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EU design reform update

As previously reported on this blog, the EU design regulation and the EU design directive are going to be modified. This is a multi-phase process, with the first of the phases entering into force on 1 May 2025. If you want to learn more, check out the EUIPO’s webinar recording that provides updated information on the changes.

One important aspect of the changes is that the new regulation will allow IP stakeholders to more easily obtain adequate design protection for designs that can be represented in an electronic register, at least once the amended Implementing and Delegated Regulations have entered into force.

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Furnishing Priority Document for a PCT Application

There are instances where the WIPO Digital Access Service (DAS) access code may not be available at the time of filing a PCT application. A typical example is when the depositing office has not yet deposited the priority document into WIPO DAS upon expiry of the priority term.

The WIPO DAS access code is essential for retrieving priority documents electronically from WIPO DAS. Fortunately, the WIPO has instituted a user-friendly solution through the ePCT system. ePCT allows the eOwner to initiate the retrieval of the priority document by performing the action “Obtain priority document from DAS” to effect retrieval of the priority document within the time period of R. 17.1(b-bis). The eOwner can simply log into their ePCT account and initiate the retrieval of the priority document.

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UPC updates

The epi’s podcast episode INSIGHT epi UPC Case Law – Episode 3 provides interesting updates on UPC-related developments. The following aspects were particularly interesting to me:

First, as highlighted by one of the presenters (who reported on his first-hand experience when filing a request for file inspection with the Nordic-Baltic RD), the jurisprudence of the divisions appears to be influenced by the judge’s national legal background. This might be one of the reasons as to why the first file inspection request with the Nordic-Baltic RD was more successful than the two concurrently pending file inspection requests that were filed by others with the CD Munich.

Second, the CMS appears to be structured such that it cannot cope with some procedural situations. With regard to file inspections, CMS did not appear to work properly for patentee’s appeal against the RD’s decision to grant access to (a redacted version of) the pleadings.

As always, I can only recommend listening to this episode of INSIGHT epi.

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First UPC litigation ranking by JUVE Patent

Many law firms and (potential) litigants eagerly awaited the first UPC litigation ranking recently published by JUVE Patent.

The ranking of December 2024 has revealed a surprising trend: some of the top patent law firms, renowned for their national prosecution and litigation work, are not to be found in the UPC ranking. This includes firms that have played a pro-active role in the preparation of the new system (such as BOEHMERT & BOEHMERT with Prof. Goddar) and firms that are ranked in the top tier for national litigation (such as df-mp).

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Eletronic filings with the GPTO

As widely communicated by the EPO, the EPO smart card will be faded out for the EPO’s online services.

Practitioners who use the EPO smart card for the GPTO’s online services (in accordance with §3(2) numeral 2 of the Regulation for Electronic Filing with the GPTO) should be aware that the EPO smart card can no longer be used for signing in DPMADirektPro after December 31, 2024 (see GPTO information on digital signatures). This applies irrespective of the expiry date indicated on the EPO smart card. The 2FA, which the EPO has successfully introduced as new authentication mechanism, will not be available for procedural acts in the GPTO’s filing software DPMADirektPro.

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GPTO becomes WIPO DAS depositing office

The German Patent and Trademark Office (GPTO) started acting as depositing office for WIPO DAS effective 25 November 2024. Additional information can be found in the official notice from the president and on the WIPO DAS country website.

Two notes for practitioners: First, as of now, only patent and utility model applications will be deposited by the GPTO in WIPO DAS. Hopefully this will be extended to design and trademark applications later. Second, the process for requesting deposition in WIPO DAS is different from, e.g., the process known to European practitioners from EPO and EUIPO priority applications: For priority applications filed with the GPTO, it is required to file a separate request using Form A9164 after the application has been filed. Please find a link to the version of Form A9164 available as of writing this blog contribution .

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EPO seminars

As the year draws to a close, the EPO is going to host several interesting seminars, including:

Opposition Matters 2024: According to the EPO, “Opposition Matters is the EPO’s key event for professional users to keep abreast of the latest and most relevant developments in opposition proceedings.”

Litigation Matters 2024: According to the EPO, “Litigation Matters … is devoted to the latest practices of patent litigation in Europe, with particular attention to the UPC litigation.”

Registration is already open. These events represent a great opportunity to catch up with recent developments. Both events are free of charge and organized by the EPO Academy.

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EU design invalidity

The EUIPO hosted a webinar on design invalidity applications, which was both very instructive and useful for practitioners.

If you are interested in this topic, you can find a recording of the webinar entitled Track on design: focus on invalidity of designs on the EUIPO’s website.

By way of background for readers from abroad: In the context of industrial property rights within the European Union (EU), design invalidity refers to the legal process by which a party may challenge the validity of a registered design before the European Union Intellectual Property Office (EUIPO). A design may be declared invalid for several reasons, including lack of novelty, lack of individual character, or if the design is not eligible for protection under EU design law.

To initiate an invalidity procedure, any party with a legitimate interest can file an application to the EUIPO. This application must set forth the grounds on which the invalidity claim is based and provide the necessary supporting evidence. If the EUIPO finds the design invalid, it will be cancelled. This mechanism is crucial as it allows for the resolution of disputes relating to the validity of designs, helping to maintain a fair competitive environment in the marketplace.