Irides: Weekly patent litigation update

The Irides Weekly Update is our round-up of patent litigation news highlights from around the world. Taking its name from the plural of “iris” - a nod to the ability of Irides to see what’s happening around the world.

Our latest edition - 1 September 2023 - is below:

UK

UK Intellectual Property Office Transformation II Consultation Launched

On 22 August, the IPO launched a second consultation on proposed changes to deliver better services. Whilst the consultation mainly focuses on trademarks and designs, there are a number of key patent proposals that are due to take effect from 2025.

Generally, the Transformation Consultation aims to improve access to IPO services for rights holders through digitisation. The Transformation I Consultation, which ran in 2022, mainly focused on changes related to the launch of the new digital patents service in 2024. Element of the improvements include a new wider search service (including more information on Supplementary Patent Certificates (SPCs) back to 2017) and faster examination.

In the Transformation II Consultation, the IPO is looking to replace its existing processes with a digital system for all registered IP rights, including patents. Right holders will be able to request confidentiality of information as wider access to documents filed at the IPO will be available. Fees for SPCs must be paid in a single payment before the SPC will take effect. The Consultation also proposes the introduction of mediation information and assessment meetings with trained IPO mediators, available at no cost, as well as the increased use of hearing officer powers.

SLOVENIA

Amendments to Industrial Property Act have entered into force in Slovenia

On 27 July 2023, the Act on amendments and modifications to the Industrial Property Act (the “Act”) in Slovenia entered into force. In relation to patents, in order to ensure uniformity of Slovenian patent law with the UPC Agreement and to align the Act with the revised EPC 2000, the Act has been amended in a number of ways. Further, the Act includes several amendments related to procedure. 

Substantive patent law amendments

Firstly, provisions relating to indirect patent infringement have been introduced into the Act. In addition, storage and offering a patent-protected process for use have also now been set out as infringing acts. 

The rules on exceptions to patent protection have also been unified. The Act now provides that aesthetic creations, games or business methods, computer programs, and presentations of information are not inventions for which patent protection is available. However, the Act now specifies that it is possible to obtain patent protection for a known substance for treatment of a medical use.

Procedural amendments

Some procedural amendments have also been made to the Act. Firstly, the Act now grants the IPO a competence to transmit a patent application to other offices for conducting searches on the state of the art and providing written opinions on the fulfilment of conditions for the claimed invention. This will enable applicants to obtain more specific information sooner regarding whether their invention meets the requirements for the grant.

Further, it is no longer expressly required that powers of attorney are provided in written form, which may be interpreted to mean that scanned copies of powers of attorney are now acceptable.

Some amendments to time limits are also included. The Act now allows any party to the proceedings to request an extension of time under art. 66 (which was previously only possible for applicants or right holders). The Act also has been amended such that the time limit for filing a request for continuation of the proceedings after a missed deadline has been reduced from six months to four months.

Finally, the amendments provide the Slovenian IPO with ex officio powers to declare an EP patent in the national register as invalid if the EP patent is revoked by the EPO.

EPO

Entry into the European phase to be discontinued as of 1 November 2023

The EPO will no longer send out EPO Form 1201 (“Entry into the European phase”) as of 1 November 2023. At the moment, where the EPO is selected as designated or elected Office, it sends Form 1201 during the international phase to inform European professional representatives, international agents and applicants of the steps to take to enter the European phase. Going forwards, all relevant information will be available in a dedicated section on the EPO website.