On 24 October 2013, the European Patent Office (EPO) announced two important amendments to the Rules of the European Patent Convention, the first concerning the filing of divisional applications (Rule 36 EPC) and the second concerning the requirements for requesting further searches (Rule 164 EPC).
 
In particular, new Rule 36 will no longer contain the current two-year time limit for filing divisional applications, running from the first examination report on any parent application, which was introduced in 2010 and was unanimously criticised by the users.
 
Therefore, starting from 1 April 2014, it will be again possible to file divisional applications as long as the earlier application is still pending, even if the current two-year limit has expired.
 
New Rule 164, in force from 1 November 2014, will enable applicants to request further searches if the EPO finds that a Euro-PCT application lacks unity of invention. Under the current practice, in the case of lack of unity, the EPO searches only the first invention and the further inventions can be protected only by filing divisional applications. In the future, applicants will be allowed to request additional searches for the further inventions and also to contest unity objections during examination, so as to avoid the filing of divisional applications if these objections are not justified.
 
Both amendments have been the subject of two user consultations initiated by the EPO at the beginning of 2013.
 
FICPI expressed its concerns over the Rule 36 as it was then, and, in its first response, requested the cancellation of the two-year time limit, and repeated that request during its regular meetings with EPO officials.
 
In its second response, FICPI supported the proposed amendments to Rule 164 EPC and also urged that there should be a fee refund when the lack of unity objection is not justified. Such a provision has been adopted  in the new Rule 164(5) EPC.
 
FICPI warmly welcomes these amendments as they will allow applicants greater flexibility in dealing with unity objections from the EPO .
 
Antonio Pizzoli

 

The 48th Internet Corporation for Assigned Names and Numbers (ICANN) public meeting was held in Buenos Aires, Argentina, on November 16 – 22, 2013.

Updates on new generic top level domains (gTLDs)

ICANN has begun to delegate the first new TLDs and are processing on a weekly basis. At the time of the meeting, 1 798 applicants were still active and 240 of those had been accepted. Some of the new gTLDs now on the market are: .bid, .ceo, .berlin, .beer, .homes, .mini, .email, .support, .training, .academy, .management and .stockholm.

With all the new top level domains – and connected domain names – out there in Cyberspace, it is very important to have the possibility to easily get information on who is the true holder of the domain name, and how to reach the holder for information, negotiation or domain disputes.

WHOIS Studies Update

The ICANN Generic Names Supporting Organization (GNSO), responsible for developing policy for the domain name system, has commissioned several studies on various aspects of the publicly-accessible Whois gTLD data directory system. During the Buenos Aires meeting, we got an update on the studies on Privacy and Proxy Service Abuse, as well as Whois Misuse. The independent study in fact shows that Privacy/Proxy is generally misused by companies that want to hide their true identity in order to handle pornographic sites, trademark infringement and fake sale sites.

PDP Working Group on Translation and Transliteration of Contact Information
A special Working Group, tasked to address the issues concerning the translation and transliteration of contact information. Given the more internationalized nature of domain registration, there is a need for standardized query of the contact data. Translation is defined as the translation of text into another language and transliteration is the writing of words using the closest corresponding letters of a different script. The work of this is considered important in attending the needs of non-English speaking communities, is a direct continuation to IDN (“Internationalized Domain Names”) implementation, and has significant implications for all stakeholder groups. Two key questions in the charter: 1) Should local contact info be translated into a single common language (eg English) or transliterated into a single common script and 2) Who should bear the burden/cost for this process?

This WG will have weekly meetings the next 10 – 12 months, and it will give FICPI members a possibility to include trademark related issues in the WG’s work and report.

It is important to find out easily “Who Is Who” on the Internet, and with active assistance from FICPI, ICANN will hopefully come up with good solutions during 2014.

Petter Rindforth
Special Reporter for Domain Names
Member of ICANN's GNSO Council
Member of the Translation / Transliteration WG