Category: News and publications

The US Patent and Trademark Office (USPTO) recently suggested a new regulation for submitting terminal disclaimers to overcome obviousness-type double patenting rejections, that could significantly impact patent practice.

Under this new rule, a terminal disclaimer would contain an agreement that the patent in which the disclaimer is submitted would not be enforceable if a claim in another patent tied to the subject patent through the terminal disclaimer is found to be unpatentable or invalid. In essence, patents tied through a terminal disclaimer would be treated together, meaning that if one patent is deemed invalid or unenforceable, the others connected to it via a terminal disclaimer would also be invalid/unenforceable.

In the current practice of terminal disclaimers, a patent owner may file multiple applications with the same effective filing date, where the sets of claims in each application are distinct variations of the same invention that can avoid a statutory double patenting rejection. However, the USPTO may still determine that the differences in the claims between patents are obvious under the obviousness-type double patenting doctrine.

An obviousness-type double patenting rejection can occur if the claims in different patents or patent applications share the same inventive entity, at least one inventor in common, or a common applicant, owner, or assignee. When faced with an obviousness-type double patenting rejection, applicants have the option to challenge the rejection, amend the claims, or submit a terminal disclaimer, which is a common approach.

The USPTO has outlined several reasons for the proposed modifications. The main concern is that an owner of multiple patents covering obvious variations of an invention could hinder competition, as the expense of disputing the validity of each patent individually could be prohibitive. By tying the disclaimed patents, a competitor could potentially invalidate multiple patents by proving the anticipation or obviousness of one claim, leading to significant reductions in litigation costs. The USPTO also believes that the changes will encourage innovation by making it more difficult to maintain patents on minor variations. If applicants are aware that their continuation patents may be more vulnerable, they may be more discerning in their pursuits.

Partners of Patentica Maria Nilova and Elena Dmitrenko participated in the LESI 2024 Annual Conference in Madrid, held from April 28 to 30, 2024.

The theme of the conference was “Log in to the future”. The conference focused on cutting-edge and rapidly evolving trends, such as data-driven economies, the tokenization of business models, the new internet architecture (web 3), the fast-paced advancement of artificial intelligence, and the rise of decentralized management models. The goal of the conference is to embrace this new reality and comprehend how these shifts affect technology transfer and licensing professionals in order to better support innovators and investors in achieving best outcomes.

LESI (Licensing Executives Society International) is a global business association consisting of 33 national and regional societies. It represents over 6,500 individual members from more than 90 countries, all engaged in the licensing, transfer, and management of intellectual property rights. The individual members include management representatives from companies of various sizes, scientists, engineers, academics, government officials, lawyers, patent and trademark attorneys, and consultants.

The latest enhancements made to the EPO’s popular Deep Tech Finder are enhancing its utility for investors seeking investment-ready deep tech startups and vice versa.

Introduced last October, this complimentary online tool combines business profiles and funding histories for a multitude of European startups with their collections of European patent applications and/or granted patents. As of now, the Deep Tech Finder boasts profiles from over 8,000 startups, organized into more than thirty distinct industry sectors and over fifty diverse technology fields, encompassing smart industries, green technologies, oncology, and now even quantum computing.

In response to favorable user responses, the recent additions to the tool this week provide users with improved access to essential funding and patent details on European deep tech startups:

Search results using specific industry and technology filters may be showcased either in list form or plotted on a map by location.
The patent portfolios for chosen startups clearly indicate the status of each patent application (pending, granted, withdrawn, or refused) as well as whether a Unitary Patent has been granted.
Results can easily be exported with a single download (CSV file).
The Deep Tech Finder seamlessly merges business insights with the EPO’s extensive patent data, covering the legal status of every application managed by the EPO. Future updates to the tool will introduce additional categories of patent holders beyond deep tech startups and a broader range of technology fields.

Deep Tech Finder offers an up-to-date platform for identifying and evaluating startups and emerging enterprises introducing groundbreaking innovations across diverse technological domains.

In addition to its role in technological intelligence, this tool proves immensely beneficial for potential investors (both public and private), startup representatives, and professionals at large seeking to stay abreast of the latest technological advancements in the market. It underscores the current importance of industrial and intellectual property rights for burgeoning technology firms.

On the 8th of February, 2024, amendments and additions were made to the order “On approval of the Rules for the examination of applications for selection achievements, industrial property objects, trademarks, service marks, geographical indications, appellations of origin of goods, on registration of topographies of integrated circuits” (hereinafter – the Rules).

The key addition to the Rules allows Applicants the option to accelerate the consideration of a trademark application from seven to three months through an accelerated examination process.

In the current landscape of rapidly evolving market dynamics and the rise of electronic commerce platforms, the accelerated examination of the trademark application is commonly utilized in countries such as Singapore, USA, Japan, China, Great Britain, India, and Georgia.

This recent innovation within the Republic of Kazakhstan was instigated by inputs from the business community and patent attorneys.

There are several scenarios where an accelerated examination may be beneficial, including if the Applicant is already operating a business without a registered trademark, planning to sell products on an online e-commerce platform, or initiating a new business venture.

Dengue fever is a severe viral disease spread by vectors. The viruses responsible for dengue fever are known as arboviruses. Currently, dengue fever mainly affects countries in South and Southeast Asia, Africa, Oceania, and the Caribbean. Each year, between 50 and 528 million people contract the disease, resulting in approximately 10,000 to 20,000 deaths.

“Serum Institute of India Pvt. Ltd.” has obtained a Eurasian patent (No. 046342) for a live attenuated flavivirus vaccine composition. This patent pertains to an immunogenic composition comprising one or more live attenuated dengue viruses comprising a plurality of live attenuated dengue (DEN) viruses of different serotypes selected from a group consisting of DEN-1, DEN-2, DEN-3 and DEN-4, in which the dengue virus is present at a dose of 2.5 – 3.0 log 10 PFU per 0.5 ml and excipients. The composition preserves desired characteristics of the virus, including virus viability, immunogenicity and stability.

The suggested vaccine compositions are proven to be effective in treating and preventing dengue infections, as well as preventing, ameliorating or delaying the onset or progression of the clinical manifestations thereof.

“Serum Institute of India Pvt. Ltd.” is currently recognized as the largest vaccine manufacturer globally, with over 1.3 billion doses produced and distributed worldwide, including vaccines for Polio, Diphtheria, Tetanus, Pertussis, Hib, BCG, r-Hepatitis B, Measles, Mumps, and Rubella.

New regulations for submitting patent applications in Uzbekistan have been implemented as of May 2023. Now, applicants can file their patent applications electronically through the new Ministry of Justice’s online portal. Along with the standard application details, the Ministry of Justice is now requesting additional information from applicants, such as the establishment date and tax number of the company for corporate entities, and individual tax numbers and dates of birth for individuals. Authors are also required to provide their dates of birth. All of this information must be entered into the Ministry of Justice’s database before a new application can be submitted, although it is assured that this information will be kept confidential.

Moreover, under the new guidelines, for PCT applications, a full translation of the patent application shall be provided instead of just translating the claims as previously required. Additionally, a signed power of attorney shall be uploaded immediately upon application submission, as the new system will conduct a quick check to ensure that all required documents are complete. This new process, however, does not align with the current patent application requirements, as the two-month deadline for submitting a power of attorney has not been abolished. The Ministry of Justice claims that this change was made to simplify the application process and prevent errors. Despite requests from the Association of Patent Attorneys to align the filing procedures with existing requirements, all the new filing regulations remain in effect.

The multinational companies that have maintained their presence in Russia are exploring avenues to enhance the efficacy of protecting their trademarks. For instance, the affiliate of “Unilever”, LLC “Unilever Rus”, has been granted the rights to use in Russia the trademarks “Chistaya Liniya”, “Barkhatnye Ruchki”, “Chernyi Zhemchug”, “Lesnoi Balsam”, “Inmarko”, “Ekzo”, and others that are popular in Russia.

Previously, the ownership of these trademarks was held by the Dutch entity “Unilever IP Holdings B.V.” and the British entity “Unilever Global IP”. This move will enable the company to streamline risk management, particularly in combating counterfeit goods.

During legal proceedings in such disputes, although unsuccessfully, arguments frequently revolve around the relinquishment of trademark protection solely based on the jurisdiction of the trademark holder.

Consequently, the swift response to potential breaches concerning well-known trademarks of foreign origin has become more crucial in recent times. Some entrepreneurs have begun to replicate prominent trademarks more actively, hoping that some trademark holders may have ceased monitoring violations in Russia. Additionally, there are risks of premature termination of trademark protection due to claims of non-use.

The landscape has shifted from the “patent trolls” of the early 2000s to entities focusing on identifying unused trademarks and attempting to revoke their protection for personal gain, although such occurrences are sporadic. While endeavors by individual market players to obtain renowned trademarks have always existed, they have witnessed a surge in 2022. Nonetheless, the Russian Federation remains committed to safeguarding intellectual property, including that of multinational corporations. The number of disputes over the protection of foreign trademarks declined in 2023 following an uptick in 2022.

The U.S. Patent and Trademark Office (USPTO) has announced an extension of the First-Time Filer Expedited Examination Pilot Program. This program aims to improve access to the patent system for inventors who are new to the patent application process, particularly those in historically underserved areas. Through this pilot program, eligible first-time filers can have their patent applications expedited for examination and receive early feedback from patent examiners, known as the “first office action.”

To be eligible for this program, the applicant and inventor must meet the following requirements at the time of filing the petition to make special:

– The applicant must confirm that the inventor, or if there are joint inventors, each joint inventor, has not been named as the sole inventor or joint inventor in any other U.S. nonprovisional application.

– The applicant must confirm that both the applicant and inventor, or if there are joint inventors, both the applicant and each joint inventor, qualify for micro entity status based on gross income basis requirement (the current maximum qualifying gross income is $223,740).

– The applicant must confirm that the inventor, or if there are joint inventors, each joint inventor named in the application, has a basic understanding of the USPTO’s patent application process. For applicants uncertain about meeting this requirement, resources for patent application training can be found on the pilot program’s webpage (https://www.uspto.gov/FirstTimePatentFiler).

Originally set to conclude on March 11, 2024, the USPTO has decided to extend the pilot program until either March 11, 2025, or until the USPTO has approved a total of 1,000 petitions from the start of the program, whichever comes first.

In the program’s first year, over 350 petitions requesting participation have been submitted, with more than 142 accepted and 15 patents granted.

Rospatent refused registration of the trademark “Latisse” for eyelash growth stimulators under Russian trademark application No. 2022727161 submitted by the “Beautymarket” company. This decision was based on the fact that the trademark was already known to Russian consumers through its usage by the foreign company “Allergan, Inc.” for similar goods.

In addition, Rospatent identified a potential for confusion between the claimed trademark and the previously registered trademark “LEUTHYS” for similar goods in the name of another party. Despite the opposition filed by “Beautymarket”, Rospatent maintained its decision to refuse the registration.

Rospatent highlighted that information about the “Latisse” product of the “Beautymarket” company was widely available on the Internet before the trademark application was filed, indicating its familiarity to Russian consumers. They also emphasized that the product continued to be sold in Russia despite exit of the “Allergan, Inc.” company from the market.

Moreover, Rospatent pointed out the presence of similar products with the label “analog of Latisse” in the Russian market, indicating the widespread recognition of the “Latisse” trademark among consumers.

Consequently, Rospatent concluded that the trademark was misleading consumers about the true manufacturer of the goods. Rospatent further noted that “Beautymarket” did not provide sufficient justification for their claim to a trademark already in use by another party for similar products, deeming it a contradiction of good faith in commercial practices.

In the first instance, the Intellectual Property Rights Court (case No. SIP-457/2023) rejected Rospatent’s arguments. However, the decision was overturned by the Presidium of the Russian Intellectual Property Right Court (case No. С01-2301/2023), which upheld Rospatent’s Refusal.

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.