European Patent Office looks set to remove 24 month time limit for divisional applications.
Rule 36 EPC, which deals with the time limits for filing a divisional application from a pending European application, was amended in 2010 to introduce a 24 month time limit following receipt of a first office action. This piece of legislation has received widespread criticism. The Rule was made the subject of an EPO consultation earlier this year and unofficial sources have indicated that the 24 month deadline rule will be removed from 1 April 2014 following an amendment to the Rule. An official announcement will hopefully follow soon. (Posted 18.10.13)
U.S. Supreme Court Issues Decision in the Human “Gene-Patenting” Case.
On 13 June 2013, the Supreme Court held that genes and DNA fragments merely isolated from nature without alteration were not patent eligible. In Ass’n for Molecular Pathology v Myriad Genetics, Inc the Court held that the isolated BRCA1 and BRCA2 genes that are used to determine an increased risk of ovarian and breast cancers are excluded from patentability for falling within the law of nature exception to patent-eligibility. In contrast, altered or modified DNA, such as cDNA, new applications of knowledge obtained about the isolated gene or a new method for manipulating genes remain patent eligible.
European Patent with Unitary Effect.
Today, technical inventions can be protected in Europe by national patents granted by national authorities or by “classical” European patents granted centrally by the European Patent Office. Although the latter provides for central filing, prosecution and grant of a European Patent, the Patent must then be validated in individual states, involving costly translations of the specification. The European Patent must also be renewed and enforced in individual states.
In 2012, Member States of the EU and the European Parliament agreed on the creation of a Unitary Patent Package. Once the necessary Agreement and Regulations come into effect, it will be possible to obtain a European Patent with unitary effect – a legal title providing uniform protection for an invention across the Member States on a one-stop shop basis with one central renewal procedure and a single specialized patent jurisdiction - the Unified Patent Court.
However, there are drawbacks, including that not all Member States wish to ratify the Agreement, in particular Spain and Italy, so protection will not extend to these states. Furthermore, certain countries that are currently part of the European Patent Convention, such as Switzerland, Turkey, Norway and Iceland and can therefore be protected via a “classical” European Patent, are not part of the European Union and therefore will not be covered by the Unitary Patent. The single renewal fee for a Unitary Patent may also be set too high – if it is more than the combined cost of 3-5 Member State renewal fees, the classical patent is likely to be more attractive, where you can prioritise payment of renewal fees for those States that are of most commercial importance. There is also real potential for Forum Shopping; the claimant may choose a forum where it is most likely to prevail and/or is most inconvenient for the defendant.
There are still many hurdles to overcome before the implication of the Unitary Patent Package and the earliest start date is likely to be 2015.
New Intellectual Property Bill introduced into the House of Lords on 9 May 2013.
The Bill proposes various amendments, most notably regarding design law, and makes provisions for the UK to create its Unified Patent Court in preparation for ratification of the Unitary Patent Package. In moving with the times, the Bill also proposes that it should be possible for a patented article to include reference to a website that associates the article with a patent number rather than the current requirement to mark the actual product with the patent number.
Patent Box Scheme came into force in April 2013 to cut corporation tax.
The Patent Box Scheme applies a reduced corporation tax rate of 10% to profits attributed to patents over a phasing-in period of four years and it is hoped that the scheme will provide an incentive for companies to develop new innovative patented products in the UK. A company must hold a Qualifying Patent (either granted by the UKIPO, the EPO or in an EEA state having similar patentability criteria to the UK) or have an exclusive licence for such a Qualifying Patent. Pending patent applications are excluded but a company may elect into the regime and the reduced corporation tax rate may be back-dated up to six years prior to grant. A broad range of income sources may fall within relevant income for the purposes of this tax relief and therefore it is recommended that you discuss this in further detail with your IP advisor and accountant. See also http://www.hmrc.gov.uk/ct/forms-rates/claims/patent-box.htm
Innovation Voucher Scheme from Technology Strategy Board.
This scheme is open to micro, small and medium-sized businesses from across the U.K. and enables you to obtain a grant of up to £5K to assist you in bringing new knowledge into the business, develop innovative products and explore new markets. Certain criteria has to be met and priority is given to ideas falling within particular sectors, including cyber-security; energy, waste and water; open data innovators and inventors; and built environment. For further information go to https://www.innovateuk.org/-/innovation-vouchers. A full list of vouchers available is given at https://vouchers.innovateuk.org/en/innovation-vouchers-listing.
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