Author: pat

The United States Patent and Trademark Office (USPTO) has officially released Inventorship Guidance for AI-Assisted Inventions, as outlined in the Federal Register. This initiative aligns with the Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence (AI).

Effective as of February 13, 2024, the guidance offers clear instructions for examiners and stakeholders on evaluating the significance of human contributions to an innovation when AI is also involved. It acknowledges and supports the integration of AI in the innovation process, emphasizing that AI-assisted inventions are not automatically deemed unpatentable. Examiners are provided with directives on identifying the rightful inventor(s) in cases where humans collaborate with one or more AI systems. The USPTO has gone a step further by illustrating hypothetical scenarios, aiding both examiners and applicants in understanding the application of the guidance. For instance, it clarifies that merely recognizing a problem and presenting it to an AI system is insufficient for inventorship, but constructing a meaningful prompt may meet the criteria.

The fundamental objective of these guidelines is to strike a balance in the patent system, promoting patent protection for AI-assisted inventions with significant human contributions while avoiding unnecessary hindrance to future innovations.

Contrary to evaluating whether AI contributions would equate to human inventorship, the guidance focuses on whether the human named on a patent has made a substantial contribution. A patent’s eligibility for protection hinges on having at least one named human inventor meeting this requirement.

Anticipating the increasing ubiquity of AI, where individuals build upon each other’s AI-assisted inventions, the USPTO refrains, at present, from imposing new disclosure requirements for AI usage beyond existing rare circumstances mandated by USPTO rules.

Looking ahead, the USPTO aims to collaborate with international counterparts to discuss and harmonize inventorship guidance for patenting AI-assisted inventions, fostering a cohesive AI policy across borders.

Changes to fees for European patent applications will come into effect on April 1, 2024, as per the Decision of the Administrative Council dated December 14, 2023. The European Patent Office (EPO) will witness an increase in some of its official fees starting from the specified date. These amendments are applicable to fee payments made on or after April 1, 2024, for both European patent applications and Euro-PCT applications that have entered the European phase, regardless of their filing date.

While the majority of official fees will experience a moderate increase of around 4%, the third and fourth renewal fees will see a significant rise of 30% and 28%, respectively. However, certain official fees such as filing, opposition, and appeal fees will remain unchanged this year, with some fees being abolished.

In addition to these changes, starting from April 1, 2024, the EPO is introducing a new micro-entity fee system, an extension of the current system for small entities. Micro-entities, in this context, encompass microenterprises, natural persons, non-profit organizations, universities, and public research organizations, provided they have filed fewer than five patent applications in the last five years. It’s important to note that small and medium-sized enterprises (SMEs) are not considered micro-entities.

For micro-entities, there is a 30% reduction in fees for filing, search, designation, examination, grant, and renewal. Similarly, small entities will benefit from a 30% reduction in the filing fee, including any additional fees that form part of the filing fee, as well as the examination fee.

The Eurasian Patent Office has registered for the first time a pledge of the exclusive right to an industrial design.

LLC Scientific Industrial Enterprise – Lossew (RU), which is the owner of Eurasian patent No. 000038, transferred the exclusive right to an industrial design as a pledge. LLC Lossew is an enterprise producing LED lighting and optics.

The exclusive right to the ornamental aspect of the lamp was pledged to the Moscow Small Business Lending Fund.

This will allow LLC Lossew to use the patent as an intangible asset and obtain a pledge in relation to it for further business development.

Thus, the patentee exercised their right on the basis of a Eurasian patent for an industrial design, which not only allows to protect exclusive right to an original ornamental aspect of an article in seven countries simultaneously, but is also an intangible asset of the patentee, who has the right to transfer the exclusive right to an industrial design to another person or to register a pledge in relation to it, as well as to provide the right to use the industrial design under a license agreement.

Rospatent refused to register an individual entrepreneur’s trademark for telecommunications services on Russian trademark application No. 2022718292, since the verbal element of the claimed trademark “ФАЙБЕРБРИДЖ” (which is a Cyrillic transliteration of the English word “FiberBridge”) phonetically reproduces the designation “FiberBridge” used by a US equipment manufacturer (ATTO Technology, Inc.) for communication services, which has become widely known to the Russian consumers of the relevant services and, therefore, may mislead them in relation to the provider of these services.

In the cassation appeal of the Intellectual Property Court (case No. SIP-394/2023), the entrepreneur referred, among other things, to the fact that the foreign manufacturer is registered in the United States, which country is committing unfriendly actions towards Russia. According to the entrepreneur, this circumstance confirms that the American manufacturer is not interested in using the trademark in the Russian Federation. Furthermore, the US company has not registered the designation “FiberBridge” as a trademark.

The Presidium of the Russian Intellectual Property Right Court did not agree with these arguments and its decision of 12 January 2024 noted as follows:

1. The specifics of applying intellectual property rights legislation to persons from countries committing unfriendly actions are determined by the government, but not the individual entrepreneur;
2. Unfriendly actions of the state are not a reason to mislead Russian consumers, since they may think that the disputed trademark refers not to the services of the individual entrepreneur, but to the American company.

New Federal Law No. 390361-8 passed in Russia amends provisions of the Civil Code that concern the administrative consideration of disputes in the field of rights to inventions, utility models, trademarks and other objects of intellectual property, introducing a possibility of reimbursement of expenses of the winning party.

Previously, legislation allowed reimbursement only for the expenses incurred during consideration of the matter at court, including pre-trial costs. The costs of preliminary administrative disputes were not included into this scope, while in a number of cases the interested party was required to begin the dispute with an administrative hearing in the Chamber of Patent Disputes (a branch of the Russian Patent and Trademark Office), and only then go to court. The litigants were left with no ability to ensure their rights at some of the stages of the proceedings.

The Constitutional Court pointed out this omission in the legislation in its Resolution No. 1-P/2023, issued on January 10, 2023, following consideration of the complaint of OOO “NIKA-PETROTEK”. The company’s patent for a group of inventions was partially cancelled by the Board of Chamber of Patent Disputes following an objection filed by OOO “FORES”. Unwilling to accept only partial satisfaction of its demands, OOO “FORES” attempted to appeal the decision of the Chamber in court, but the court refused to satisfy the appeal. OOO “NIKA-PETROTEK”, forced to defend its patent, managed to reimburse some part of the legal costs – however, it was not possible to reimburse the costs of the initial consideration in the Chamber of Patent Disputes. Obviously, this is not the first patent owner to face such a situation.

Following the instructions of the Constitutional Court, a new Federal Law was drafted, intended to amend Article 1248 of the Civil Code of the Russian Federation regarding the consideration of disputes related to intellectual rights. The legislator clarifies that expenses incurred during administrative proceedings can be reimbursed (including official fees, as well as the fees of experts, translators and patent attorneys involved in the proceedings).

The law will come into force on 10 February 2024, after which any party involved in patent or trademark disputes will be able to more effectively protect their intellectual rights.

From January 15, 2024, inventors and businesses are able to validate in Georgia on the basis of the country’s national law their European patent applications and patents granted by the European Patent Office (EPO).

As a result, those European patent applications and patents validated in Georgia under the agreement will have the same effect and be subject to the same conditions as Georgia’s national patents.

The accompanying technical co-operation between the EPO and the National Intellectual Property Center of Georgia, SAKPATENTI, will bolster the development of Georgia’s national patent system and further foster innovation. The validation of European patents is also an important element for attracting foreign investment to Georgia.

The European Patent Organisation has 39 member states, including 27 member states of the European Union and 12 non-EU member states. Georgia will be the 5th country with the validation status and the 45th country where patent protection will be possible on the basis of a European patent application.

Under validation agreements, inventors and businesses are provided with a simple, timely and cost-efficient way of achieving high-level protection for an invention in the validation state, based on one single European patent application and without having to file a corresponding national patent application.

Validation for Georgia may be requested for any European patent or international (PCT) application filed on or after January 15, 2024.

The EAPO has been participating in the WIPO CASE (Centralized Access to Search and Examination) project since 2016, but until now, the EAPO has not sent its own documents for posting on the WIPO CASE web portal. From January 15, 2024, the Eurasian Patent Office (EAPO) began to provide information on the WIPO CASE portal.

At the first stage, the EAPO will provide WIPO with a retrospective array of patent search reports on Eurasian applications and will provide reports on new searches carried out. In the future, based on the results of this stage, the EAPO will consider expanding the range of documents posted on the WIPO CASE web portal.

The WIPO CASE system enables patent offices to securely share search and examination documentation related to patent applications filed in multiple offices in order to facilitate work-sharing programs, therefore, patent examiners can increase the efficiency and quality of their work by sharing their examination results.

The International Bureau in response to a request from the Vancouver Group Offices (the Patent Offices of Australia, Canada and the UK) initially developed the system. Based on their requirements, an initial system was deployed in 2011.

Since June 1, 2015, any patent office may join the system by notifying the International Bureau that it is willing to participate according to the new terms and conditions for the system.

Today, patent examiners from 40 intellectual property offices around the world have access to the portal. However, only 18 offices are suppliers of information for this system, including the EAPO.

According to Resolution No. 944 of the Council of Ministers of the Republic of Belarus dated December 27, 2023, which came into force on January 1, 2024, the size of the basic value is increased from 37 to 40 Belarusian rubles.

Therefore, the amount of annual fees for maintaining the validity of Eurasian patents for inventions on the territory of the Republic of Belarus are increased by 8-10% from January 10, 2023.

New annual fees in Belarusian rubles are provided in the table on the website of the Eurasian Patent Organization provided below (1 US dollar equals approximately 3,15 Belarusian rubles):

https://www.eapo.org/en/eapv-news-en/new-annual-fees-for-the-maintenance-of-eurasian-patents-for-inventions-on-the-territory-of-the-republic-of-belarus/

The basic value is one of the key parameters used in the Republic of Belarus to calculate various social and economic indicators, in particular social benefits, pensions, taxes and fees. It is a nominal standard that is not tied to any tangible or intangible objects. The basic value is formed as a result of several factors such as inflation, the general economic situation in the Republic of Belarus, etc”.

On the 7th of December, 2023 the Eurasian Patent Office (EAPO) has issued an official Regulation on the Eurasian Pharmaceutical Register (the EPR Register), which provides a list of international non-proprietary names of drugs and relevant Eurasian and national patents directed to:

– an active chemical compound under the INN,
– pharmaceutical compositions comprising the active compound,
– methods of preparing the active compound or compositions comprising thereof,
– medical uses of the compounds/compositions.
As for now the Register includes 226 INNs (and combinations of INN) and corresponding ca. 700 patents and is updated on a regular basis by the EAPO, which also provides the possibility for the patent owners to submit request for introducing patents into the register upon the patent office examination check.

Why this Register is important?
The establishment of the EPR Register is a further step to the creation of the transparent patent linkage system in the Eurasian region. In particular, it might be used by any interested parties including
– applicants of new drug applications,
– originator companies,
– drug registration authorities in the member states of the Eurasian Patent Convention including countries of the Eurasian Economic Union having unified drug registration rules,
– courts.
The Register is available online by the following link:
https://old.eapo.org/ru/patents/reestr/eafarma.php

The Administrative Council of the Eurasian Patent Organization approved the amendments to the Statute on Fees of the Eurasian Patent Office in part of applications and patents for inventions and industrial designs. The amendments result in a 20% increase of the official fees relating to applications and patents for inventions, in particular for the following actions:

– filing a Eurasian application, substantive examination of the Eurasian application;

– granting a Eurasian patent, making additions, clarifications, corrections and amendments;

– filing Appeals against the Eurasian Office Decisions;

– transfer of the right to a Eurasian application or a Eurasian patent;

– extension of missed term limits and restoration of rights.

Furthermore, there will be a 20% increase in the fees relating to industrial designs, in particular for the following actions:

– filing and consideration of a Eurasian industrial design application;

– registration of an industrial design, publication of information on the Eurasian patent grant and granting a Eurasian patent.

Detailed information can be found on the website of the Eurasian Patent Office using the following links:

Inventions
www.eapo.org/en/eapv-news-en/amendements-of-certain-fees-inventions/

Industrial designs
www.eapo.org/en/eapv-news-en/amendments-of-certain-fees-industrial-designs/

On December 13, 2023, a meeting was held at the Baku Engineering University with the participation of examiners of the Intellectual Property Agency of the Republic of Azerbaijan. The purpose of the event was to educate university employees on the protection of intellectual property rights and increase ingenuity.

The presentations covered the advantages of patenting international applications in the Patent Cooperation Treaty (PCT) system, the government funding of 50 percent of the fees to be paid by applicants who are citizens of the Republic of Azerbaijan for patenting and maintaining for the first three years of inventions and utility models in foreign countries through the international PCT system to stimulate inventive activity.

At the meeting, a dialogue was held on the material and technical base of the university, research activities, and activities of laboratories, as well as the future work on increasing inventive activity. The Intellectual Property Agency is ready to support the Baku Engineering University in creating a Technology and Innovation Support Center for patenting and legal protection of intellectual property objects.