Interesting features of core countries Flashcards
China - Trivia
National phase deadline is extendable by 2 months with a fee.
Australia
The first examination report sets a 12-month compliance period. Individual examination reports otherwise do not have deadlines.
China - Utility Models
Utility models are obtainable from a PCT application. They can’t be converted to patents and vice versa but a utility model can be filed with a patent application on the same day by the same applicant in respect of the same invention, and the fact that both were filed must be stated. The utility model must be revoked when the patent grants. This is useful for ensuring quick protection because utility models are not substantively examined.
Germany - Utility Models
Utility models are obtainable from a PCT application and are not substantively examined. Note that for validity, there is a 6-month grace period and novelty is both local and written-only.
Germany - Challenge
There is a 9-month opposition system as in Europe, except that grounds also include entitlement.
Revocation proceedings before the German Patent Court (called nullity actions) can be brought any time after the opposition and if there are no outstanding opposition proceedings still pending. They may even be brought after the lifetime of the patent if damages are claimed based on the patent. Revocation can be in part or in full, and either party may appeal to the EPO.
Hong Kong - R Patents
Within six months from publication of the UK/CN/EP(GB) application (henceforth the base application), the application must request the recording of that application in the register in Hong Kong. Within six months from grant of the base patent, a request for registration of the granted base patent and for grant of a standard patent must be filed. After registration and grant, the patent will be independent of the base patent and can only be challenged in a Hong Kong court.
Hong Kong - Trivia
No PCT national phase.
Japan - Trivia
Pre-filed, post-published applications are novelty-only art only if filed by a different applicant.
Grace period does not cover disclosures in patent applications.
Japan - Challenge
There is a 6-month post-grant opposition system. The grounds are patentability, added matter, sufficiency, double patenting and mistakes in translation. It is an entirely written process with no hearings. Only the patentee can appeal the results to the Japanese High Court, the opponent cannot.
An invalidity trial can be held at any time after grant, including during the opposition period, and sometimes even after expiry. Broader grounds than opposition but more expensive. It’s first heard at the JPO. Either party can then appeal to the High Court. Litigation in Japan has a double track system – infringement and validity are separate.
Japan - Utility Models
Utility models available from PCT.
No substantive examination for utility models. However, anyone can request a technical evaluation report (TER) for a utility model which is a non-binding opinion of validity. A TER is a prerequisite for enforcement, as one must be sent to an infringer before taking action against him.
Opposite to China: utility models can be converted into patents and vice versa but cannot both be filed for the same invention. Time limit for converting UM to patent: 3 years from filing. Time limit for converting patent to UM: 3 months after first examination report.
Singapore - Trivia
American-style PTA for IPOS delays.
IPOS does not search or examine. The Austrian, Hungarian and Danish offices do it instead.
National phase deadline can be extended by 18 months with a fee.
Singapore - Examination Routes & Process
There are two approaches for local search and examination (NB the foreign-only route was abolished in 2020).
In the all-local approach, the applicant can request search within 13 months from priority and examination within 36 months of priority, or they can request combined search and examination within 36 months with a cheaper combined fee.
The examination procedure lasts 18 months and includes at least one written opinion with a 5-month deadline. A further written opinion with a further 5-month deadline may be issued at the Examiner’s discretion.
At the end of the 18 months either a notice of allowance or of intention to refuse is issued. If the latter, the applicant may apply for a review of the examination report within 2 months. If a final notice of refusal is issued, the applicant has 2 months to file a divisional.
If the report is positive, the applicant has 2 months to pay the fees.
In the combination approach, everything is the same except there is no search request. Instead, the search report of a corresponding international application is used. Search reports issued by the UK, the EPO, the USA, Canada, Australia, New Zealand, Japan or South Korea are all acceptable (basically all Western countries + Japan and South Korea).
