The main purpose of the latest changes provided for in the Bill amending the Patents and Utility Models Registration Act (PUMR) is to facilitate the administrative service model and to adapt our arrangements for accession to the future single EU patent court.
The ten ammendments
- The first change is related to the registration of industrial property representatives. These rules have so far been laid down in the Industrial Property Representatives Ordinance, not the law, and not particularly comprehensive. The bill aims at removing some of the existing provisions, such as the fact that at the moment it is the consumer who submits the documents that the Patent Office should actually collect ex officio. For this purpose, it is planned to create a new chapter of the PUMR, which will regulate everything related to the pursuit of the activity of representation on industrial property.
- Amendments are envisaged to guarantee compliance with the obligation of the Republic of Bulgaria contained in Art. 4 (2) of Regulation (EU) No 1257/2012. In this regard, it is envisaged that a national or European patent with effect on the territory of the Republic of Bulgaria, for which a European patent with a unifying action has been registered, shall cease to be valid to the extent that they overlap as of the date of publication of the notification of the issue of the patent with a unified action in the European Patent Bulletin.
- Regarding the changes planned for the certification for supplementary protection and the application of the exemption from certification for medicinal products, provision shall be made for a more complete definition of the order in which the procedure before the Patent Office must be held. It is envisaged to introduce a fee for the procedure of this notification, as well as a fee for its publication in the official newsletter of the Office. The possibility of extending the validity of a supplementary protection certificate is also provided.
- The number of persons who can represent others before the Patent Office is also expanding. It is envisaged that this right may also be exercised by attorneys who have acquired the right to practice before the bar. The reason for this is the fact that, at the moment of initiating the judicial appeal phase, the parties are represented by lawyers anyway, while in the administrative phase, this may be, and often is, a person other than a lawyer. In the end, the result is that two people are involved and the whole process is complicated.
- Other problems that the legislator seeks to solve are related to overcoming existing regulatory gaps in procedures, speeding up the registration and acquisition process, strengthening legal redress and generally optimizing these and other processes. It also defines by law the operation of patents as a subject of security between a patent holder and a licensee. The provisions related to the indication of stakeholders for compliance with the requirements for classified information, as well as the conditions for joint activity on representation of industrial property through companies established under the procedure of the Commercial Act and the partnerships registered under the obligations and contracts Act. The rules governing the activity and responsibility of these entities and the procedure for their deregistration shall be determined. A mechanism has been put in place to protect the interests of consumers using the services provided by industrial property representatives and lawyers.
- It is proposed that compulsory professional indemnity insurance be introduced for persons pursuing industrial property representation to cover potential damage to their clients as a result of misconduct or inaction. The terms, conditions, information to be entered, the minimum insurance amount, etc. are regulated in detail.
- In order to speed up the administrative procedure, the period within which a consumer may request an extension of the period due to unforeseen circumstances to undertake certain actions, is changed.
- The period within which an applicant for a utility model registration may apply for a suspension of that registration is reduced. It is envisaged that the request can therefore be made at the same time as the submission of an application, and not within 3 months of the submission – as before, which only hindered the consumer.
- Article 3 of the Law states that the applicant, the holder of rights under this Act, hereinafter referred to as the “holder”, and any person who, under this Act, has the right to act before the Patent Office which are not established in the Republic of Bulgaria or in another Member State of the European Union, in a country party to the Agreement on the European Economic Area, or Switzerland, will only act before the Patent Office through a lawyer or through an industrial property representative.
- Persons of a Member State or an EEA State, as well as Switzerland, who may provide representation services before the Register for requests for action in the territory of the Republic of Bulgaria, have been added to the scope of persons who can provide temporary or one-off representation services regarding granted European patents, as long as those same persons have been input in the Register of the European Patent Office.
Similar changes to the above are expected to be made in the relevant provisions governing representation before the Patent Office and in other laws that the administration applies, such as the Trade Marks and Geographical Indications Act.