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Worldwide IP system updates by Country

Patents

January 20, 2025
Several PCT fees have also been amended by slight percentage alterations, including the international filing fee for up to the first 30 pages, which has decreased by approx. 1.3% from 1,575 USD to 1,555 USD.

Other fees which have been subject to a decrease include the handling fee, which has fallen only slightly from 237 USD to 234 USD. The same fee is heavily discounted by a considerable 90% for applicants who are both a national and a resident of a State classified by the United Nations as a least developed country. In line with the new fee schedule, the cost associated with the handling fee inclusive of the 90% discount has dropped from 23.70 USD to 23.40 USD.

The international search fee in instances whereby the European Patent Office (EPO) acts as the International Searching Authority (ISA) has, on the other hand, increased by approx. 1.9% from 1,989 USD to 2,025 USD, whilst the fee for an international search conducted by IP Australia (IPAU) has risen by approx. 6.3% from 1,407 USD to 1,495 USD.

The above fees represent only some of the changes to PCT made by the USPTO, with the office conducting a review of fees, costs, and revenues on a bi-annual basis in order to ensure the recovery of costs for the facilitation of the services it offers.

April 1, 2024

The World Intellectual Property Office (WIPO) has recently announced changes to their international fees implemented as of April 1, 2024.

In Finland, for example, the search fee for a PCT application rose by an approx. 4% from 1,775 EUR to 1,845 EUR. The same fee increase also applies to the additional PCT search fee and the supplementary search fee for PCT applications with respect to Finland.

The PCT fees for Norway applicants have seen a similar rise, with the international search fee increasing by an approx. 4% from 20,090 NOK to 20,880 NOK.

January 1, 2024

As of January 1, 2024, certain fees with regard to patents filed under the Patent Cooperation Treaty (PCT) were amended, with the fees differing per jurisdiction as a result of altering exchange rates.

As per the amended fee rate, the international filing fee has increased by a small percentage to 1,381 EUR from 1,378 EUR with regard to Finnish PCT fees, whilst the same fee in relation to UK PCT costs has risen from 1,197 GBP to 1,200 GBP.

The new reduction for the international filing fee for electronic applications in character-coded format in relation to Finnish PCT costs has increased from 207 EUR to 208 EUR, and from 180 GBP to 181 GBP in relation to the UK.

Patents

April 1, 2024

As of April 1, 2024, an amended fee schedule is set to enter into effect with respect to matters filed with the European Patent Office. Whilst some costs, such as the filing fee, remain unchanged, others have risen by varying percentage increases throughout.

As per the amended fee schedule, the cost for a European or supplementary European search is set to rise by approx. 4% from 1460 EUR to 1520 EUR for applications filed on or after July 1, 2005, and from 1000 EUR to 1040 EUR for those filed prior to that date.

The international search fee will also increase by approx. 4% from 1775 EUR to 1845 EUR, as will the designation fee for one or more Contracting State for applications filed on or after April 1, 2009, increasing to 685 EUR from 660 EUR.

The yearly costs in relation to patent renewals have risen by varying amounts across the board, with the fee for the 3rd year set to increase by approx. 30% to 690 EUR from 530 EUR whilst the 5th year will increase by a lesser approx. 8% to 1000 EUR from 925 EUR. The 7th year of renewal will rise to 1310 EUR from 1305 EUR.

The amended fees in relation to the examination of a patent application will rise by an approx. 4%, with the cost for applications filed prior to July 1, 2005 set to inflate from 2055 EUR to 2135 EUR and from 1840 EUR to 1915 EUR for those filed after the aforementioned date. The grant and publication fee will also rise by approx. 4% from 1040 EUR to 1080 EUR.

In addition to an amended fee schedule, the EPO will also implement a new fee system for micro-entities. The definition of micro-entities in the context of the EPO is inclusive of microenterprises, natural persons, non-profit organizations, universities, and public research organizations that have filed fewer than 5 patent applications in the past 5 years.

The new fee structure for micro-entities will be an extension of the current system, introducing new fee reductions for the filing, search, designation, examination, grant, and renewal of patents for qualifying applicants. Such reductions in fees for eligible applicants are set to further assist those with fewer resources in applying for patents, encouraging innovation from a more diverse range of inventors.

Patents

June 25, 2024

The European Union has enforced its 14th set of sanctions against Russia amidst ongoing political unrest, implemented on June 25, 2024 and impacting the rules surrounding intellectual property (IP) rights for applicants with an association to the jurisdiction.

As per the sanctions, pursuant to Article 5s of Regulation No. 833/2014 and the Council Regulation (EU) 2024/1745 of 24 June 2024, EU IP Offices are prohibited from accepting new applications for the registration of patents, trademarks and industrial designs, among other IP subject matters, should the applicant be of a certain connection to Russia.

Those prohibited from filing for IP matters within the EU include Russian nationals, natural persons residing in Russia and legal entities, organizations or institutions based in Russia. These restrictions also apply should any of the aforementioned types of restricted applicants apply alongside non-Russian nationals/business owners within the country.

Any applications for IP filed following the grant of IP right protection will not be impacted by the sanctions, nor do they apply to nationals of the EU, EEA or Switzerland with temporary residence in Russia.

February 23, 2024

The European Commission, alongside the European Union Intellectual Property Office (EUIPO), recently signed an agreement facilitating the implementation of the EU Regional Program to support the IP sphere of Ukraine, the Republic of Moldova and Georgia.

The Program, jointly financed by the European Commission and the EUIPO to a total of €4 million, is set to run for a total of four years and is hoped to facilitate progression towards the harmonization of national legislation in the aforementioned countries with European IP law.

The commencement of the implementation process will see measures put in place for supportive funding grants as well as for ongoing professional training in the IP field. The proposed training is particularly intended to facilitate the professional development of judges for the IP courts of Ukraine, with the aim of creating a strong IP justice system in the country.

Demonstrating an ongoing effort to facilitate a more sustainable and eco-friendly IP field, the European Patent Office (EPO) has further solidified its move toward a digital IP system by abolishing postal acknowledgments of receipt as of February 1, 2024. This alteration only impacts matters in relation to communications in paper form with the EPO.

From the aforementioned date, summonses and decisions issued in paper form will no longer include acknowledgements of receipt.

Moreover, applicants will no longer be able to opt to receive acknowledgements for subsequently filed documents in paper form as of February 1. The only exception to the newly enforced procedure is for a small number of European patent applications newly filed which are still to be acknowledged via post.

Further alterations to the IP system of the EPO alongside the abolishment of paper acknowledgements include the discontinuation of certain forms, and the implementation of exemptions to page fees in relation to parent application’s ST.25 sequence listing (in PDF) additionally filed as part of a divisional application.

As per the exemptions, which were introduced towards the end of 2023, the fee in relation to a parent application’s ST.25 sequence listings additionally filed or contained in the certified copy under Rule 40(3) EPC will be excluded from the overall page fee calculation.

The recent procedural changes and collaborative initiatives introduced in the European region by way of the EUIPO and the EPO signify a progressive move towards a unified and cohesive IP field which, in turn, is hoped to provide for a more stable environment for innovation to flourish.

Industrial Designs

On October 10, 2024, the European Union (EU) Council adopted the EU Design Legislative Reform Package.This package comprises two legislative acts, namely the European Design Directive (“EUDD”) (the Recast Directive on the legal protection of designs), and the European Design Regulation (“EUDR”) (the Amending Regulation on community designs). Combined, these two texts bring about substantial updates to the current design system of the EU, which has been in force for over twenty years.

The new design law is set to implement a multitude of significant changes to the current system, including a move toward an alignment with the protection used within the EU trademark system. As such, and upon the implementation of the new legislative reforms, Community Designs will instead be referred to as “European Union Designs” (“EUDs”), with the Community design courts being renamed as “EU design courts”.

Moreover, registered holders of EU designs will be able to utilize the newly created design registration symbol “Ⓓ” in order to indicate the authenticity of the product to which the design relates, in a similar vein to the way the ® or © symbols are already in use for trademark and copyright IP rights.

EU design applicants will also be able to file multiple EU design applications for registration comprising designs that fall into various Locarno classes, as opposed to being restricted to file for products of the same class and type. This new freedom is limited to 50 designs per multiple design application.

An amended and more simplified fee regime is also set to enter into force as of May 1, 2025. As per these fee changes, the cost in relation to an application for an EU design will remain at the same rate of 350 EUR; however a uniform reduced fee of 125 EUR will be applied for each additional design in a multi-design application. Despite this impending discount in fees for EU designs, the cost of renewal is set to increase significantly, particularly in relation to the 3rd and 4th yearly fees. International design registrations designating the EU, on the contrary, are due to see a substantial drop in renewal fees once the new costs have been implemented.

Another significant change to the design legislation is that whilst the visibility criteria remain obligatory for registration, the design features of a product will not be required to be visible in any particular scenario or timeframe to be protectable by a design right. An exception to the aforementioned non-requirement is that any component parts of a complex product should remain visible during normal use of the product.

Further, the definitions of "Design" and "Product" have been broadened. As such, the term “Design” is set to not only encompass the appearance of either the whole, or part of, a product, but also covers “the movement, transition or any other sort of animation of those features” too. The new definition of the term "Product" will describe any industrial or handicraft product inclusive of either physical forms of design, or digital forms, such as virtual designs in the metaverse, and will also include graphical user interfaces (GUIs), as well as interior or exterior environments.

Moreover, there has been an extension of the scope of protection for design rights, with design infringement now encompassing 3D printing. The regulations now also clarify that infringement can constitute the downloading, copying, sharing or distribution to other parties via any medium or software that records the design for the purpose of making a product protected by the design. EU design holders will also be entitled to prohibit third parties from transporting products from non-EU countries into the EU, even if they are not intended to be placed on the EU market.

The new legislation is also set to assist EU countries in protecting cultural heritage, with the new directive allowing Member States to implement within national law that a design may be refused registration if it contains any reproduction of elements of cultural heritage that are of national interest, for example, a traditional costume of a region.

The new EUDR provisions are set to enter into force as of May 1, 2025, however any provisions that require implementing secondary legislation will not be applicable until July 1, 2026. Such provisions which are set to enter into force in 2026 include the allowance of new types of designs. The EUDD, on the other hand, will enter into force on 8 December 2024, with EU Member States having three years, until December 9, 2027, in order to transpose the provisions into national law.

The new EU design legislation aims to modernize the framework surrounding the existing industrial design regulations, forming a more efficient system for applicants and rights holders to utilize. Moreover, the introduction of the allowance of different types of designs for registration, including a wider scope expanding into non-physical forms of designs, will allow for the system to further support innovation through new technologies.

Overall, the revisions to the EU design legislative framework are set to strengthen and standardize the existing design regulations across the EU, encouraging designers and businesses to foster further creativity and innovation, and to register their designs for EU protection.

Patents

March 22, 2024

A new Pre-Prosecution Pilot service was recently introduced by the United States Patent and Trademark Office (USPTO), aiming to facilitate the review of patent applications prior to their submission.

Aimed towards inventors who have not previously filed for patent protection for their innovations, the pre-prosecution review service is hoped to expand accessibility to the IP protection system for those who may not have had the means and support to have filed before.

The review of potential patent applications via this service will provide insight to prospective applicants with regard to the strengths and weaknesses of their patent application, including support for applicants in utilizing services to determine whether their invention would meet the criteria of novelty.

The USPTO recently implemented the service for the first wave of prospective applicants until January 31, 2024 and is hoped to be able to provide more information in due course. Whilst a pre-prosecution patent review will not be considered an official decision as to patentability by the USPTO, the service is hoped to expedite the process by mitigating any slight mistakes in an application prior to its submission.

Trademarks

January 18, 2025

A new IP fee schedule was implemented in the US as of January 18, 2025, with the amendments largely concerning trademarks filed before the USPTO, as well as PCT patent applications.

One of the most significant amendments to the fee structure is the abolishment of both the Trademark Electronic Application System (TEAS) Plus fee of 250 USD, and TEAS Standard fee of 350 USD, which have now been replaced with one base application fee of 350 USD per class. The trademark application fee for marks filed with the WIPO, as well as the fee for each subsequent designation, have increased by 20% from 500 USD to 600 USD.

Both the fee in relation to a trademark renewal filed via the WIPO, and the fee in relation to a section 9 registration renewal per class, have risen by approx. 8.3% from 300 USD to 325 USD. Moreover, the fee per class for a section 8 declaration, as well as the fee for a section 71 declaration, have increased by approx. 44.4% from 225 USD to 325 USD respectively, whilst the fee in relation to a section 15 declaration has risen by 25% from 200 USD to 250 USD.

Intent to Use fees have also seen slight alterations, with both the fee per class for the filing of a Statement of Use (SOU), and the fee per class for the filing of an Amendment to Allege Use (AAU) inflating by 50% from 100 USD to 150 USD.

The trademark fees of the USPTO have been updated in line with the office’s principles of promoting innovation strategies, aligning fees with trademark services costs, facilitating an effective administration of the trademark system, and offering different application processing options.

CHINA

Patents

On August 6, 2024, the Chinese National Intellectual Property Administration (CNIPA) implemented a reduction in intellectual property fees in line with recent legislative changes and the enforcement of legal Notices.

As per the patent costs amendments, all requests for the compensation of a patent validity term will henceforth incur a cost of 200 RMB. Should the request meet the required obligations for compensation of a patent term upon assessment, a total of 8,000 RMB will be payable as compensation for an annual patent right, with no charge being incurred for a period of 12 months or less.

Moreover, a decrease of 15% has been implemented in relation to patent annuity fees during the patent open licensing implementation phase. Such reductions in fees are enforceable respectively, and are not available in conjunction with one another. Further, in case the amendment to the name or denomonation of a patent applicant/owner is made in a bulk order and does not involve the transfer of rights, the official fees are charged per each change requested.

March 22, 2024

The pilot project of the Patent Prosecution Highway (PPH) between the German Patent and Trademark Office (DPMA) and Chinese Intellectual Property Authority (CNIPA) has recently been extended.

Initially implemented on January 23, 2012, the joint cooperation allows for accelerated patent examination through the sharing of data and information between the two offices. As such, the patent examination results produced by the Office of First Filing are shared with the Office of Second Filing, thus eliminating the need for duplicate examination of the same patent application if submitted in both offices.

The DPMA and the CNIPA have extended the pilot PPH project for a further three years, with the new expiration date of the project set for January 22, 2027.

The Japanese Patent Office (JPO) and the Indonesian Directorate General of Intellectual Property (DGIP) have also opted to extend their PPH pilot program. Originally entering into effect on June 1, 2013, the extension of the program between the two offices will run until December 31, 2026.

The extension of multiple PPH pilot programs indicates a move toward a more cohesive and collaborative approach to the IP field on an international scale.

January 20, 2024

As of January 20, 2024, several amendments to the Implementing Regulations of the Chinese Patent Law entered into effect. These regulations have been implemented in line with the previous revisions to the national patent legislation enacted in 2020.

One of the most significant changes brought about by the new regulations is the alignment of Chinese patent law with the Patent Cooperation Treaty (PCT.) As such, a new provision for the restoration of priority rights for patent and utility model applications has been implemented. The allowance of restoration of priority rights is applicable to such applications which have exceeded the priority deadline with demonstrable good cause. It is further outlined that such restoration of priority must be made within two months from the initial deadline.

Should a PCT application priority be restored during the international phase, once the application has entered the national stage in China, the application will be re-examined by the China National Intellectual Property Administration (CNIPA). According to the recently amended national patent examination guidelines, the examination of such patent applications will follow a formal practice and the CNIPA will typically follow a receiving office’s decision in restoring a priority right that has been made in the international stage.

In instances where a request for the restoration of priority does not occur during the international phase, or if such request is not approved, an applicant will be able to submit a restoration request within 2 months upon entry into the national phase in China.

In further reference to PCT regulations, applicants may now supplement incorrect or missing elements to a claim or specification of a patent or utility model application by way of invoking prior applications identified in the prior search. As such, applicants are able to supplement such elements of an application within a two-month period following the date of filing. In such instances, the initial filing date will be retained.

The amended regulations have also introduced the possibility of three new types of drug patents, namely those for new pharmaceutical use, new drug products, and new processes of manufacture. An extension of the patent validity term is possible for applicants for new drug patents in order to mitigate the delay in time owing to the lengthy approval process of new drugs entering the market. This extended term is limited solely to the approved drug product and its intended use.

With regard to priority claims for national patents or utility models, if the right to priority has been claimed, applicants are now permitted to request to add or correct any priority claims within a 16-month period from the priority date, or within 4 months following the application date.

Further amendments to the regulations have been implemented regarding the good faith principle in respect to the conduct of an applicant during the patent prosecution process, as well as to patent right holders undergoing the patent licensing process. It is clarified that applicants and rights holders are prohibited from making false representations in order to obtain patent rights or licenses. Moreover, the CNIPA will now provide additional disclosure as to patent data including the de-classification of national defense patents, patent term compensation, open licensing, and the publication of amended claims in respect to invalidation proceedings.

Industrial Designs

On August 6, 2024, industrial design fees in relation to applications filed via the Hague Agreement in the jurisdiction have also been altered. As such, the first and second installments of the designation fees paid may be reduced in certain cases as per the Notice of the Ministry of Finance and the National Development and Reform Commission on Issuing the ‘Measures for the Reduction of Patent Fees’” (Cai Shui [2016] No. 78), the “Notice of the Ministry of Finance and the National Development and Reform Commission on Policies for Suspending, Exempting and Adjusting Certain Administrative Fees” (Cai Shui [2018] No. 37; and the “Notice of the Ministry of Finance and the National Development and Reform Commission on Policies for Reducing Certain Administrative Fees” (Cai Shui [2019] No. 45).

Lastly, all PCT applications filed with the CNIPA as the Receiving Office which are subject to an international search are now exempt from the application fee and surcharge upon entering the Chinese PCT national phase, whilst PCT applications for which the CNIPA conducts an international search report or an international preliminary report on patentability will be exempt from the substantive examination fee when entering the Chinese national phase and requesting substantive examination.

January 20, 2024

As of January 20, 2024, several amendments to the Implementing Regulations of the Chinese Patent Law entered into effect. These regulations have been implemented in line with the previous revisions to the national patent legislation enacted in 2020.

The new regulations allow for applications for design patents to utilize the earlier filing date for priority based upon earlier patent or utility model applications in China. In such instances, the earlier application would retain its status and not be deemed to be withdrawn. Moreover, the regulations clarify that partial design applications may be submitted detailing a combination of both solid and dotted lines to clearly denote the elements of a design for which protection is sought alongside the elements that are not.

In addition to new design procedures, the regulations clarify that international design applications filed via the Hague Agreement designating China are to be deemed as national applications upon registration at the international stage. As such, design applications in the national stage will be examined by the CNIPA separately from the international phase, and international registration dates will be defined as the application date in China.

In addition to the aforementioned amendments implemented by the new regulations, it is also confirmed that the official date of service in respect to documents served by the CNIPA electronically will be set as the date when the document is received via a recognized electronic system.

The alterations to the Implementing Regulations of the Chinese Patent Law signify a move toward a more cohesive IP system in the country, aligning the patent legislation and procedures with international counterparts. This, in turn, is hoped to encourage further filings for intellectual property rights in China, and to enhance international collaboration in the IP field.

INDIA

Patents

March 15, 2024

As of March 15, 2024, the new “Patent (Amendment) Rules” were implemented in India introducing a multitude of significant amendments to the previous IP system.

Among the most notable amendments introduced by way of the new legislation is the implementation of a new time period in which a Request for Examination (RFE) must be filed. Whilst the previous patent rules allowed for such a request to be submitted within 48 months, the new rules now mean that any request for examination must be filed within 31 months from the earliest priority date for all applications filed on or after March 15, 2024. For applications filed prior to that date, the period for examination request remains at 48 months.

The new patent rules have also introduced several other amendments to time limits spanning across the patent application process.

Further changes to the law have amended the requirement to tile a Commercial Working Statement each financial year. Instead, applicants are now obliged to file such statements once every three financial years, with the deadline for the initial statement being within the 6-month prior to the end of the third fiscal year. It is possible to request an extension of time or allowance of delays for the filing of the Working Statement by up to three months upon the filing of such requests to the IPO.

Moreover, the period of time allowed for the submission of details and information in relation to parallel foreign patent applications alongside a patent application in India has been changed from 6 months from the date of the foreign filing to 3 months from the date of issuance of the First Examination Report (FER). An extension of time by up to three months for the submission of such information is available upon request and payment of the corresponding fees.

Moreover, the new rules clarify that patent applicants may voluntarily file divisional applications in relation to patent subject matter that had been previously disclosed in their earlier applications, whether they were provisional, complete, or other divisional applications.

Several official fees have been amended owing to the new patent rules in India. As such, a new fee for the filing of a pre-grant opposition has been introduced at the rate of 4,000 INR for individuals and small/educational entities, and 20,000 INR for large entities. A further new fee of 900 INR has also been introduced for the filing of request for a Certificate of Inventorship, whilst the previous fees in relation to a request to add an inventor to a patent application have been abolished.

The fees in relation to the filing of a post-grant opposition have increased by approx. 233% from 2,400 INR to 8,000 INR for small entities, and from 12,000 INR to 40,000 INR for large entities.

Finally, any annual renewal fees that will be due are now able to be paid in advance in relation to a future period of 2 or more years. Rights holders who opt to pay any annual fees in advance for 4 or more years will benefit from a 10% reduction in said fees.

Multiple other amendments have been introduced by the new patent legislation pertaining to formalities and administrative form filing in relation to patent applications. The alterations to the Indian patent law signify a move toward a more modernized IP system for the nation, with the alterations hoped to streamline the patent protection process and encourage further filings.

BRAZIL

Patents

October 3, 2024

The National Institute of Industrial Property of Brazil (INPI) recently published and enacted two new intellectual property Ordinances regarding procedures in relation to patent registration and maintenance.

The first Ordinance, namely Ordinance No. 14/2024, which entered into effect on October 3, 2024, establishes a more uniformed specification of standards with regard to the content and form of patent applications and certificates of addition, adapting the previous procedures of patent filing and registration to suit a more modern age of online filings and maintenance of IP rights.

The second Ordinance to enter into force was Ordinance No. 20/2024, which became effective as of October 17, 2024. This Ordinance streamlines the procedures regarding the transfer of ownership of patents, as well as for the filing of amendments in relation to the individual or company name or the address of the patent applicant/owner.

Combined, the two Ordinances bring about a multitude of significant amendments to the previous patent system and regulations in Brazil. One of the most notable changes to the previous system is that patent applications may now be split into divisional applications up until the date of publication of the decision with regard to the granting, rejection, or definitive archiving of the initial patent application. As such, the date of publication of the final decision as to grant is set as the same date on which examination of the parent application is concluded. This time restriction has been abolished with regard to ex officio divisions of a patent application, meaning that henceforth, applicants are permitted to file divisional patent applications during an appeal phase, when requested by the Brazilian INPI.

Moreover, divisional patent applications are now required to be filed alongside a marked copy of the original application, which explicitly depicts the amendments to the set of claims detailed in the initial application which remain pending at the point of filing of the divisional application. This marked copy setting out the amendments should clearly indicate the page, excerpt, and the type changes implemented in the new divisional application.

In instances of any overlap of the scope of claims detailed in both the original and divisional patent application, the claims of the original application should be amended to exclude the subject matter claimed in the divisional application.

A further modification to the previous patent procedures in Brazil now means that it will no longer be required that patent applicants provide a sworn translation of foreign documents in order to meet filing obligations. Instead, a simple translation of the relevant documents will suffice.

The alterations to the Brazilian patent system brought about by the two newly implemented Ordinances introduce clarity and a more uniformed procedure for applicants and IP professionals alike. In turn, a more efficient process for obtaining patent protection is hoped to encourage both national and foreign IP applicants to file for patent protection in Brazil.

July 6, 2024

July 6, 2024 saw the joining of Brazil to the Global Patent Prosecution Highway (GPPH) program.

The GPPH is a multilateral cooperation program formed of 27 IP offices from across the globe, aiming to facilitate the acceleration of the processing of patent applications through the sharing of examination data between IP offices which are a party to the GPPH. This sharing of patent examination data not only applies to national applications but to those filed under the Patent Cooperation Treaty (PCT) as well.

Prior to joining the GPPH, Brazil had bilateral PPH agreements with 23 national and regional IP offices, increasing to 35 offices owing to its accession to the GPPH.

Multiple other PPH programs have recently been implemented worldwide, with a new PPH agreement being signed between France and Singapore on July 10, 2024, entering into force on September 1, 2024, and between the African Regional Intellectual Property Organization (ARIPO) and China on June 8, 2024. Moreover, an existing PPH program between the Icelandic Intellectual Property Office (ISIPO) and China was renewed on July 1, 2024 for a period of 5 years, concluding on June 30, 2029.

MEXICO

Patents

June 3, 2024

A new Patent Prosecution Highway (PPH) between the Mexican Institute of Industrial Property (IMPI) and the French Patent and Trademark Office (INPI) was introduced as of June 3, 2024. The signing of the agreement is the 9th PPH entered into by the French INPI since the country entered into its first in 2020.

The newly implemented agreement allows patent applicants to file for patent protection via the PPH route in Mexico and France with either one of the offices (known as the Office of First Filing), with the examination results from the first office being shared with the Office of Second Filing thereafter. This cooperative sharing of patent examination results and data with one another eliminates the need for examination to be undertaken by both offices respectively as the same results can be used to prove patentability for both, resulting in an accelerated method for patent examination.

This, in turn, leads to not only an expedited turn-around time for the processing of patent applications, but increases efficiency, and assists IP offices to increase the quality of the patent granting process.

PPH pilot programs also recently entered into effect between the Uruguayan National Directorate of Industrial Property (DNPI) and the UK Intellectual Property Office (UKIPO), as well as between the Chilean IPO and the European Patent Office, on June 1, 2024.

The introduction of the aforementioned PPH agreements follows an influx of recent worldwide patent-related co-operations this year, with other countries such as Morocco and Saudi Arabia also implementing such collaborative programs.

Canada

Patents

January 1, 2025 saw a new IP fee schedule implemented in Canada in relation to certain costs associated with patents. The fee schedule incorporates a percentage increase of 4.4% across the board.

As per the alterations to costs, the fee for the filing of a patent application in Canada has risen from 555 CAD to 579.42 CAD.

A payment of 1,158.84 CAD will now be due for the continued examination of an application, inflating from 1,110 CAD. Further, the final fee has risen from 416 CAD to 434.30 CAD.

The patent maintenance fees have also seen the same 4.4% increase, with the fee for maintaining a patent right for years 2-4 now constituting 130.50 CAD, years 5-9 289.19 CAD, years 10-14 362.27 CAD and years 15-19 651.46 CAD.

March 25, 2024

As of March 25, 2024, several amendments to the Canadian Patent Rules entered into effect. These amendments have been implemented with the aim of providing further protection to applicants and rights holders from the possibility of making insufficient fee payments stemming from incorrect information provided by the Commissioner.

In order to achieve this higher level of protection regarding fee payments, the newly amended regulations now allow for the Commissioner to waive requirements for the submission of an application for an extension of time in order to identify the source of erroneous information relating to fee amounts.

Moreover, the Commissioner is now also able to waive the requirement for a patent applicant or right holder to pay a fee relating to the difference in costs paid due to incorrect information provided by the Commissioner.

The Commissioner may also now implement a transitional period of up to 4 months from the date of the initial waived fees during which the same costs for fee differences owing to incorrect information being provided by the Commissioner for future fee payers may also be waived.

Trademarks

January 1, 2025 saw a new IP fee schedule implemented in Canada in relation to certain costs associated with trademarks. The fee schedule incorporates a percentage increase of 4.4% across the board.

The fee in relation to a trademark application for the first class of goods or services to which the application relates increased from 458 CAD to 478.15 CAD, with each additional class of goods or services to which the application relates as of the filing date rising from 139 CAD to 145.12 CAD.

The new fee for the filing of a Statement of Opposition now constitutes 1,085.76 CAD, rising from 1,040 CAD.

With regard to trademark renewal fees, the new fee in relation to the renewal of the first class of goods or services to which a request for renewal relates now comprises 579.42 CAD, rising from 555 CAD, whilst the fee for the renewal of each additional class of goods or services inflating from 173 CAD to 180.61 CAD.

Industrial Designs

January 1, 2025 saw a new IP fee schedule implemented in Canada in relation to certain costs associated with industrial designs. The fee schedule incorporates a percentage increase of 4.4% across the board.

The fee for the filing of an industrial design application has risen from 567 CAD to 591.95 CAD, with the maintenance fee for an industrial design now constituting 517.82 CAD, inflating from 496 CAD.

Further, the cost in relation to the reinstatement of an abandoned design application rose from 284 CAD to 296.50 CAD.

JAPAN

Patents

June 27, 2025

The Japan Patent Office (JPO) and the Moroccan Office of Industrial and Commercial Property Office (OMPIC) opted to extend their Patent Prosecution Highway (PPH) program with one another.

The two offices implemented an initial PPH pilot program on January 1, 2021, and after a successful run, the program was officially extended beyond a pilot project.

The implementation of a PPH program between the JPO and the OMPIC means that applicants who have had their patent claims examined by one of the offices are able to request the acceleration of the processing of their application with the other. This is accomplished by the sharing of examination results by the office of first filing with the second office, eliminating the need for duplicate examinations to occur in both.

In turn, this leads to not only an expedited turn-around time for the processing of patent applications, but also increases efficiency, and assists IP offices to improve the quality of the patent granting process.

April 1, 2024

As of April 1, 2024, the Japan Patent Office (JPO) will cease the issuance of paper certificates in relation to the registration of patents, utility models, industrial designs and trademarks. From the aforementioned date onwards, the JPO will exclusively issue electronic certificates in PDF format via the electronic system to rights holders.

The only exceptions to the JPO’s new electronic certification procedure are for international trademarks filed via the Madrid System designating Japan, and for international design applications designating Japan filed under the Hague System. As such, rights holders will continue to receive paper certificates confirming the registration of design and trademark rights filed via the Hague System and Madrid System respectively.

SOUTH korea

Trademarks

May 1, 2024

As of May 1, 2024 a new system for the implementation of consent for trademark coexistence was enforced in South Korea.

The newly introduced procedures mean that trademark holders or prior applicants can provide their consent for new similar or identical trademark applications filed by others to be registered by the Korean Intellectual Property Office (KIPO).

The previous system completely prohibited the registration of new trademark applications that were similar or identical to marks previously registered, even if the holder of the previously registered mark provided written consent for the registration of the new one. This subsequently led to the use of the so-called “Assign Back Strategy”, whereby the proposed new mark would be registered by the current owner of the previously registered mark instead of the new applicant in order for the mark to be accepted as registrable by the KIPO. Once registered, the new mark would then be assigned back to the actual applicant of the new mark (the creator) which proved to be a lengthy and convoluted process.

The implementation of the new trademark coexistence system therefore provides a more streamlined solution for applicants wishing to file for trademarks that may be perceived as similar or identical to those previously registered.

In order to be eligible for consent to register via the coexistence system, the new mark must not have been filed with the intent to be registered for the same goods or services as the previously registered mark.

Moreover, a new cancellation ground has been enforced whereby trademarks registered on the basis of the trademark coexistence agreement will be canceled if it can be shown that the mark is intended to be used for the purposes of unfair competition, consumer confusion and/or deception.

In the instance that a trademark is canceled based upon the aforementioned ground, the owner of that mark will not be permitted to register for another mark that is identical or similar to the one canceled until after a period of three years from the confirmation of the cancellation. The statutory period for the request to cancel a mark based upon this new ground is three years.

Indonesia

Patents

October 2024

In October 2024, the President of the Republic of Indonesia passed Law No. 65 of 2024 to amend Law No. 13 of 2016 on Patent (“Amended Patent Law”). This amendment is part of Indonesia’s ongoing efforts to strengthen its intellectual property framework and align with international standards, including the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement. The Amended Patent Law brings significant changes, expanding the scope of what can be patented. Now, in addition to products and processes, inventors can seek protection for systems, methods, and applications designed to solve specific problems. This broadened scope is crucial in today’s rapidly evolving technological landscape, where innovation often goes beyond traditional products. Additionally, the Amended Patent Law extends the disclosure period before filing a patent application (“Grace Period”) from 6 to 12 months, providing inventors with more time and flexibility.

The Amended Patent Law also introduces important changes for the pharmaceutical industry, particularly in areas like compulsory licensing and the Bolar Provision, which allows for limited use of patented inventions for research and development purposes. These amendments, along with the expanded scope of patentability, are designed to accelerate national innovation, particularly in the digital realm, while simplifying the patent administration process. This focus aligns with the goals of Industry 5.0, which aims to use technology in a way that benefits both people and the environment.

In this update, we explore the key changes introduced by the Amended Patent Law, and its implications for various sectors, including pharmaceuticals, technology, and manufacturing.

Key Changes Introduced by the Amended Patent Law

The Amended Patent Law brings important changes to Indonesia's patent system. These changes affect what can be patented and how the process works. They aim to encourage innovation and keep up with global standards. Below are the most important changes and what they mean for businesses.

Expanded scope of patentability

Previously, patent protection in Indonesia was limited to products and processes, which posed challenges for innovators in emerging fields like software and artificial intelligence. The Amended Patent Law addresses this by emphasising the patentability of problem-solving systems, methods, and applications. This will allow innovative methods such as usage techniques, software algorithms, and other digital-based solutions to be registered, ultimately diversifying patent protection in Indonesia.

Patentability of computer programs

While computer programs have always been unpatentable under Indonesian patent regulations, Article 4(d) of the Amended Patent Law introduces a valuable exception for inventions implemented by a computer. An invention implemented by a computer refers to the problem-solving ability, technical effect, and technical character driven by a computer. This amendment clarifies the requirements for computer programs to be patented. Alternatively, computer programs that do not meet these requirements can be recorded as copyright, subject to Indonesia’s copyright regulations.

Extension of Grace Period

The Amended Patent Law extends the Grace Period from 6 to 12 months. During the Grace Period, inventors will be able to exhibit their invention at official exhibitions held in Indonesia or abroad, use their invention for experimental and/or development purposes in Indonesia or abroad, and/or disclose their invention in scientific proceedings or forums. Inventions will not be considered published if a third party discloses them in violation of a confidentiality agreement within the Grace Period. The Grace Period is expanded to better accommodate the needs of inventors in submitting a patent application, such as securing adequate funding. For comparison, Japan, Australia, and the United States are among the countries implementing a 12-month Grace Period.

Simplified patent administration

Addressing previous concerns about time-consuming patent registration process, the Amended Patent Law introduces several changes to streamline patent administration. This includes an expedited publication process upon request (with a minimum of three months), allowing the invention to enter substantive examination faster. It also eases the process for patent applicants involving genetic resources and/or traditional knowledge, whereby they only need to submit statement letter stating the origin of such genetic resources and/or traditional knowledge instead of elaborating its complex process. Additionally, Article 128(2) to Article 128(6), which concerned the postponement of annual patent fee payments, has been removed in the Amended Patent Law.

Changes Impacting the Pharmaceutical Industry

The Amended Patent Law introduces significant changes that directly impact the pharmaceutical industry.

Compulsory licensing

A key change is the removal of Article 93 and the addition of Article 111A, which eliminates the compulsory licence for producing patented pharmaceutical products in Indonesia. The arrangement of compulsory licenses related to importing and exporting patented pharmaceutical products is now shifted to the scope of patent rights implementation by the government.

Bolar Provision

The Amended Patent Law revises the Bolar Provision, which allows third parties or generic drug manufacturers to experiment on a patented drug before its expiration to secure regulatory approval for marketing a generic version once the patent expires. The Bolar Provision is no longer restricted to a specific five-year period before the patent’s expiration, and its scope is broadened to cover research and regulatory approval purposes. Pharmaceutical companies may benefit from this amendment through accelerated research and development of generic drugs, as well as faster regulatory review of pharmaceutical products.

Next Steps Forward

In light of these changes, companies should proactively review their invention portfolios to identify opportunities for new patent registrations under the Amended Patent Law. This is particularly crucial for those developing digital solutions, application techniques, and innovative methods, which now have expanded protection. Stakeholders in the pharmaceutical industry should carefully analyse the revised provisions on compulsory licensing and the Bolar Provision to optimise their intellectual property strategies and adjust research and development timelines accordingly.

It is also crucial for all patent holders, particularly individual inventors and smaller patent entities, to be aware of the removal of Article 128(2) to Article 128(6). This change eliminates the possibility of postponing annual patent fee payments. Therefore, timely payment is essential to maintain patent rights.

Overall, the Amended Patent Law encourages investors to actively seek patent protection for their inventions. This is evident in several key changes, including the extension of the Grace Period for public disclosures, the option to expedite the publication process, and the broadened scope of patentable inventions. These amendments signify a positive step towards fostering innovation and strengthening Indonesia’s intellectual property landscape.

Singapore

Patents

May 26, 2022

The Intellectual Property Office of Singapore has announced a revised schedule of official fees, effective for payments made on or after May 26, 2022.

The alterations affect costs in relation to patents, trademarks, designs, as well as geographical indications and other IP types.

The fee for filing a patent application is set to grow by approx. 6% from the previous cost of 160 SGD to 170 SGD. Additionally, increasing by approx. 5% from 1,650 SGD, the cost of requesting a search report or supplementary search report for patents will constitute 1,735 SGD.

Also rising by the same percentage of 5%, requesting an examination report will require payment of 1,420 SGD, as opposed to the current fee of 1,350 SGD. The cost for the grant of a patent will also inflate by 5% to 210 SGD, from 200 SGD.

The annuity fees for the years five through seven will rise to 165 SGD from 140 SGD, constituting an approx. 18% increase, whilst years eight to ten are due to inflate by approx. 16% from 370 SGD to 430 SGD. The respective fees for years eleven to thirteen will comprise 600 SGD, increasing by approx. 15% from 520 SGD.

Once the changes are in force, it will cost 775 SGD for annuities for years fourteen to sixteen, inflating from 670 SGD by approx 16%, and 945 SGD for years seventeen to nineteen, rising by approx. 15% from 820 SGD. The annuity fee for the twentieth year is set to balloon by the same percentage to 1,120 SGD from 970 SGD. Each year thereafter will incur an annuity fee of 1,380 SGD, inflating by 15% from the previous fee of 1,200 SGD.

In relation to PCT fees, the cost of national phase entry will increase from 200 SGD to 210 SGD, comprising a rise of 5%, whilst the previous fee of 70 SGD is to be removed in respect of the publication of the translation of an international application and/or any amendment to an international application.

Trademark fees will also see an increase in a similar manner, with the cost in relation to an application to register a trademark, collective mark, or certification mark, rising by approx. 11% from 341 SGD to 380 SGD for classes whose specifications are not fully adopted from the pre-approved database. For trademarks referencing classes whose specifications are fully adopted from a pre-approved database, the fee will increase from 240 SGD to 280 SGD per class, an approximate 17% rise.

Applications for the renewal of a trademark registration on or before the expiry of a mark will cost 440 SGD, increasing by approx. 16%, as opposed to the current cost of 380 SGD per class. The fee for the late renewal of registration is due to rise by approx. 15% from 560 SGD to 645 SGD per class of goods or services.

Inflating by approx. 16%, the payment for the restoration of registration will constitute 705 SGD, as opposed to 610 SGD per class of goods or services. Additionally, an application to amend a trademark application or registration (excluding change of name or address) is due to rise by approx. 14% to 40 SGD from 35 SGD.

Fees in respect of trademark applications filed through the Madrid Protocol designating Singapore will also be impacted by the amendments, with an international application/subsequent designation of a mark set to cost 380 SGD per class, an approximate 11% inflation from the present 341 SGD. The fee for a request to transform an international registration into a national application will rise by the same figures. Further, the renewal of an international mark designating Singapore is due to increase by approx. 16%, from 380 SGD to 440 SGD.

However, it is worth noting that despite the above-mentioned inflation, the fee for filing an application for a design registration is to decrease to 200 SGD from previous SGD 250.

Patents

January 15, 2024

The UAE has introduced alterations to its intellectual property fee schedule which entered into effect as of January 15, 2024.

The newly implemented legislation with regard to IP fees has reintroduced several official charges that were previously abolished on April 5, 2020 in a bid to assist with supporting the economy during the COVID-19 crisis. These re-implemented fees include those in relation to IP rights publication, annual maintenance fees, and changes of legal representation.

Further, a limit has been enforced as to the maximum number of patent claims permitted in a patent application. As per the new legislation, a set of 50 claims now applies to all new patent applications.

One of the most significant changes to have been implemented due to the new legislation is the introduction of new annuity fees. Prior to the enactment of the new law, rights holders were not obligated to pay official maintenance fees, whereas the new amended legislation implements obligatory annual maintenance fees payable to ensure patent validity.

The annual fees rise in cost for each five year increment of a patent's twenty year validity period, with each year between the second to fifth comprising an annual fee of 100 AED for natural persons and SME's, years six to ten 500 AED, eleven to fifteen 1,250 AED, and sixteen to twenty 2,000 AED. Each annual fee constitutes double these amounts for legal persons.

A tiered fee structure has also been implemented with regard to patent examination, whereby there are now a total of three different examination costs which are to be applied dependent on the number of claims contained in a patent application. The previous flat fee for the examination of a patent application constituted 7,000 AED regardless of the number of claims contained therein. As per the newly established tiered system, the examination of an application containing between one and ten claims remains 7,000 AED, whilst the fee for applications containing between eleven and thirty claims now comprises 8,000 AED. Applications containing between thirty-one and fifty claims now comprise a fee of 9,000 AED.

All IP fees are now also tiered to varying degrees, depending on the applicants legal status. As such, IP applicants are now categorized as being either natural persons, companies, academic institutions, or small and medium enterprises (SMEs). This division of applicant status allows for a tiered fee structure which is hoped to contribute to a more equitable IP protection process across the board, with natural persons able to file for patent protection with a 50% discount in filing fees.

New fees have been introduced including those in relation to post-grant examination which now allows for amendments to be made following the grant of a patent provided the claims are within the allowed scope. Other charges have also been implemented in line with the new accelerated examination procedure, allowing for a more streamlined process for IP registration.

The alterations to the intellectual property fee schedule and legislation of the UAE demonstrate a movement towards a more modernized and streamlined IP system in the jurisdiction with a focus on ensuring equity between all applicants and a reliable IP service.

malaYsia

Patents

June 6, 2023

As of June 6, 2023, the Malaysian Patent Registration Office officially implemented the possibility of the electronic filing of patent applications in the country via the online IP Portal.

As such, applicants may file for patent protection, inclusive of PCT and PPH applications, as well as submit other actions pertaining to the protection and maintenance of a patent right by way of the country's online portal.

The move brings the jurisdiction in line with a more contemporary outlook on patent filing, joining many international peers allowing for electronic filings, and helping to bring the IP protection process a step closer to a greener, paperless future.

March 17, 2022

The intellectual property fees in Malaysia have also experienced cost increases in respect of patent fees, which were implemented as of March 17, 2022. Whilst various fees have remained unchanged, certain payments have risen, including those in relation to examination and annuities.

The cost for the expedited examination of a patent application, for example, has inflated by approx. 27% from 2,200 MYR to 2,800 MYR, whilst a new fee for the deferment of filing of a request for modified substantive examination has been introduced at the price of 150 MYR.

The annuity fees for patents have risen respectively for the majority of years ranging from the fourth to the twentieth to varying degrees, whilst the fee for the second and third year have remained the same.

The cost for a patent annuity from the fourth year, for example, has increased by approx. 5% from 420 MYR to 440 MYR, with the percentage increase peaking in the middle of the patent life cycle. As such, the eighth year has seen a cost rise of approx. 20% from 690 MYR to 830 MYR, and the tenth year has experienced a slightly larger percentage increase of approx. 21%, from 820 MYR to 990 MYR.

The annuity fees for years thirteen and fourteen rose by approx. 16% respectively, with the cost for the thirteenth year increasing to 1280 MYR and the fourteenth year increasing to 1450 MYR. A lower inflation of approx. 9% can be seen in respect of the eighteenth year, with the fee having risen to 2400 MYR from 2200 MYR. The final twentieth year will henceforth constitute a payment of 2900 MYR, inflating by approx. 16% from 2500 MYR.

The rise in intellectual property fees in both Singapore and Malaysia may reflect a global trend of recent inflation, with the alterations in Singapore signifying the first IP fee amendments in the jurisdiction since 2017.

australia

Patents

As of October 1, 2024, an updated intellectual property (IP) fee schedule entered into effect in Australia. The following fee changes encompass some of the most substantial changes, and reflect fees paid by the preferred means of the Australian IP Office, namely by way of payment completed online. Any IP related fees which are paid by means other than electronic payments, such as by paper means, will be subject to fees at a higher rate than those paid electronically.

Multiple fees in relation to patent filing and maintenance have also been amended, with the alterations comprising both increases and decreases throughout.

As per the new fee schedule, the cost in relation to the filing of a standard patent application in Australia has risen by approx. 8% from 370 AUD to 400 AUD, whilst the fee associated with the filing of a provisional patent application has decreased by approx. 9% from 110 AUD to 100 AUD. The filing fee for an innovation patent has increased by 11% from 180 AUD to 200 AUD.

The costs in relation to PCT applications have also been amended, with the fee for national phase entry in Australia having inflated by approx. 8% from 370 AUD to 400 AUD.

With regard to the examination of patents, the fee for the request of an examination for a standard patent application has risen by approx. 17% from 300 AUD to 350 AUD in instances whereby the Australian IPO conducted the International Preliminary Examination (IPE) on the application, and by approx. 12% from 490 AUD to 550 AUD in all other instances.

For the examination of an innovation patent application, the cost has increased by 10% from 500 AUD to 550 AUD when requested by the patent applicant themselves. In instances whereby the examination of an innovation patent is requested by a third party, the cost is split 50/50 between the applicant and the third party, totalling 275 AUD each.

The cost in relation to a preliminary search and opinion on a standard patent application will now comprise 1100 AUD, rising by approx. 16% from 950 AUD, with the fee for a request for an international-type search for a provisional patent application also having increased from 950 AUD to 1100 AUD.

A new fee has been implemented in relation to the examination of patent claims in excess of 20, with the fee for the examination of each claim between the 21st and 30th constituting 125 AUD, and each claim over the 30th incurring an examination fee of 250 AUD. These new fees which have been implemented at the examination stage replace the previous fees which were incurred for each excess claim in a complete application upon grant.

Moreover, the minimum grant fee for all standard patents has risen by 20% from 250 AUD to 300 AUD, whilst all patent annuity fees starting from the 6th year have inflated across the board. As such, the fee for the sixth anniversary of patent renewal has increased by approx. 3% from 335 AUD to 345 AUD, the tenth by 10% from 490 AUD to 540 AUD, and the nineteenth by approx. 6% from 2650 AUD to 2815 AUD.

Industrial Designs

As of October 1, 2024, an updated intellectual property (IP) fee schedule entered into effect in Australia. The following fee changes encompass some of the most substantial changes, and reflect fees paid by the preferred means of the Australian IP Office, namely by way of payment completed online. Any IP related fees which are paid by means other than electronic payments, such as by paper means, will be subject to fees at a higher rate than those paid electronically.

The fees in relation to industrial design applications have been amended across the board, with the cost for the filing of an application for one design, as well as the fee for the filing of the first design in an application comprising multiple designs, decreasing by 20% from 250 AUD to 200 AUD respectively.

Similarly, the cost for each additional design in a multiple design application has fallen by 25% from 200 AUD to 150 AUD. The fee for the filing of a request to amend a design application to add further designs has decreased by 20% from 250 AUD to 200 AUD per additional design.

Whilst the aforementioned filing fees experienced decreases, other industrial design fees have inflated in line with the cost amendments.

As such, the fee for the request for the examination of a registered industrial design has risen by approx. 19% from 420 AUD to 500 AUD in total, which is payable in whole if the request is made by the design owner. For examination requests submitted by a third party, the fee is to be paid in equal 50/50 parts by both the third party and the registered design owner, totalling 250 AUD payable each.

Trademarks

Trademark fees have largely remained the same for procedures such as filing and the like, however, a new fee has been implemented in relation to the filing of a statement of grounds and particulars (SGP) in an opposition to registration of a trademark, as well as for an opposition to extension of protection to an IRDA. As such, the fee payable for the fourth and any further opposition ground, as well as the fee for each of the 11th and further registered or protected trademarks that the opposed mark is claimed to be substantially identical with, constitutes 250 AUD respectively.

Moreover, the fee in relation to the filing of a request for the removal of a trademark from the Register on the ground of non-use, and the fee for requesting the invalidation of a protected international trademark on the same ground, have increased by approx. 40% from 250 AUD to 350 AUD respectively.

Several other fees have also been amended, including those regarding IP-related hearings and proceedings, as well as other procedural matters for intellectual property. The aforementioned fee changes are in line with the quadrennial reviews that take place in relation to the IP fees in Australia, with the latest costs review having commenced in 2023 prior to being implemented this year, and in accordance with the IP Office’s commitments to keeping its cost recovery arrangements consistent with the Australian Government Charging Policy.

May 17, 2024

May 17, 2024 saw the implementation of the Intellectual Property Laws Amendment (Regulator Performance) Regulations in Australia, following the introduction of the Intellectual Property Laws Amendment (Regulator Performance) Act.

The new regulations have been enacted in order to further streamline the Australian IP law adopted in 2023, with the aim of refining and improving the country’s intellectual property system. The newly implemented regulations have resulted in various amendments to procedures in relation to trademark filing and maintenance, as well as the removal of transitional patent regulations which are no longer in use.

Among the most poignant alterations is the uniformed alignment of all trademark renewal grace periods, which will now comprise a total of 6 months following the end of a trademark’s 10-year validity term. Prior to the recently enforced regulations, certain registered trademarks were able to benefit from a renewal grace period of up to 10-months following the initial trademark validity term, with the all-encompassing term of 6-months bringing a more streamlined approach.

A further significant update to the trademark protection system is seen in the reforms to the Australian Classification of Goods and Services. The new version of the trademark classification will now reflect the most recent version of class headings for Goods and Services according to the NICE Classification, aligning the country's trademark system with that of internationally accepted standards.

The trademark system has also seen modernisation in the methods in which the Australian IP Office provides trademark information to applicants and stakeholders. As such, the previous method of providing such information via the Official Journal of Trademarks has since been replaced with more user-friendly platforms. These include the official Australian Trademark Search Tool as well as publications available on the IP Office website. Moreover, IP Australia has clarified that certain discontinued TM Headstart requests for trademark applications have the possibility of being revived in certain circumstances.

The new regulations also confirm that trademarks that were previously removed from the register during non-use proceedings may be restored in certain instances.

The amended regulations and subsequent modernisation of the IP system of Australia are hoped to facilitate a more streamlined procedure for trademark protection, benefiting both IP rights holders and potential applicants alike.

new zealand

Patents

September 14, 2022

Having also updated their practice guidelines in relation to trademarks, the Intellectual Property Office of New Zealand (IPONZ) implemented a new version thereof on September 14, 2022. The amendments clarify the way in which prior use is considered and confirm the terms of providing a website.

Among the changes to the practice guidelines, clarity has been provided regarding the overcoming of citations in order to reflect the way that the IPONZ presently considers the prior use of a trademark. As such, trademark examiners will consider evidence regarding the prior use of a mark with the view of establishing whether special circumstances exist in relation to an application. Previously, such evidence and submissions would not have been considered in relation to the establishment of prior use.

Moreover, in an effort to remain in line and consistent with the international application of the NICE classification system, amendments have been made to the Annexure to Computer Services practice guidelines for trademarks. These alterations are set to clarify the assessment of “providing a website” terms in goods and services specifications.

EAPO

Patents

As of February 1, 2025, a new fee schedule will enter into force with respect to the Eurasian Patent Organisation (EAPO).

As such, the cost for the filing of a Eurasian patent application will increase by 20% from 50,000 RUB to 60,000 RUB for up to 5 claims, with the fee for each claim beyond the 5th due to inflate by approx. 18.1% from 5,500 RUB to 6,500 RUB. Each claim beyond the 20th will incur a fee of 7000 RUB, an approx. 16.7% rise from the current cost of 6000 RUB, and each claim beyond the 50th due to rise by approx. 7.1% from 7,000 RUB to 7,500 RUB.

The fee in relation to substantive examination for an application concerning one invention will increase by 20% from 50,000 RUB to 60,000 RUB.

In relation to a group of inventions in an application, the fee will rise from 50,000 RUB to 60,000 RUB for the initial claim, from 30,000 RUB to 35,000 RUB for the second claim, constituting an approx. 16.7% increase, and by approx. 33.3% from 15,000 RUB to 20,000 RUB for each subsequent independent claim.

The grant and publication fee for Eurasian patents is set to inflate by approx. 33.3% from 30,000 RUB to 40,000 RUB, whilst the fee for the filing of an opposition against the grant of a Eurasian patent will rise by approx. 16.7% from 60,000 RUB to 70,000 RUB.

January 1, 2024

The Eurasian Patent Organization (EAPO) enacted a new fee schedule, alongside amended legislation, in relation to intellectual property as of January 1, 2024.

As per the newly implemented schedule of fees, the cost for the filing of a Eurasian patent application now comprises 50,000 RUB, constituting an approx. 39% increase from 36,000 RUB. The updated fee for the submission of an application containing over five claims has risen to 5,500 RUB per claim, whilst the cost for each claim over the twentieth has increased to 6,000 RUB and claims over the fiftieth to 7,000 RUB.

The cost for the request of substantive examination of a Eurasian patent application in relation to a singular invention, or the first independent claim in a series of claims, has increased by 25% from 40,000 RUB to 50,000 RUB, as has the fee for the examination of a second independent claim which rose from 25,000 RUB to 30,000 RUB. The fee in relation to the third and each subsequent claim thereafter has risen by an approx 15% from 13,000 RUB to 15,000 RUB.

The cost payable for the granting and publication of a Eurasian patent has increased by 20% to 30,000 RUB from 25,000 RUB.

Legislative amendments

The newly implemented legislation has made several amendments to the patent and industrial design procedures before the EAPO.

According to the amended law, a new time limit has been implemented in relation to the submission of patent claims in cases where a basic or divisional Eurasian patent application was initially submitted to the EAPO in absence of the claims. As such, any missing claims for filed applications may be submitted no later than two months from the date of receipt of the application by the Receiving Eurasian Office. Should the claims not be submitted within the prescribed time limit, the Eurasian patent application will be deemed withdrawn.

Further amendments to time limits have been implemented with regard to the filing of oppositions. As per the new procedures, the time limit for the filing of an opposition to a Eurasian patent or industrial design application is now set at three years from the date of publication of the grant, a considerable expansion on the previous time limit of 9 months.

Other legislative areas that have seen advancements include the clarification of the substantive examination criteria for industrial designs. According to the new law, the EAPO will assess the criteria of novelty as per the information available to the EAPO directly or by information obtained by the EAPO in the course of other examinations within the scope of the Patent Regulations.

saudi arabia

Patents

February 13, 2024

A new Patent Prosecution Highway (PPH) program is set to enter into force with respect to the French INPI and the Saudi Intellectual Property Authority (SAIP) on April 30, 2024 following the signing of an agreement between the two offices in November 2023.

The PPH program between the INPI and SAIP will soon allow patent applicants whose claims have been examined by one of the offices to request the expedited processing of their application with the other office. This acceleration of patent applications is accomplished through the sharing of existing examination results from the Office of First Filing with the Office of Second Filing, thus eliminating the need for both offices to undertake separate examinations of the same application, causing duplication.

The sharing of examination data with regard to patent applications not only provides for an accelerated turn-around time for processing and registration, but increases efficiency and allows IP offices to prioritize their resources as needed.

October 3, 2023

As of October 3, 2023, Saudi Arabia implemented legislative amendments to the country's Patent and Industrial Design Law.

The new law has introduced several important changes to the IP system of the country, with one of the most poignant amendments allowing for the accession of the country to the Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille.) As such, it now means that an Apostille certificate from an authorized competent authority can be obtained to authenticate a Saudi document, simplifying the process and making it more cost effective than having to obtain additional certification or legalization from a foreign country's embassy or consulate.

In addition, the legislation also clarifies the definition of "The Hague Agreement" and the "World Intellectual Property Organization (WIPO)" in relation to Saudi IP law.

The alterations to the law have also extended the term of protection for registered designs in Saudi Arabia. As such, the previous term of 10 years of protection for an industrial design has been amended to a total period of 15 years of protection from the date of filing. Moreover, the law is now further harmonized with the Hague System for the International Registration of Industrial Designs.

Lastly, fees for annuities will now be due at the commencement of each year, except for international industrial models filed via The Hague Agreement, whereby fees will be due every five years.

The amendments to the Saudi legislation indicate an ongoing effort to modernize the country's IP law, bringing it further in line with the international IP field and strengthening cooperations.

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