Divisional applications may again be filed as long as the parent application is pending

On 16 October 2013 the European Patent Office's Administrative Council adopted another amendment to Rule 36 of the Implementing Regulations to the EPC, dealing with the requirements for filing divisional applications. The purpose of this revision is to alter the existing approach of requirements governing divisional patent applications.

The EPO has amended Rules 36 and 135 of the Implementing Regulations to the EPC to enable divisional applications to be filed while the parent application is still pending. That is, the revision reverts back to the wording of Rule 36 as it stood before the current wording that took effect on 1 April 2010. This was not the only amendment adopted, however. An additional fee has been established as part of the filing fee for divisional applications in the case of divisionals of divisional applications. Accordingly, Rule 38 of the Implementing Regulations to the EPC has also been amended.

The intent behind the different revisions to Rule 36 has been to restrict the use of divisional applications as a strategy to extend the life of patent applications that looked as if they were going to be refused. The EPO's goal has been to afford certainty to third parties and decrease the number of divisionals filed, thereby reducing the additional workload they represented.

In the amended version currently in force, the EPO specified 24 months as a time limit for filing divisional applications. Specifically, it was stipulated that divisional applications could be filed:

• within 24 months of the Examining Division's first communication in respect of the earliest application for which a communication had been issued, or

• within 24 months of any communication in which the Examining Division had objected that the earlier application did not meet the requirements of unity of invention (Article 82 EPC), provided that this objection was being notified for the first time.

However, the outcome has not been as expected. Numbers of divisional applications have actually grown, because applicants have preferred to file divisionals before the end of the 24-month time limit, as a precaution. Not only that, but interpretation of the current wording of Rule 36 is not straightforward; in fact, it was revised further a few months before it was to enter into force. There have, as well, been numerous complaints from applicants who feel that the current wording of Rule 36 goes against their interests. Filings of successive divisionals from the initial application remains possible and is another aspect that has not improved. Thus, Rule 36, as it currently stands, has been more of a problem than a solution.

With this new revision the EPO has decided to try a new approach to solving the initial problem, i.e., limiting use of divisionals as a means of indefinitely extending the life of patent applications.

Under the new approach, the 24-month time limit has been rescinded, hence divisional applications may once more be filed as long as the parent application is still pending. However, an extra fee has been added on top of the filing fee, perhaps a simpler and more direct way to deter applicants who might be interested in filing successive divisionals.

The amount of the extra fee remains has yet to be decided, and discussions are planned, but the idea is to increase the fee progressively for each generation of divisional applications filed. The amendment provides that the first divisional application filed will not be subject to an additional fee.

This new revision of Rule 36 will enter into force on 1 April 2014 and will be applied to divisional applications filed on or after that date.

Author: Ruth Sánchez

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China passes new Trademark Law

On 30 August 2013 the Standing Committee of the National People's Congress, China's top legislative body, passed the third revision to the Trademark Law. The new law will take effect on 1 May 2014. Here are some of the main changes:

Faster prosecution: Under the former law there were no time limits for prosecuting applications, oppositions, requests for cancellation, or disputes, and proceedings were very slow. The law has been amended to specify time limits of from 9 to 12 months for each proceeding, extendible for 6 or 12 months.

Sound and other non-traditional trademarks The new law paves the way for registration of sound marks and other non-traditional marks, though the latter are not specifically mentioned in the amended version of the law.

Multi-class filings Up to now, trademark filings in China have required a separate application for each class, even for the same trademark. Under the new law, China joins other countries, like Spain, in allowing a single application to claim multiple classes.

Electronic filing: Applications may be filed electronically now, but only on a limited basis. The new law specifies electronic filing as a valid means of filing applications and also makes provision for the electronic filing of all sorts of documents relating to an application.

Labeling of well-known brands: From entry into force of the new Trademark Law, sellers and manufacturers will not be able to label their products as well known in any sector of trade. In the event of non-compliance, the seller/manufacturer may be fined RMB 100,000 (approximately 12,500 euros).

New grounds for contesting bad-faith applications: Under the provisions of the new law, a trademark shall not be registered for goods that are the same or similar to those on which an earlier mark has been used where the applicant for the trademark has had a contractual, business, or other relationship with the owner of the earlier identical or similar mark and had knowledge of the earlier mark.

The Berne Convention in the modern age, with Spanish legal principles as a point of reference

In the tumultuous times currently faced by copyright, the best thing to do is to go back and look for handholds at the source from which considerable rivers, tributaries and springs flowed for authors.  At a time when scientific knowledge seems to be limited to the microscopic boundaries of a 140-character “tweet” or confined to a post in a topical blog, it will be good to take our hats off to genuine scientific contributions.                  

A group of Spanish professors and experts in the field of copyright, led by the master Rodrigo Bercovitz, has just published a commentary of almost 1700 pages on the Berne Convention entitled Comentarios al Convenio de Berna which analyses, provision by provision, the intricacies of this key document in the history of copyright protection.        

The extreme importance of this Convention was consolidated by the tribute paid to it by the World Trade Organization’s TRIPS Agreement, among the tributes paid by many other international and Community initiatives. The WTO decided to adopt Berne as a legal reference framework for all countries.         

International legal doctrine did not, however, rise to the occasion.  Notwithstanding a number of isolated contributions, there did not seem to be any specific work that did justice to the magnitude of Berne’s contribution.  This void has now been filled as a result of this book with Spanish roots.                                                                                                          

Comentarios, published by Tecnos, contains the work of up to 15 university scholars, such as  Pilar Cámara, Ignacio Garrote, José Carlos Erdozaín, Nazareth Pérez de Castro and Rafael Sánchez Aristi, all of whom have proven experience in the field of copyright. It is cause for satisfaction that one of the contributing authors is the Doctor of Laws Patricia Mariscal Garrido Falla, a lawyer at ELZABURU, who provided commentaries on two of the articles of the Convention.                                       

In times of tribulations and uncertainty, it cannot hurt to utter a “long live the Berne Convention"  and delve into this transcendental study in order to find out where we came from and also to figure out where we want to go under expert guidance.

Author: Antonio Castán

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Spanish railway engineer José Luis López Gómez wins the 2013 European Inventor Popular Prize

Photo taken from the EPO website

Spanish railway engineer José Luis López Gómez wins the 2013 European Inventor Popular Prize

The invention is a system, designed for Talgo, to optimize the guidance of train wheels on the track, improving stability and enhancing passenger comfort, particularly in high-speed trains.

His selection as winner of the Popular Prize is well-deserved recognition for a successful professional career with Talgo spanning nearly 40 years.

Photo taken from EPO twitter

The ELZABURU Firm took part in prosecuting the patent for this invention, so it is a source of pride and satisfaction for us to extend our warmest congratulations to José Luis López Gómez and the entire team of Talgo innovators.

Author: Pedro Saturio

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Accession of Rwanda to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks

On 17 May 2013 WIPO officially announced Rwanda's accession to the Madrid System, whose members, with this year's accessions, now number 91. 

The Government of the Republic of Rwanda deposited its instrument of accession on 17 May 2013. 

The Madrid Protocol will enter into force, with respect to Rwanda, on 17 August 2013.

Author: Foreign Filing Department

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José Luis López Gómez (TALGO), first Spaniard nominated for the European Inventor Award

The European Patent Office has recently published its list of finalists for the European Inventor Award 2013, a prize that in its eight-year lifetime has turned into one of the world's most distinguished awards for inventors. This year, for the first time since the award was created, the Industry slate includes a nominee from Spain, José Luis López Gómez.

This nomination is well-earned recognition for a Spanish inventor who has guided TALGO technology into use all over, in Europe, the United States, and China. We at ELZABURU take this opportunity to extend our most cordial congratulations both to our good friend José Luis and to TALGO and to wish them every success at the forthcoming award ceremony in Amsterdam on 28 May. In the present crisis our country is going through, seeing one of its inventors being honoured abroad is a hopeful sign.

Here is the European Patent Office's presentation of Jose Luis López Gómez: 

"The inventions of this Spanish railway engineer have made high-speed rail travel safer and more comfortable. He created a new method of ensuring a train's wheels stay safely on track and keep their optimal position on the rails at all times, especially in mountainous regions, and allows trains to travel 30% faster when going through curving stretches. His inventions propelled the company Patentes Talgo into one of the top spots among manufacturers of high-speed trains worldwide".

A new twist this year is the popular prize, allowing the public to vote for its preferred finalist.

For more information about the patent behind the nomination.

Author: Antonio Tavira

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Court of Justice upholds the Decision authorizing enhanced cooperation to create the single European patent

This morning, 16 April 2013, the Court of Justice dismissed the actions brought by Spain and Italy against the Council Decision of 10 March 2011 authorizing enhanced cooperation in the area of the creation of unitary patent protection, rejecting all the appellants' pleas. The Court has followed Advocate General Bot's opinion to the letter four months after delivery.

The Decision of 10 March 2011 paved the way for adoption of Regulation (EU) No. 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection and of Council Regulation (EU) No. 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements. At the end of March of this year Spain launched challenges to both Regulations (Cases C-146/13 and C-147/13), so the final decision in this now long, drawn out chapter will have to wait until early 2015.

The judgment of 16 April 2013 is significant for a number of reasons, for instance, because it

a) is the Court's first interpretation of the "enhanced cooperation" provided for under Article 20 of the Treaty on European Union and Articles 326 to 334 of the Treaty on the Functioning of the European Union, tying it in not so much with integration as with surmounting the requirement of unanimity.

b) provides that creating European intellectual and industrial property rights falls within the framework of the internal market rather than coming under competition rules.

c) holds that "falling within non-exclusive competences" is a necessary and sufficient condition for enhanced cooperation.

d) accords the Council broad discretion in deciding when an issue is a "last resort" within the meaning of Article 20 of the Treaty on European Union.

e) reiterates that acts by the institutions are only misuse of power where there is objective, relevant, and consistent evidence that they have been taken solely, or at the very least chiefly, for ends other than those for which the power in question was conferred or with the aim of evading a procedure specifically prescribed by the Treaties for dealing with the circumstances of the case.

f) anticipating a very interesting point bearing on the actions that have recently been filed, considers that application of Article 118 of the Treaty on Functioning of the European Union probably clashes with that of Article 142 the Convention on the Grant of European Patents to the extent that the focus of the former is the European Union and that of the latter the Member States.

g) endorses an "incremental" model of integration, with partial integration being better than none at all.

h) posits that enhanced cooperation being possible in this context, creation of European intellectual and industrial property rights that do not encompass the entire territory of the Union, instead taking in only a certain number of Member States while leaving others out, should also be possible and that this is neither detrimental to the internal market nor a distortion of competition.

i) concludes that the competences, rights, and obligations of Spain and Italy have not been infringed in the course of this process.

Author: Manuel Desantes

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