Expiration of patents, plant varieties and utility models
The expiration date of patents, plant varieties and utility models has been clarified further – the rights expire on the date corresponding to the starting date of protection, and if that day is missing from the month when the rights expire, they will expire on the last day of the month. Presumably this change is about February 29 as it only exists every four years.
Clarity of claims for utility models
The Utility Model Act now aligns the clarity of claims requirement for utility models with the one for patents, i.e. the wording of the claims must clearly define the scope of the protection sought.
Modification of patent and utility model applications
Modifying patent and utility model applications has been also clarified. The previous provisions allowed amendments provided they did not extend the subject matter of the invention or utility model beyond the content of the application as originally filed. The new provisions are now worded differently — extending the scope of the original patent or utility model application may be achieved not only by adding new content but also by deleting certain words or parts of the drawings.
Novelty search
The applicants filing patent description with claims, abstract and drawings in English no longer have to submit a separate novelty search request in order for the HIPO to prepare the search report. The HIPO will now do this ‘automatically’, as they do with applications where the patent description, claims, abstract and drawings are in Hungarian. Nevertheless, the translation requirements have not changed and patent applications are still published in Hungarian.
Response to office actions
Previously, if patent applications did not meet the patentability requirements, even after applicants responded to office actions during substantive examination, applications could be rejected either in whole or in part. Now, they will be rejected in whole.
Correction of the HIPO’s decisions in patent cases
A new provision was introduced in the Patent Act allowing applicants to request a correction of the HIPO’s decisions regarding the description, claims and drawings on which the final patent is based. This correction may be requested only once and within one year from the date the decision was made.
Adversarial patent proceedings – changes regarding the adverse party
Previously, the HIPO could not record changes regarding the party initiating an adversarial proceeding (e.g. transfer of rights). The amendments now enable the HIPO to record such changes.
Suspension of patent proceedings based on parties’ request
If an adversarial patent proceeding involves several adverse parties, the proceeding can only be suspended upon a joint request. The proceeding may only be suspended once, for a maximum period of six months (after which the proceeding is terminated), and may be resumed upon request of any of the parties.
Patent revocation procedure
The amended Patent Act now clearly defines the legal grounds for patent revocation by explicitly referring to the relevant article of the Act – Article 42(1). This amendment applies to cases in process as of January 1, 2023.
Previously, the evidence that could be submitted along with a patent revocation request had to be documentary evidence. The Patent Act now states that the request should be accompanied by supporting evidence. Documentary evidence has to fulfill certain legal requirements and takes more time and effort to obtain than simple evidence. For example, a screenshot of a website would be simple supporting evidence, while a screenshot of a website taken in the presence of a notary public would be documentary evidence.
The amendments also introduce the possibility of postponing the hearings in patent revocation proceedings – the parties can jointly request a postponement subject to certain restrictions (e.g. no later than three days before the hearing; the postponement should be justified) and the HIPO can also postpone the hearing in case of exceptional circumstances.
The deadlines in accelerated patent revocation proceedings have been clarified (these apply for cases in process as of January 1, 2023):
- The deadline for rectifying irregularities or submitting comments is a maximum of 15 days, as opposed to exactly 15 days as it was previously; and
- A deadline extension may still be granted but only in particularly justified cases; the amendments define the length of the extension – at least 15 days and no longer than two months.
Body of experts on industrial property
During industrial property disputes, the courts and other authorities may request an expert opinion of the “Body of experts on industrial property”, which is associated with the HIPO. There has been an increased need for expert opinions because the Body takes positions on various issues of public interest that may contribute to research, professional publications and the shaping of legal thought. The amendments provide for the creation of a database that will make these opinions available to the public.
In terms of confidential matters, the publicly available information will cover only the case number, the subject matter and the Body’s findings regarding the interpretation of the law. However, if the lack of other information results in misunderstandings or is misleading or incomprehensible with regard to the findings, the publication of the Body’s opinion will be omitted, as it is not binding for the authorities.
This article was first published on the PETOŠEVIĆ website