A Community design application can be filed with a valid priority claim at a national Patent Office, when the deadline falls on a closed day at said national Patent Office.

The design in suit had a priority period which expired on a normal working day at OHIM. However, the day was a national holiday in Croatia and the application was filed the following day at the Croatian Patent Office, taking advantage of the national holiday to preserve the priority claim.

Initially, OHIM dismissed the priority claim out of hand, on the basis that the application had been filed more than 6 months after the priority date. Reasoned arguments were filed in response, citing inter alia the relevant provisions in Council Regulation (EC) 6/2002, Commission Regulation (EC) 224/2002, the Paris Convention and Article I-4 of the EU Constitution. An appealable decision pursuant to Article 40 CDIR was also requested.

In response, OHIM issued a notice of acceptance instead of an appealable decision. The notice reiterated the loss of priority right, on this occasion indicating that only public holidays in Spain would cause the priority deadline to be carried over to the next working day. In our view this discriminated against applicants outside of Spain and is thus contrary to the founding principles of the European Union.

An appealable decision was once again requested. After a delay of around four months, a communication from OHIM was received, stating that it had “detected” an error and that the priority details had been added. In a phone call, OHIM indicated that the office had changed its practice in view of the arguments submitted in the case in suit. This is clearly a victory for common sense and provides a potential “get out of jail card”. Article 35(1)(b) of Council Regulation (EC) 6/2002 allows EU Community designs to be filed at the national Patent Office of any EU member state, at the choice of the applicant. This is irrespective of the nationality of the applicant. As there are currently 28 EU member states, there is a reasonable chance that there will be a public holiday in at least one country. The dates on which national Patent Offices are closed can be found at http://www.wipo.int/pct/dc/closeddates/faces/page/index.xhtml.

The number of countries now party to the Madrid Protocol system for the protection of trade marks internationally breaks the 100 mark! The OAPI became the 93rd Member and will accede to the Protocol on 5th March 2015. The OAPI comprises Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, Comoro Islands, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger AND Senegal and Togo. The Madrid Protocol system is an extremely cost effective means by which to secure trade marks on a truly international stage. The beauty of the system is that it dispenses with overseas attorney fees at the point of application (often at all should no objections arise) thereby reducing costs significantly.

The EPO has announced that from 1 March 2015 it will be possible to validate European patents in Morocco, bringing the potential country coverage of a European patent to 41 countries.

Any European or international patent application filed on or after 1 March 2015 is deemed to include a request for validation in Morocco. However, it will be necessary to pay a “validation fee” of €240 within the same deadline as for paying the designation fee and the fees for the Extension States.

European patents validated in Morocco will confer the same protection as Moroccan national patents and will be subject to Moroccan patent law.

To validate a European patent in Morocco, it will be necessary to file a French or Arabic translation at the Moroccan Patent & Trademark Office (PTO), within 3 months of the date of grant of the European patent. The Moroccan PTO has not yet fixed the official fees or indicated if any supporting documents (e.g. Power of Attorney) will be required.

Morocco is not a member of the European Patent Organisation; rather, this development is the result of an agreement signed on 17 December 2010 by the President of the EPO and Morocco’s Minister for Industry.

Tunisia and Moldova have also signed validation agreements with the EPO, but these agreements are yet to take effect.

A Patent Prosecution Highway (PPH) pilot programme has just been signed between the European Patent Office (EPO) and the Israel Patent Office allowing accelerated treatment of patent applications between these offices. The agreement, signed in Brussels, will start in January 2015.

The pilot programme will allow fast-track patent examination procedures in order to enable innovators from Europe and Israel to obtain patents more quickly and efficiently in each other’s jurisdiction. The patent offices of Canada, Mexico and Singapore have also signed similar agreements with the EPO. These new pilot programmes all begin on 6 January 2015.

Dani Kramer, Partner at Mathys & Squire said:

“This is an exciting time for applicants wishing to seek patents for their innovations in Israel and Europe. The new pilot programme means that applicants will benefit from a faster, more cost-effective and simplified patent application process. It will also further strengthen the economic and technological relationship between Israel and Europe.”

The pilot programme means that a patent applicant whose claims have been found to be allowable by the EPO or other participating offices may request faster processing of their corresponding applications that are pending before the other office. The offices have also agreed to share existing work results. This is expected to speed up the application process and reduce costs for applicants.

The new pilots with Israel, Canada, Mexico and Singapore follow on from the comprehensive PPH pilot programme launched in January 2014 by the world’s five largest IP offices, or “IP5” (the EPO plus the patent offices of China, Japan, Korea and the US), which utilises both international (PCT) and national work products.

Israel is of course an important country for technology and innovation. In the last year the EPO received over 1,700 patent filings from inventors and companies from Israel. This is an increase of 7% over the previous year. The country’s strength in technology is also reflected in the EPO’s published table of the number of European patent applications per million inhabitants. Israel was 11th in this table, ahead of the US, the UK and Korea.