Due to the public holiday Day of Ascension of Virgin Mary our office is closed on August 15, 2022.

The German Patent and Trademark Office, the European Patent Office as well as the European Union Intellectual Property Office (EUIPO) will also be closed. Any official deadlines falling on this day will therefore automatically be extended until the next working day.

Since the Swiss Federal Institute of Intellectual Property and the United Kingdom Intellectual Property Office are not closed on this day, we will make sure that any official deadlines falling on August 15, 2022 will be extended or met. However, we kindly ask you to take into account that we may not provide any services on this day. Therefore, please inform us in good time before that date, if you have any cases for which a time limit has to be observed on August 15, 2022.

Facsimiles and emails will still be received on August 15, 2022, but will not be processed until the next working day (i.e. August 16, 2022). We kindly ask for your understanding.

It is expected that European patents with unitary effect will be available within the second half of the year 2022. At the same time, the Unified Patent Court will commence its operation - the necessary preparations have already been going on since quite a while so that the court can take on its responsibilities as soon as the Agreement on the Unified Patent Court will come into effect and, along with it, the regulations relating to European patents with unitary effect.
In the following we want to give you an overview of the new system of patent protection and litigation in Europe. This new system will comprise:

• European patents in the present form (nationalization after grant)
• European patents with unitary effect (no nationalization required)
• a new European patent litigation court, the Unified Patent Court.

We will also give some remarks regarding Great Britain that, as a result of the Brexit, does not take part in the new system of European patents with unitary effect and the Unified Patent Court.

CONTENT OF THIS NEWSLETTER

Introduction: The Present European Patent System                  
The New Features of the European Patent System                   

First Feature: European Patents with Unitary Effect                 
Second Feature: Litigation before the Unified Patent Court    
When Are the New Features Implemented?                              
Representation: Your Legal Interest - Our Mission                   
Summary                                                                                          

Flow Chart: Illustration of the European Patent System and Its New Features         

1. INTRODUCTION: THE PRESENT EUROPEAN PATENT SYSTEM

With the currently established system provided by the European Patent Convention (EPC) only a single European patent application is necessary for obtaining patent protection in all the contracting states of the EPC, and the patent protection can even be extended into the validation states (Morocco, Republic of Moldova, Tunisia, Cambodia) and the extension states (Bosnia and Herzegovina, Montenegro). The extension and validation states are up to now not contracting states of the EPC, but the extension states will possibly be in the feature.

Although, European patent applications are examined and European patents are granted by a single authority with exclusive responsibility, namely the European Patent Office (EPO)., the European patent is by its legal nature a bundle of national patents and additional national requirements may have to be fulfilled to establish the respective national law. This process of nationalization of an European patent after grant may require a translation into the national language as well as payment of official fees.

A further result of the legal nature of a European patent as bundle patent of separated national patents after grant is that renewal fees have to be paid in all the national states in which the respective national part of the European patent shall remain pending.

Moreover, litigation has to take place before the national courts of the respective state.

It is finally emphasized that BREXIT does not affect the system established by the EPC, because the EPC is a multilateral agreement with the national states being the signing parties, whereas the European Union as a legal entity is not a signing party of the EPC. Therefore, the functioning of the EPC system is completely independent of whether Great Britain is a member state of the European Union or not. 

Summary of the Present Situation

The European patent granted according to the European Patent Convention (EPC) is a bundle of national patents, the so-called national parts of the European patent. The national laws of the national states can prescribe requirements for the national part of a European Patent to come into force in the respective national state. The national courts are exclusively responsible for lawsuits on grounds of the respective national part of a European patent. The BREXIT has no influence on this system so that European patents still cover Great Britain.
 
2. THE NEW FEATURES OF THE EUROPEAN PATENT SYSTEM

The existing patent protection by European patents on the basis of the European Patent Convention (EPC) will be supplemented with the availability of European patents with unitary effect that do not require nationalization and with the Unified Patent Court for litigation purposes.

Thus, European patents as known will go on to exist. The European patents may be nationalized after grant in the contracting states of the EPC and extended into validation and extension states. However, an additional European patent with unitary effect will be available after grant and a new specialized European court, the Unified Patent Court, will be established for litigation of nationalized European patents and the new European patents with unitary effect.

The essential features of the new European Patent System, explained in more detail below, are:

• Applicants may continue to make use of the patent system they are accustomed to and may obtain European patents that are nationalized after grant in single member states.
• Patent protection in Great Britain by nationalized European patents is unaffected by the BREXIT and obtainable via the EPC route as it has been up to now, whereas the new features of the European Patent System are not applicable in Great Britain as these features apply only to member states of the European Union.
• National patents may still be applied for and will be granted in all European countries, including Great Britain, as it has been up to now.
• European patents with unitary effect can be obtained, which do not require nationalization.
• Litigation may take place before the Unified Patent Court.

 
2.1 First Feature: European Patents with Unitary Effect

The first new feature is that a request for unitary effect of a European patent can be filed after grant of the European patent. Accordingly, the granting procedure remains as it has been up to now and takes place before the European Patent Office (EPO) with substantive examination as governed by the European Patent Convention (EPC) up to the grant of the European patent. After the grant it may be applied for the unitary effect.

Unitary Effect

The request for unitary effect

• must be filed with the European Patent Office (EPO) within one month after the mention of grant is published in the European Patent Bulletin. The only legal remedy when this time limit is not observed is a request for re-establishment of rights to be filed within two month after the time limit.
• does not require the payment of an official fee.
• must be accompanied by a translation of the patent specification. If the European patent has been granted in German or French language, a translation into English language is required, and if the European patent has been granted in English, a translation into any other official language of the European Union like German language has to be filed.
• has permanent effect and cannot be withdrawn once the unitary effect is registered in the European Patent Register.

Territorial Scope of Protection

Once the unitary effect is registered in the European Patent Register, the European patent has unitary effect in all participating member states of the European Union that have ratified the above-mentioned Agreement on a Unified Patent Court. For the time being, this means the territorial scope of the unitary effect depends on the ratification status of the Agreement on the Unified Patent Court on the date of registration of the unitary effect.

As a result, a European patent with unitary effect does not cover all member states of the European Union, but only those which have ratified the Agreement on the Unified Patent Court. Although this might seem unsatisfactory at first glance, it is noted that many patent owners nationalize their European patent only in some European countries. Thus, it may still be advisable to request for unitary effect because the European countries covered by the unitary effect may still encompass all countries in which patent protection is desired by the patent owner and the costs incurred thereby may be lower than those incurred by nationalizing the European patent in these countries. However, this complication is expected to disappear over time as more and more European countries will ratify the Agreement on the Unified Patent Court.

At the moment, a European patent with a unitary effect covers the following European countries (Agreement on the Unified Patent Court has already been ratified): Austria (AT), Belgium (BE), Bulgaria (BG), Denmark (DK), Estonia (EE), Finland (FI), France (FR), Germany (DE), Italy (IT), Latvia (LV), Lithuania (LT), Luxembourg (LU), Malta (MT), the Netherlands (NL), Portugal (PT), Slovenia (SI), Sweden (SE).

The member states of the European Union being covered by a particular European patent with unitary effect will be indicated in the European Patent Register so that legal certainty is always ensured.

Renewal Fees

For all the European countries that are covered by the unitary effect only a single renewal fee has to be paid for maintaining the European patent with unitary effect in these states, i.e. it will no longer be necessary to pay separate renewal fees in each of these countries.

The renewal fees for a European patent with unitary effect will be as indicated in the following table.
 

Year	Renewal Fee  (European patent with unitary effect)
2nd	35 €
3rd	105 €
4th	145 €
5th	315 €
6th	475 €
7th	630 €
8th	815 €
9th	990 €
10th	1175 €
11th	1460 €
12th	1775 €
13th	2105 €
14th	2455 €
15th	2830 €
16th	3240 €
17th	3640 €
18th	4055 €
19th	4455 €
20th	4855 €

The renewal fees can be paid within 6 months after the due date, if a surcharge of 50 % of the official renewal fee is paid as well.

2.2 Second Feature: Litigation before the Unified Patent Court

By the Agreement on a Unified Patent Court (UPC) a new specialized European court is established which will be responsible for disputes relating to European patents, including nullity proceedings as well as infringement proceedings.

This is a major progress as it reduces significantly the effort for litigation relating to European patents. The chambers of the court are staffed with legally and technically educated judges so that the quality of the court's decisions will equal that of the specialized chambers of the national courts which have been responsible for disputes relating to national parts of European patents up to now.

The decisions of the Unified Patent Court are effective in all member states of the European Union that have ratified the underlying Agreement on a Unified Patent Court.

It is particularly emphasized that the responsibility of the Unified patent Court will go beyond European patents with unitary effect, because the court is responsible not only for disputes arising from European patents with unitary effect, but also for disputes arising from all European patents regardless of whether they are registered as having unitary effect or not.

There are only two exceptions:

1) During a transitional period of 7 years plaintiffs may file a nullity action against or an infringement lawsuit on grounds of a national part of an European patent without unitary effect with a national court of the respective European country, where the European patent without unitary effect is in force.

2) Owners of European patents without unitary effect applied for or granted before expiry of said 7-year-period can opt out of the Unified Patent Court's exclusive responsibility by notifying the court correspondingly as long as no lawsuit is pending with the Unified Patent Court.

2.3 When are the New Features Implemented?

The above-mentioned legislation establishing the new features of the European Patent System will come into effect four month after the Federal Republic of Germany has deposited its ratification certificate of the Agreement on the Unified Patent Court. Since Germany has already ratified this agreement, the deposition of Germany's ratification certificate is expected to happen soon so that the new features are expected to be available in the second half of the year 2022, presumably in October 2022.

2.4 Representation

As registered representatives before the European Patent Office we may represent our clients before the European Patent Office (EPO) for filing a request for unitary effect of a granted European Patent.

We will also be admitted as representatives before the Unified Patent Court.

We are thus available to assist our clients in all matters relating to intellectual property including European patents with unitary effect and litigation before the Unified Patent Court.
 
2.5 Summary

In the second half of the year 2022 (4 month after Germany has deposited its ratification certificate) it will be possible to file a request for unitary effect of a granted European patent. Filing of the request is voluntary. Should patent owners decide not to file the request for unitary effect, the European patent will have to be nationalized in the individual states as before. This also applies to those countries that have not yet ratified the Agreement on the Unified Patent Court.

The unitary effect, once registered in the European Patent Register, will be effective in the member states of the European Union that have ratified the Agreement on the Unified Patent Court. Only a single renewal fee must be paid each year for all the countries that are covered by the unitary effect.

As it stands now, the unitary effect will cover:  

Austria (AT), Belgium (BE), Bulgaria (BG), Denmark (DK), Estonia (EE), Finland (FI), France (FR), Germany (DE), Italy (IT), Latvia (LV), Lithuania (LT), Luxembourg (LU), Malta (MT), the Netherlands (NL), Portugal (PT), Slovenia (SI), Sweden (SE).

The newly established Unified Patent Court will be responsible for all legal disputes arising from European patents with or without unitary effect, unless the patent owner has filed an opt-out notification with the Unified Patent Court. Within a transitional period of 7 years a plaintiff can choose to lodge a lawsuit with a national court instead of the Unified Patent Court.

We are ready to represent our clients before the European Patent Office to assist them in obtaining a unitary effect for their European patents, and to represent them before the Unified Patent Court.
 
3. Flow Chart: Illustration of the European Patent System and Its New Features

After grant of an European patent, two decisions have to be made:

Within a one-month period after grant: Shall a unitary effect of the European patent be requested?As long as no lawsuit has been lodged with the UPC: Shall litigation take place before the UPC or national courts (opt-out)?

As of 1 January 2021, the United Kingdom has now finally left the European Union and this is also having an impact on intellectual property, as we have already informed you in an e-mail in December 2020. In particular, for intellectual property rights within the scope of the European Union, such as the European Community trade mark and European Community design, there are changed local areas of protection, with the United Kingdom now creating its own British rights of protection for each European Community design and each European Community trade mark, which provide protection for the United Kingdom.

In order to continue to be able to fully represent our clients in the UK, we are pleased to inform you that we have established a subsidiary in the UK, LangPatent UK Services Limited, which is authorised to represent before the UK Patent Office, so that we may take all actions before the UK Patent Office. In particular, we can continue to nationalise European patents directly in the UK as usual. There is also the possibility that we will be able to continue to represent the new British rights of protection that have arisen from European Community protection rights. We are also able to directly apply for UK national intellectual property rights, such as British trademarks, patents and designs, and to represent our clients before the UK Patent Office.

If you have any further questions, please do not hesitate to contact us.
 

Due to the public holiday Corpus Christi, the office is closed on 16.06.2022.

The German Patent and Trademark Office and the European Patent Office will also be closed. Any official deadlines falling on this day will therefore automatically be extended until the next working day.
Since the Swiss Federal Institute of Intellectual Property as well as the European Union Intellectual Property Office (EUIPO) and the United Kingdom Intellectual Property Office are not closed, we will make sure that any official deadlines falling on 16.06.2022 will be extended or met. However, we kindly ask you to take into account that we may not provide any services on this day. Therefore please inform us in good time before that date, if you have any cases for which a time limit has to be observed on 16.06.2022.

Fascimiles and emails will still be received on 16.06.2022, but will not be processed until the next working day (i.e. 17.06.2022). Moreover, delays may occur. We kindly ask for your understanding.

Our office is closed on May 26, 2022 due to the holiday of the Ascension of Christ.

The German Patent and Trademark Office, the European Union Intellectual Property Office (EUIPO) as well as the European Patent Office and the Swiss Patent Office are also closed on that day. Official deadlines falling on this day are automatically extended to the next working day.

The United Kingdom Intellectual Property Office will be open on May 26, 2022 so that corresponding time limits have to be observed. We will consider this, but kindly ask you to take into account that we may not provide any services on this day. Therefore, please inform us in good time before that date, if you have any cases for which a time limit has to be observed on May 26, 2022.

Fascimiles and emails will still be received on May 26, 2022, but will not be processed until the next working day (i.e. May 27, 2022). Moreover, delays may occur. We kindly ask for your understanding.

Our office is closed on May 26, 2022 due to the holiday of the Ascension of Christ.

The German Patent and Trademark Office, the European Union Intellectual Property Office (EUIPO) as well as the European Patent Office and the Swiss Patent Office are also closed on that day. Official deadlines falling on this day are automatically extended to the next working day.
The United Kingdom Intellectual Property Office will be open on May 26, 2022 so that corresponding time limits have to be observed. We will consider this, but kindly ask you to take into account that we may not provide any services on this day. Therefore, please inform us in good time before that date, if you have any cases for which a time limit has to be observed on May 26, 2022.

Fascimiles and emails will still be received on May 26, 2022, but will not be processed until the next working day (i.e. May 27, 2022). Moreover, delays may occur. We kindly ask for your understanding.

Due to Easter Holidays, the office will be closed from April 15 to April 18, 2022.

The German Patent and Trademark Office, the Swiss Federal Intellectual Property Institute, the United Kingdom Intellectual Property Office, the European Patent Office as well as the European Union Intellectual Property Office (EUIPO) will be also closed on these days. Any official deadlines falling on one of these days will therefore automatically be extended until the next working day. For existing applications and proceedings, we will ensure compliance with the deadline. In the case of new orders, we ask for timely information.

Facsimiles and emails will be received during the above-mentioned days, but will not be processed until the next working day (i.e. April 19, 2022). Moreover, delays may occur. We kindly ask for your understanding.

We wish our Customers and business partners peaceful and merry Christmas and good health, prosperity and success in the new year 2022!

Due to the public holiday Epiphany, our office will be closed on January 6, 2022.

The German Patent and Trademark Office, the European Patent Office as well as the European Union Intellectual Property Office (EUIPO) will also be closed. Any official deadlines falling on this day will therefore automatically be extended until the next working day, i.e. January 7, 2022.

Since the Swiss Federal Institute of Intellectual Property is not closed, we will make sure that any official deadlines falling on this day will be extended or met.

Facsimiles and emails will be received on January 6, 2022, but will not be processed until January 7, 2022. We kindly ask for your understanding.

Due to Christmas and New Year’s holidays, our office will be closed on December 24, 2021, and December 31, 2021.

Since official deadlines falling on December 24, 2021 or December 31, 2021 will not be automatically extended for all offices, expiring deadlines on these days must be observed. For existing applications and proceedings, we will ensure compliance with the deadlines. In the case of new orders, we ask for timely information.

Facsimiles and emails will be received during the above-mentioned days, but will not be processed until the next working day (i.e. December 27, 2021 and January 03, 2022, respectively). Moreover, delays may occur. We kindly ask for your understanding.

Due to the public holiday All Saint’s Day our office is closed on November 1, 2021.

The German Patent and Trademark Office, the European Patent Office as well as the European Union Intellectual Property Office (EUIPO) will also be closed. Any official deadlines falling on this day will therefore automatically be extended until the next working day.

Since the Swiss Federal Institute of Intellectual Property is not closed, we will make sure that any official deadlines falling on November 1, 2021 will be extended or met. However, we kindly ask you to take into account that we may not provide any services on this day. Therefore, please inform us in good time before that date, if you have any cases for which a time limit has to be observed on November 1, 2021.

Facsimiles and emails will still be received on November 1, 2021, but will not be processed until the next working day (i.e. November 2, 2021). We kindly ask for your understanding.

It is now more than half a year since United Kingdom has left the European Union (EU) (Brexit). We informed you in December 2020 about the main effects of the Brexit for owners of IP rights at the European Union Intellectual Property Office (EUIPO). Now, more than half a year later, it appears that the process goes more smoothly as expected. We were able to establish a continuous representation for our clients in the United Kingdom and the United Kingdom Intellectual Property Office (UKIPO) by our new affiliated company LangPatent UK Services Ltd.. The transformation is done step by step and especially for registered trademarks and designs actions have only to be taken at the renewal date so that owners of EU IP rights are able to consider calmly which rights are needed in the UK and whether the additional costs are worth to pay them.

Pending EU-trademark applications at the end of the transition period 

Nevertheless, there is one exceptional situation which we announced already in our previous information which requires decisions very soon. As reported, different from registered trademarks and designs IP rights which were only pending, which means filed but not yet registered at the European Union Intellectual Property Office (EUIPO) at the end of the so-called transition period on December 31, 2020, will not be transferred by the UKIPO to comparable trademarks or designs automatically. Instead it is required to file a request for such a comparable trademark or design actively and pay the usual filing fees of the UKIPO to obtain an IP-right in the United Kingdom by maintaining the initial priority of the EU-right. The deadline to file such comparable rights will end on
 
In view of this coming deadline we recommend urgently to check whether there are EU-trademarks or Registered Community Designs which were filed before December 31, 2020 but were not yet registered on this date and to consider whether a protection in the United Kingdom is needed. Trademarks and designs which were filed at the EUIPO after December 31, 2020 cannot be transferred into comparable rights. It is only possible to file simple national applications in the United Kingdom. If the filing date of the EU-application is not older as six months the usual priority of the Paris convention can be claimed in the UK.

To enable us to file requests for comparable trademarks or designs for pending applications in due time we would be grateful if you could provide us with your corresponding instructions as soon as possible.

Genuine use in the United Kingdom 

Moreover, we want to draw your attention to the regulations with respect to genuine use for trademarks in the United Kingdom. Like most jurisdictions a trademark which was not in genuine use for 5 consecutive years is vulnerable for cancellation actions by third parties in the UK after the grace period of use of 5 years after registration of the trademark. In the European Union use in a significant part of the European Union was sufficient to be accepted as genuine use in the whole European Union and therefore, some trademarks might be used in parts of the EU, e.g. French and Germany but not in the UK. By the Brexit-agreement the government of the United Kingdom accepted that the continuation of those rules until the Brexit. That means that use of trademarks in other parts of the European Union will still be accepted as genuine use until the end of the transition period. This ensures that any use of the mark in the EU made before 1 January 2021, whether inside or outside the UK, will count as use of the comparable UK right. Where the 5-year period includes time before 1 January 2021, use in the EU will be considered. Where the period includes any time after 1 January 2021, use of the comparable trade mark in the EU (but outside of the UK) within that period will not be taken into account.

Based on this regulation there is in summary no need to fear that a trademark will loose its rights in the UK, because it was not in use there in the last 5 years, but it is highly recommendable to start use and record examples of use in the UK within the next years to keep full protection there.

Due to the public holiday Corpus Christi, the office is closed on June 3, 2021.

The German Patent and Trademark Office and the European Patent Office will also be closed. Any official deadlines falling on this day will therefore automatically be extended until the next working day.

Since the Swiss Federal Institute of Intellectual Property as well as the European Union Intellectual Property Office (EUIPO) are not closed, we will make sure that any official deadlines falling on June 3, 2021 will be extended or met. However, we kindly ask you to take into account that we may not provide any services on this day. Therefore please inform us in good time before that date, if you have any cases for which a time limit has to be observed on June 3, 2021.

Fascimiles and emails will still be received on June 3, 2021, but will not be processed until the next working day (i.e. June 4, 2021). Moreover, delays may occur. We kindly ask for your understanding.

Nonwithstanding the continuing exceptional situation caused by the Corona virus epidemic and the associated regulatory measures and restrictions of the public life, we would like to point out that we continuously provide our services in an unchanged form and, in particular, ensure that all deadlines are met with the authorities and courts.

To protect our employees, we continue working in the shift system and are concurrently fully operational by means of telework using secure electronic access to our systems and data from different locations.

However, we ask for your understanding if in this exceptional situation, and despite all efforts, delays may occur in the workflow.

In addition, we would like to point out that also the various offices currently guarantee continuous operation despite the measures taken.

We continuously hope that the situation will return to normal as soon as possible and further on wish our business partners and their relatives all the best and, above all, of course health.

We wish our Customers and business partners peaceful and merry Christmas and good health, prosperity and success in the new year 2021!

Did you know that numerous creative ideas being part of patent applications have been grown around the topic of "Christmas" and the customs related thereto? How about, for example, a Santa Claus detector (US patent application US 5,523,741 A) or an artificial Christmas tree with blades rotated by wind power (US patent application US 2020329896 A1)?

On Thursday, 26 November 2020, the Bundestag approved the Ratification Act on a Unified Patent Court, so that the Agreement on a Unified Patent Court (UPCA) can be ratified.

The Unified Patent Court, as an international organisation established in Luxembourg, consists of a Court of First Instance, an Appeal Court and an Office (Article 6(1) of the Agreement). The Court of First Instance shall include a Central Chamber and Local Chambers and Regional Chambers (Article 7(1) of the Agreement).

In Germany, a department of the Central Chamber in Munich and Local Chambers in Düsseldorf, Hamburg, Mannheim and Munich are set up.

Germany signed the Agreement on 19 February 2013. The Agreement has since been ratified by 16 signatory states, including France and the United Kingdom. For its entry into force, only ratification by the Federal Republic of Germany is still required.

The Bundestag had already passed a Ratification Act on the agreement in 2017. This law was annulled by decision of the Federal Constitutional Court because the law had not been passed by a majority of two-thirds each in the Bundestag and the Federal Council (Bundesrat) (German upper house).

In Germany, the UPC bill on the Unified Patent Court (UPC) will now be submitted to the Federal Council for approval later this year. Following the completion of the German ratification process, it is expected that the final preparatory steps for the establishment of the Unified Patent Court can be finished in 2021. The UPC could then start operating in 2022.

With the establishment of the UPC, unitary patents will also be possible, which will complement and reinforce the existing centralised European patent grant system. Unitary patents make it possible to obtain unitary patent protection in up to 25 EU Member States with a single application to the European Patent Office (EPO), making the procedure easier and more cost-effective for applicants.

A long-awaited change in German trademark law has finally come into effect on May 1, 2020. Now, in Germany, as in most jurisdictions worldwide, even after the opposition period has expired, cancellation proceedings can be initiated against a younger trademark due to older rights or suspected non-use (expiry) of the younger trademark before the German Patent and Trademark Office (GPTO). German law is thus taking the final step in the adjustments required by the reform of European Union trademark law in 2015. From the start, the aim of the reform was to harmonize the legal systems of the individual member states with EU law, but also with each other. Cancellation proceedings have always been possible before the European Union's Intellectual Property Office (EUIPO).

Previously, owners of older rights, which did not take action against a younger German trademark during the opposition period, were not completely without rights. Until now, cancellation proceedings have always had to be carried out before the ordinary courts. Since the courts had regularly assumed that the value of a dispute would not be less than € 50,000 for an unused trademark, there was a considerable cost risk for potential applicants. The deletion due to non-use could already be requested before the office. For the owner of the trademark, which might be ready for cancellation, a simple declaration of opposition to the cancellation was sufficient to force the applicant and the cost risk to the ordinary courts.

The need for an objection remains even under the new procedures. If the proprietor of the contested mark does not raise it within two months after delivery of the application for nullity, his mark will be deleted without the applicant's further action. In this case there is no need for the adversarial part of the proceedings.

With regard to the costs, the relief for applicants is clearly noticeable, as expected. If the applicant bases his or her application for annulment on an earlier right, he must pay a fee of € 400 within 3 months after filing the application for cancellation. If the application is based on several rights, a fee of € 100 per additional right is due. In the proceedings based on non-use, the applicant must continue to pay a fee of € 100 for initiating the proceedings as before. If the trademark owner does not object, no further costs will be caused. In the event of an objection, the applicant must pay a so-called follow-up fee of € 300, so that the regular fee of € 400 is incurred in both procedures.

However, the applicant can still choose to go to the ordinary courts in both procedures. This is useful, for example, if the applicant is very sure of his case and wants to put pressure on the trademark owner in court through the impending reimbursement of the significantly higher costs. It also remains to be seen how the duration of the proceedings will develop. Given the current processing times at the GPTO, applicants who want a quick decision may be better served by the courts.

We will be happy to assist you if you would like further information on the new types of proceedings or other aspects of the trademark law reform, and of course we would be happy to represent your interests before both the offices and the courts.

Trade Marks and Designs

Comparable UK (United Kingdom) trade mark and design rights will be created at the end of the transition period for each registered EU (European Union) trade mark or EU design right under the terms of the Withdrawal Agreement between the EU and UK regarding the BREXIT (UK leaving the EU) by the end of year 2020.
On 1 January 2021, the intellectual property office (IPO) of the United Kingdom will create a comparable UK trade mark for every registered EU trade mark (EUTM) and a re-registered design for every Registered Community design (RCD). Each of these UK rights will:
- be recorded on the UK trade mark or design register
- have the same legal status as if the proprietor had applied for and registered it under UK law
- keep the original EUTM or RCD filing date
- keep the original priority or UK seniority dates
- be a fully independent UK trade mark or design that can be challenged, assigned, licensed or renewed separately from the original EUTM or RCD

The trade mark or design proprietors will not:
- need to file an application for this right or pay an application fee.
- receive a UK registration certificate, but will be able to access details about the trade mark or design on www.gov.uk and can take a screen shot from there as evidence of the right.

Businesses, organisations or individuals that have applications for EUTMs or RCDs which are not registered at the end of the transition period will have a period of nine months to apply in the UK for the same protection. In this case, UK application fees will be payable, and the application will be subject to UK examination and publication requirements.

The earlier filing date of the corresponding EUTM or RCD application may be claimed.

All Registered Community Designs and European Union Trade Marks which will expire after December 31, 2020 will have to be renewed in the UK separately by paying the renewal fees for the corresponding UK rights, if protection shall be maintained in the UK. An early payment for rights protected at the European Union Intellectual Property Office (EUIPO) will have no effect in the United Kingdom (UK), i.e. it has no effect whether the renewal fee at the EUIPO had been paid before January 01, 2021.
 
International trade marks and designs
International trade marks and designs designating the EU will continue to have protection in the UK under the terms of the Withdrawal Agreement.

On 1 January 2021, the IPO will create:
- a comparable UK trade mark for every international trade mark (EU) that is protected at the end of the transition period’
- a re-registered UK design for every international design (EU) that is protected at the end of the transition period

Where an international trade mark or design designating the EU has been applied for, but is not yet protected, the holder will have a period of nine months to apply for the same right as a UK trade mark or design. UK application fees will be payable, and the application will be subject to UK examination requirements and for trade marks publication requirements.

Unregistered Designs
Unregistered community designs that arise before the end of the transition period will continue to be protected in the UK for the remainder of their three year term through continuing unregistered designs.

From 1 January 2021, a supplementary unregistered design (SUD) will become available in UK law.

The SUD will provide similar protection to that conferred by the unregistered Community design, but for the UK only.

The SUD will be established by first disclosure in the UK or another qualifying country. First disclosure in the EU will not establish a SUD right. It could destroy the novelty of the design should you later seek to establish UK unregistered rights.

Business will need to consider carefully where to disclose their products to ensure they have adequate protection in their most important market.
 
Patents

As the European Patent Office EPO is not an EU agency, leaving the EU does not affect the current European patent system. Existing European patents covering the UK are also unaffected.
 
Supplementary Protection Certificates (SPCs)

SPCs are granted as national rather than EU-wide rights so that BREXIT has almost no influence.

Parallel trade between the UK and the EEA

The IP rights in goods placed on the UK market by, or with the consent of the right holder after the transition period may no longer be considered exhausted in the EEA (European Economic Area (including the EU and Iceland, Liechtenstein and Norway)), if they are exported from the United Kingdom to the EEA without the consent of the right holders.

This means that businesses parallel exporting these IP-protected goods from the UK to the EEA might need the right holder’s consent.

The IP rights in goods placed on the EEA market by, or with the consent of the right holder after the transition period will continue to be considered exhausted in the UK, if they are exported from the EEA to the United Kingdom without the consent of the right holders.

This means that parallel imports into the UK from the EEA will be unaffected.

Copyright

Most copyright works (such as books, films and music) will still be protected in the EU and the UK. This is because of the UK’s continued participation in the international treaties on copyright.

For the same reason, EU copyright works will continue to be protected in the UK. This applies to works made before and after 1 January 2021.

Representation

From 1 January 2021, UK attorneys will be unable to represent clients on new applications or new proceedings at the EU Intellectual Property Office (EUIPO).

Likewise, from 1 January 2021 only an address for service in the UK (which for these purposes includes the Isle of Man), Gibraltar or the Channel Islands will be accepted for new applications and new requests to start contentious proceedings before the IPO of the UK. Our law firm is currently in the process to ensure continuous representation in the UK and we will provide the relevant information at short notice.

Due to Christmas holidays, the office will be closed on December 24, 2020, December 25, 2020 and December 26, 2020.
Due to New Year’s holidays, our office will be also closed on December 31, 2020 and January 01, 2021.

The German Patent and Trademark Office, the European Patent Office, the Swiss Federal Institute of Intellectual Property as well as the European Union Intellectual Property Office (EUIPO) will be also closed on December 25 and 26,.2020 and on January 1, 2021. Any official deadlines falling on one of these days will therefore automatically be extended until the next working day. However, deadlines falling on December 24, 2020 and December 31, 2020 will not be automatically extended for all offices, so that expiring deadlines on these days must be observed. For existing applications and proceedings, we will ensure compliance with the deadline. In the case of new orders, we ask for timely information.

Facsimiles and emails will be received during the above-mentioned days, but will not be processed until the next working day (i.e. December 28, 2020 and January 04, 2021, respectively). Moreover, delays may occur. We kindly ask for your understanding.

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Due to the public holiday Corpus Christi, the office is closed on June 11, 2020.

The German Patent and Trademark Office and the European Patent Office will also be closed. Any official deadlines falling on this day will therefore automatically be extended until the next working day, i.e. Friday, June 12, 2020. Since the Swiss Federal Institute of Intellectual Property as well as the European Union Intellectual Property Office (EUIPO) are not closed, we will make sure that any official deadlines falling on this day will be extended or met. If you have any cases for which a time limit has to be observed on June 11, 2020, please inform us in good time before that date.

Facsimiles and emails will still be received on June 11, 2020, but will not be processed until June 12, 2020. We kindly ask for your understanding.

Order of the German Federal Constitutional Court of 13 February 2020 (2 BvR 739/17)

The Act on the Agreement on a Unified Patent Court (EPGÜ-ZustG), which is to be established for the creation of the European unitary patent system, is null and void under the recently published decision of the German Federal Constitutional Court, so that the Federal Republic of Germany cannot ratify the corresponding contracts for the setting of the unitary patent system into force. In the opinion of the Federal Constitutional Court, the law, which was annulled, would result in a substantive constitutional amendment that would require a two-thirds- majority of the German Bundestag.

Accordingly, the law must now be adopted again by a two-thirds majority of the German Bundestag, which should lead to a further delay in the introduction of the unitary European patent System.

By the end of 31 January 2020, Britain has finally left the European Union. However, an agreement has stipulated that, initially in a transitional period until 31 December 2020, EU law will continue to apply in the UK, even if the UK is no longer part of the EU institutions, i.e. no longer sends MEPs to the EU Parliament.

This does not change anything in the area of intellectual property rights and, in particular, with regard to EU intellectual property rights in the field of trademarks and designs. This is reserved for the arrangements to be agreed during the transitional period. We will inform you accordingly in due course.

To fulfil the requirements of the harmonization of the EU-trademark-law, Germany decided to amend the “Markengesetz” (German Trademark Regulation Act) significantly. The revision became effective on January 14, 2019.
 
In detail the changes are the following:

 1. One opposition based on multiple signs 

Up to now it was not possible in Germany to base one opposition on several signs. Owners of e.g. a word-device-mark and a corresponding wordmark had to file two oppositions to make sure that their whole trademark – portfolio will take full effect in a conflict. By the amendment it will now be possible to file an opposition based on more than one sign. The facilitation of the proceedings however, has to be paid by increased official fees. In Germany we had very moderate opposition fees in an amount of 120 € per opposition. Now the official fees will be at 250 € basic fee for one opposition and additional fees of 50 € per each additional sign the opposition is based on.
 
Additionally, the successful idea of the “Cooling-Off”-period will be included in a different form in German law. Up to now it was in the discretion of each examiner whether an extension of time or a suspension of proceedings in view of negotiations between the parties is granted. In case of a joint request of both parties the office is now bound to grant an extension of at least two months. This period can be extended by the parties by further joint requests.

2. New Trademark forms 

Probably the most important amendment is opening the register for the new trademark forms which was done in the EU already in 2016. Up to now a trademark was only accepted by the German Patent- and Trademark Office if it was graphically represented. This requirement will be waived, and the register will be opened for trademarks in form of sounds, holograms and other multimedia-trademarks. The only requirement is that the new trademark shall be clear and defined.

3. Certification marks 

Also, a kind of a new trademark form is the new certification mark. There was already a similar form in Germany, called the collective mark, for which several interested parties could unite to protect a common trademark by building an association. They had to provide the office with statutes showing the purpose of the association and the requirements for a membership. The members of the association were free to use the collective mark according to their own statutes.
 
The application procedure for the new certification mark will be very similar. Especially, it is also demanded to provide the office with statutes, but the purpose is different. The certification mark will not mainly be used by the association which owns the mark or the members thereof, but the association will allow third parties to use the certification mark. With this new trademark form new independent quality seals shall be facilitated in order to strengthen the own forces of the markets and market participants to control themselves and increase the quality of products as well as the fairness of market`s conditions.

4. Recordal of licenses 

For many of our client`s and business partner it was hard to understand that in Germany it was not possible to have a license agreement recorded by the German Patent- and Trademark Office. This nuisance will now be eliminated, and the German register will also be open to make licenses transparent. Similar to the patent law, it will also be possible to publish the interest to license or assign a trademark so that third parties may contact the trademark owner, if they are interested in using or purchasing the trademark.
 
We want to point out that the described amendments will be effective only for trademarks. For German Designs no possibility to have licenses recorded is in sight.

5. Cancellation actions based on older rights 

Up to now, if an opposition deadline for filing an opposition against a German trademark was missed, the defence of the older rights was very costly, since only a lawsuit at the ordinary courts was possible. Now, a new cancellation action before the German Patent and Trademark office will be established which allows cancelation actions also based on older rights and not only on non-use or absolute grounds for refusal as previously.

6. Renewal deadline 

The deadline for a renewal deadline will be fixed to ten years after the application date. Even if this amendment brings a loss of time for over one month we know that the previous German rule in which the renewal deadline was calculated from the month after the application was filed was an unpleasant source for calculation mistakes.

 

By judgment of 21 September 2017 in joined Cases C 361/15 P and C 405/15 P, Easy Sanitary Solutions BV v EUIPO/Group Nivelles NV, UK, intervening, ECLI: EU: C: 2017: 720, the The European Court of Justice is fundamentally used to understand the notion of novelty in European Community design law.

In summary, the product information is neither limiting the scope of protection nor the relevant state of the art.

In detail:

• The scope of protection of a Community design is not limited to the product specified in the product indication (paragraph 91-95).

 

• The assessment of novelty is not limited to the products indicated in the notification, but must take account of any earlier design, irrespective of the product to which that earlier design was incorporated or intended to be used (paragraph 96, 104).

 

• The exclusion of disclosures which could not have been known to the relevant industry in the Community during the normal course of business should exclude difficult to verify facts in third countries as a revelation and does not aim to distinguish between the different spheres of activity in the European Union and Exclude facts from the disclosure which relate to a field of activity which could not be known to the industry in the Union in the normal course of business (paragraph 102).

 

• The informed user, without being a designer or a technical expert, knows the various designs existing in the sector concerned, possesses some knowledge of the ones that they usually possess, and uses the products in question for his own purposes Interest in them with relatively great attention (paragraph 125). Older registered design need not be known to the informed user of the contested design (paragraph 126, 130)

 

• The applicant does not have to provide double evidence for disclosure to users of the type of product concerned to which the contested design relates (paragraph 133). Informed users need not know the product (No 134) Accordingly, it is to be expected that European design practice will in the future apply an almost absolute concept of novelty.

Regulation (EU) No. 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation has been published in the Official Journal of the European Union on December 24, 2015. The Regulation will enter into force 90 days after publication, thus on March 23, 2016.
 
Briefly, the most relevant amendments implemented by the European trademark reform package are as follows:

• Terminology changes: The Office for the Harmonization in the Internal Market OHIM will become the European Union Intellectual Property Office. In addition the Community trademark will be renamed the European Union trademark. All existing Community trademarks and Community trademark applications will automatically become European Union trademarks and European Union trademark applications, respectively. Applicants or holders do not have to take any action.

 

• Broader definition of an EU trademark: The Regulation is amended to remove the requirement of graphic representability of the trademark. Henceforth, an EU trademark can be registered, when the trademark is represented in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection. The new definition leaves the door open to registering matter that can be represented in any available technology. This opens the possibility to file odor marks or sound marks, for example. This will come into force from October 1, 2017.

 

• Extension of absolute grounds of refusal: In the future, all designations of origin, geographical indications or protected traditional terms for wine and traditional specialties are excluded from registration as a trademark. Above that, the rules for registration of shape trademarks are also applied to other kinds of trademarks with functional signs which are now possible (see above).

 

• Extension of rights conferred by an EU trademark: The proprietor of an EU trademark will be entitled to prevent all third parties not having his consent from using an identical or similar sign as a trade or company name or part of a trade or company name. It is further clarified that the proprietor may prevent the use of his trademark in comparative advertising where such comparative advertising does not satisfy the requirements of the Misleading and Comparative Advertising Directive (Directive 2006/114/EC).

 

• Increased counterfeit protection: The proprietor of an EU trademark now, under certain circumstances, may prohibit the mere transit of goods as well as certain preparatory acts. The former applies to third parties bringing goods into the EU bearing an infringing sign even where those goods are not being released for free circulation. The latter means that affixing infringing signs on packaging, labels, tags, security or authenticity features or devices or any other means where the risk exists that said means could be used in relation to goods or services, may be considered an infringing act, too.

 

• Limitation of the effects of an EU trade mark: An EU trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, the name or address of the third party, where that third party is a natural person.

 

• Changes in claiming priority: Priority claims shall be filed together with the EU trademark application and shall include the date, number and country of the previous application.

 

• Changes in opposition proceedings: The relevant five year period for proof of use of the earlier mark in opposition proceedings is amended to be that preceding the date of filing, or the date of priority, of the EU trademark application, not the date of publication. Above that, the timing of the opposition period for International trade marks designating the EU is revised to run from one month following the date of publication instead of six months following that date.

 

• Introduction of EU certification marks: An EU certification mark shall be an EU trademark which is described as such when the mark is applied for and is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified.

 

• Introduction of a Mediation Centre: Any natural or legal person may use the Centre's services on a voluntary basis with the aim of reaching a friendly settlement of disputes.

 

• Changes in supervision: The European Parliament will have a seat in the management board of the Office.

 

• Changes to the designation and classification of goods and services: The use of general terms, including the general indications of the class headings of the Nice Classification, shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term. Proprietors of EU trademarks applied for before June 22, 2012 which are registered in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class in the edition of the Nice Classification in force at the date of filing. At latest, such declaration shall be filed at the Office by September 24, 2016.

 

• Changes to official fees and new ‘one-class-per-fee’ structure:  The amended fee structure for application and renewal of EU trademarks may be of special interest for future trademark applicants. The official basic fees for application and renewal of an individual EU trademark by electronic means are reduced to 850 Euro. Said fees however will only cover one instead of three Nice-classes.  The second class will be subject to an official fee of additional 50 euros and additional classes exceeding two then will cost an extra fee of 150 euros each. In summary, the future official fees for an application and for a renewal amount to 850 Euro in one class, 900 Euro in two classes and 1,050 Euro in three classes. Among several other changes, the official costs for filing an opposition are increased to 320 Euro.