New Patent System in Hong Kong
The Hong Kong Intellectual Property Department will launch a new patent system on December 19, 2019. Major changes are as follows.
In standard patents, a direct filing rout will be provided in addition to the current re-registration filing route through CN, EP or GB. The due date for requesting substantive examination is within 3 years from the filing date or the earliest priority date.
In short-term patents, the number of independent claims allowed in a patent will be changed from one to two, under the condition that the two independent claims are both related to one single invention.
Acceleration of the examination by submitting the affidavit of non-use for Brazilian Genetic Heritage or Associated Traditional Knowldge
Under the Law No. 13, 123/2015, Brazilian Patent Office (INPI) issues Office Action asking the access to Brazilian Genetic Heritage or Associated Traditional Knowledge. While beneficiaries are required to respond to the Office Action, those who did not access to the resources are not obligated to file responses. Although submitting the affidavit of non-use is optional, by submitting it, the examination process can be accelerated.
Unpaid Annuities in Indonesia
New Patent Law came into effect on August 26, 2016 in Indonesia. Under the old law, if annuities were not paid for three consecutive years, the patent would be deemed void but the patent holder still owes the Patent Office unpaid annuities for that 3 year period. However, this obligation is not applicable under the new law since a patent will be considered null and void right away if annuities are not paid by the due date.
In this regard, the Indonesia Directorate General of Intellectual Property (DGIP) has recently started issuing a notice to the patent holders who have outstanding annuities that if they do not pay the unpaid annuities within 6 months from the date of notice, DGIP will refuse new patent applications.
Working Requirement in Indonesia
In Indonesia, the patent law introducing the working requirement came in effect on August 26, 2018. According to the law, the patent owner is required to make a product or use process in Indonesia that is covered by the patent within 36 months from the registration date. If it is not worked by the end of the period, a third party can apply for a compulsory license, and the Ministry of Law makes a decision whether or not to grant the compulsory license. It is not required to file a statement to declare the use of the patent, yet the owner must prove its use when an application for a compulsory license is filed by a third party.
In order to clarify the working requirement, the Indonesian government implemented new Regulations on July 11, 2018. Under the Regulations, a patent owner is allowed to postpone the obligation for up to 5 years by filing a postponement request with its reasoning during the 36 months period.
Extension of grace period for inventions, utility models and designs
The Patent Act Article 30 was revised on June 9, 2018, and the time period of the exceptions to loss of novelty, so-called grace period, for inventions is now extended from six months to one year. This revision applies to Utility Model Act Article and Design Act Article as well.
Statistics regarding Recent Trend of Japanese Patent Practice
Japan Patent Office (JPO) issues an annual report which includes statics such as patent grant rate, duration of waiting time for substantial examination, etc. These statics are summarized in a brochure which can be seen by using the following link.
Japan: Product-By-Process Claims
Request for Examination Delay System for Taiwanese Patent Application
Grace system that can delay the starting time of substantive examination of the Taiwanese patent application was introduced, and the request has been accepted since April 1, 2015. If it is an invention patent application (except for the specific invention patent application),during the 3 years from the filing date of Taiwan, regardless of the presence/absence of the priority claim, the request can be submitted to Taiwan Patent Office on or after the day the request for the substantive examination was submitted. In addition, desired date to start substantive examination must be within three years from the date of filing of the application, and the date must be identified. On the desired date, the application is added to the substantive examination application waiting list for the year.
Changes in Patent Law Treaty (PLT) and Patent Law Treaty Implementation Act (PLTIA)
Followings are the main changes, effective as of December 18th, 2013, based on enforcement of revised PLT and PLTIA;
1. It is not necessary to file claims and specifications/drawings for securing a filing date for a non-provisional application except a design application. Such a non-provisional application can be filed by reference to a previously filed application. An applicant has to complete a filing requirement for a claim(s) and/or a copy of the specification and drawings in a period of time set by USPTO.
2. Revival of abandoned applications and lapsed patent is permitted. Based on this change, USPTO accepts delayed issue fee or delayed maintenance fee payments upon petition and payment of petition fee (currently $1,700.00). However, this petition is accepted only on the basis of "unintentional" delay.
3. Late filing of priority claimed applications is permitted within two months from the expiration of the 12 month priority period (6 month period for design applications). The right of priority may be restored upon petition and payment of the fee (currently US$1,700.00), if the delay in filing was unintentional.
4. A reduction of Patent term adjustment would occur if an application is not in condition for examination within 8 months of its filing date or a date of national phase entry of an international application.