causes to US patent law. As this piece of US legislation implements one of the most important reforms of internation IP law in recent years, its provisions, legal effects and possibel shortcommings have been extensively – and partly exellently – discussed by  so many US blogs that there surely is no need to add another synopsis on a Europe-focussed IP blog like this.

However, as a large portion of our regular readers live and practice in the German-speaking part of Europe, we thought that some of them might appreciated to read about this topic in their mother tongue. The three articles are structured parallel to the three packages of the AIA that enter(ed) into force on 16 Sep 2011 and 16 Sep 2013 and on 16 Mar 2013:

Die Änderungen im US-Patentrecht durch den ‘America Invents Act’

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