What (if any) steps can the applicant take if registration is refused?

Intellectual Property

Bulgaria Small Flag Bulgaria

The applicant can appeal the decision before the disputes division of the Patent office.

Malaysia Small Flag Malaysia

Patents:
The Applicant is given 3 months to submit correction submissions where the application form is not complete, otherwise the application is considered invalid. Where there is statutory non-compliance during Preliminary Examination, the Applicant is given 3 months to submit correction submissions, which will then go back for Preliminary Examination, otherwise, the application is refused. Where the Request for Substantive or Modified Substantive Examination is not received, the application will be withdrawn. Where there is statutory non-compliance during Substantive Examination, the Applicant is given 2 months to submit correction submissions/arguments, which will then go back for Substantive Examination, otherwise the application is refused. The Applicant can appeal to the High Court, and subsequently to the Court of Appeal and the Federal Court as a final resort.

Trade marks:
Upon issuance of an Objection during Substantive Examination, the Applicant may appeal by way of written submissions. Upon issuance of a Maintained Objection, the Applicant may request for a Hearing with the Trademark Office. If there is a Refusal after the Maintained Objection, the Applicant may appeal to the High Court, and subsequently to the Court of Appeal and the Federal Court.

If there is a Refusal upon Opposition proceedings commenced by a third party, the Applicant may appeal to the High Court, and subsequently to the Court of Appeal and the Federal Court.

Geographical Indication:
Where there is non-compliance with statutory requirements during the Formality Examination, the Applicant may make Amendments, which will then go back for Formality Examinations. Where the Amendments are not accepted, the application is refused with no means for appeal.

In the event the registration is opposed by a third party, and the opposition is Accepted, the application will be Withdrawn. The applicant can then appeal to the High Court, and subsequently to the Court of Appeal and the Federal Court.

Industrial Design:
Where there is non-compliance with statutory definitions and requirements, the Applicant may make Amendments and Submissions within 3 months, otherwise the Application is considered abandoned Where the Application is deemed to comply, it will proceed to Novelty Search. Where the Application is objected to during the Novelty Search, the Applicant must provide a Feedback within 3 months, otherwise the Application will be refused. Upon abandonment or refusal, the Applicant can appeal to the High Court, and subsequently to the Court of Appeal and the Federal Court.

Belgium Small Flag Belgium

When confronted with a refusal during the registration procedure, an applicant will receive a notification of the intention to refuse the registration wholly or partially. Depending on the ground for refusal, the applicant will be given the opportunity to respond and amend his application. For patents, these amendments generally consist of the reduction of the scope of the claims. For trademarks, the amendments can both pertain to the sign itself and to the classes of goods and/or services for which registration is pursued.

Failure to resolve the objections to the registration results in complete or partial refusal of the registration. An applicant may lodge an appeal against such decision with the competent body.

Singapore Small Flag Singapore

The applicant may file an appeal to the relevant forum as legislated under the relevant statutes.

France Small Flag France

First, during the examination, the applicant can reply or proceed to the amendments requested by the examiner for the registration of the rights.

Second, should the application be rejected, the refusal to registered a patent, a design or a trademark, can be challenge before the competent Court of appeal within one month from the notification (IPC art. R.411-19 and R. 411-20).

Portugal Small Flag Portugal

R: It depends on the IP right itself, but for most of the cases (IP rights ruled in the Portuguese Industrial Property Code) it is possible to appeal to the IP Court and then to the Court of Appeal. In some specific cases it is also possible to appeal to the Supreme Court. Some litigation regarding medical patent applications must be submitted to necessary arbitration.

India Small Flag India

  • Trademarks: If the application is refused, the Applicant has the option of filing an appeal with the Intellectual Property Appellate Board (IPAB) within 3 months of the communication of the order or file a review petition with the Controller to review his/her own decision.
  • Patents: The applicant has the option of filing appeal against the refusal order of the Controller with the Intellectual Property Appellate Board (IPAB) within 3 months of the communication of the order. The Applicant also has the option of filing a review petition before the Patent Office to review the Controller’s decision. Such a petition can be filed within a month from the date of the order.
  • Geographical indication: Applicant can appeal to the Intellectual Property Appellate Board (IPAB) within 3 months of the communication of the order.
  • Designs: If the design registration is refused by the Controller, then the applicant has the option of filing an appeal with the High Court.

Greece Small Flag Greece

  • Patents, SPCs, utility models, semi-conductor topographies, and registered designs: The Greek Patent Office only conducts a formalities check, so refusals are very rare and so are appeals. These are filed in the form of a nullity application before the before the Council of State (the Supreme Administrative Court), which acts as a first and final instance court.
  • Trade marks: The applicant may file a recourse action before the Trademarks Administrative Committee (TAC), a quasi judicial body of the Greek TM Office. Further appeals are available before the First Instance and Appellate Administrative Courts, as well as before the Council of State (the Supreme Administrative Court, but only on points of law).

Japan Small Flag Japan

An applicant for patents, trademarks or design rights may file a request for a trial with the JPO against the examiner's decision of refusal, within 3 months from the date when the transcript of the examiner's decision has been served.

Mexico Small Flag Mexico

Inventions

IP right


Available steps if registration is refused?

Patents

Challenge the decision by means of either: a Petition for
Review before the Mexican Patent and Trademark Office or an
appeal before the Federal Administrative Court.

Utility models

Industrial designs

Integrated circuits

Brands

IP right


Third parties right to take part in or comment?

Trademarks

Challenge the decision by means of either: a Petition
for Review before the Mexican Patent and Trademark
Office or an appeal before the Federal Administrative
Court.

Trade names

Slogans

Appellations of Origin

Copyright and other rights

IP right


Third parties right to take part in or comment?

Reservation of rights

Challenge the decision by means of either: a Petition
for Review before the Mexican Copyright Office or an
appeal before the Federal Administrative Court.

Plant varieties

Challenge the decision by means of either: a Petition
for Review before the Ministry of Agriculture or an
appeal before the Federal Administrative Court.

China Small Flag China

Patents: the applicant can submit a re-examination request to SIPO's re-examination board.

Trademarks: the applicant can file a review to the Trademark Review and Adjudication Board (TRAB).

Applicants may bring a civil action to challenge a rejection upheld by SIPO or TRAB.

United Kingdom Small Flag United Kingdom

Generally, if, during the examination of an IP right, the examiner raises objections to the right being granted, the examiner will write to the applicant with those objections and reasons for them. In attempt to overcome the objections, the applicant may correspond with the examiner (or attend an oral hearing) to further explain and, if appropriate, propose changes to the application. Changes to a trade mark application may include, for instance, limiting the classes of goods or services for which the trade mark registration is sought. When changes are made to a patent application, the change is usually made to the claims of the patent, which delimit the scope of the invention. An applicant is not permitted to add new material to a patent application, so any changes must be supported by the content of the existing application (and/or any earlier "priority documents" filed by the applicant).

If the final decision of the examiner is to refuse the application, detailed reasons will be given and the applicant may appeal the decision to the relevant body. For European rights, an appeal may be taken to the relevant Board of Appeal, and for UK rights, appeals are heard by the Court. In the case of trade marks and designs, appeals may also be made to the Appointed Person.

South Africa Small Flag South Africa

Patents

Currently, the examination by the Patent Office is for formal correctness only. The Registrar will notify the applicant of any failures to comply with the formalities and provide the applicant with three months in which to remedy such defect, or within such period as the Registrar may allow. If the applicant fails to comply with such direction in the time frame required the application will be treated as abandoned.

Designs

The examination by the Designs Office is for formal correctness only. The Registrar will notify the applicant of any objections and provide the applicant with six months, or within such period as the Registrar may allow, in which to remedy such defect, or apply for a hearing, or make written representations. Failure by the applicant to do any of the above will result in the application being deemed to have been withdrawn. If, in any hearing before the Registrar, a party does not agree with a decision of the Registrar, he may, within one month of the hearing, for the purposes of appeal, request written reasons for the decision. The party then has three months from the date on which those written reasons are sent, to appeal the decision of the Registrar, or within such period as the Registrar may allow.

Plant Breeders’ Rights

The applicant can appeal to the Minister of Agriculture, Forestry and Fisheries, who will refer the appeal to a board appointed by the Minister.

Trade Marks

If there is a preliminary refusal or conditional acceptance, an opportunity is afforded for the applicant to make submissions to the Registrar to overcome whatever objections have been raised or to deal with the application otherwise as circumstances may dictate.

UAE Small Flag UAE

Right

Appeal to refusal

TMs

An appeal can be filed with the Trade Marks Committee within 30 days for official fees of AED10,000 (approx. USD 2,725). There are subsequent appeals available to the Court of First Instance and beyond after the Trade Marks Committee.

Patents (UAE national filing)
Utility Certificates
Designs

An appeal can be filed within 60 days of the decision to the Grievance Committee of the Department. There are subsequent appeals available to the Court of First Instance and beyond after the Grievance Committee.

Patent (GCC patent filing)

An appeal can be filed with the Grievance Committee within 3 months of the date of the decision for official fees of USD 270. There are subsequent appeals available to the Courts in Saudi Arabia after the Grievance Committee.

Copyright

There is no formal appeal system, but often it is possible to discuss the matter with the copyright officials who will provide pointers as to what steps could possibly be taken to record the copyright works in the UAE through a new application.

Philippines Small Flag Philippines

If an application for a patent is refused, the applicant may appeal to the Director of the Bureau of Patents within two (2) months from the mailing date of the final refusal. The decision of the Director granting the patent shall be immediately final and executory. However, if the decision of the Director is to refuse the patent, such decision shall be appealable to the Director General within thirty (30) days from the receipt of the Director’s decision. The decision of the Director General allowing the application shall be immediately final and executory. However, if the decision of the Director General is to deny the application, such decision shall be appealable to the Court of Appeals. The same procedure applies to utility models and industrial designs.

If an application for a trademark is refused, the applicant may appeal such refusal to the Director within two (2) months from the mailing date of the action appealed from. The decision of the Director shall become final and executory thirty (30) days after receipt of a copy thereof by the appellant unless within the same period, a motion for reconsideration is filed with the Bureau Director or an appeal to the Director General has been perfected. The decision of the Director General shall be final and executory fifteen (15) days after receipt of a copy thereof by the parties unless appealed to the Court of Appeals.

United States Small Flag United States

(a) Patents
The applicant may appeal to the Patent Trial and Appeal Board (PTAB) whose decision may be appealed to the U.S. District Court for the Eastern District of Virginia or to the Court of Appeals for the Federal Circuit.

(b) Trademarks
The applicant may appeal to the Trademark Trial and Appeal Board (TTAB) whose decision may be appealed to: 1) the United States Court of Appeals for the Federal Circuit; or 2) any Federal district court which has jurisdiction over the applicant but if there are adverse parties residing in a plurality of districts not within the same state, or an adverse party residing in a foreign country, the United States District Court for the Eastern District of Virginia has jurisdiction.

(c) Copyrights
Applicants may request reconsideration - a first reconsideration request is reviewed by the Copyright Office’s Registration Program and a second reconsideration request is reviewed by the Copyright Office’s Board of Review whose decision may be appealed to a U.S. Federal District court.

Germany Small Flag Germany

An appeal to the Federal Patent Court is available against the orders/decisions of the German Patent and Trademarks Office regarding all registered rights, Section 73 Patent Act, Section 18 Utility Model Act, Section 66 Trademark Act, Section 23(4) Design Act, Section 4(4) S.3 Semiconductor Protection Act, Section 36 Act on the Protection of Plant Varieties.

Switzerland Small Flag Switzerland

If a registration is refused, the applicant can appeal the decision to the Federal Administrative Court. The decision of the Federal Administrative Court can be appealed to the Federal Supreme Court. This does not apply to domain names as their registration is a mere private contractual matter with the domain registrar.

Ukraine Small Flag Ukraine

Inventions, utility models, industrial designs, semiconductor topographies, trademarks, designations of origin, geographical indications: The final decision on refusal of UA PTO can be opposed at the board of appeal or at the court during two months after receiving the decision.

Copyright: if copyright registration is refused due to the formal reasons, the applicant may re-file application for copyright registration. Further, decision on refusal in copyright registration can be challenged via the court.

Plant varieties: the final decision on refusal of plant variety registration can be challenged via the court.

Designations of origin, geographical indications: the applicant may file an appeal to the board of appeals of the relevant examination authority, or to the court.

Turkey Small Flag Turkey

The parties that suffer from negative impacts of the decisions made by the Authority (including the decision to reject the application for the relevant right) may file a written objection along with the justifications thereof within two (2) months as from the notification of the decision. It is essential to pay the objection fee and submit documentary proof to the Authority within two (2) months’ objection duration before the objection is taken into consideration. The decision to be rendered by the Board of Revision and Re-Assessment (the “Board”) about the objection shall constitute the basis for the final decision of the Authority.

Sweden Small Flag Sweden

(a) Patent (national)
The application may be reinstated if the applicant within four months from the expiration of the ordered time takes measures to rectify the shortcomings of the application, and pays the prescribed reinstatement fee within such time. Where the applicant fails to pay the annual fee, the application shall be dismissed without a preceding order and cannot be reinstated.

(b) Trademark Rights
The applicant is entitled to respond to the notice of refusal issued by the PRO. If the PRO still refuses registration, the applicant may appeal to the Patent and Market Court within two months from the date of the decision.

(c) Trade Name Rights
Should the SCRO fins the proposed Trade Name(s) to be invalid or unavailable, it shall issue an injunction to the applicant, who thereafter may alter the proposals or propose a new Trade Name. The altered or new proposed Trade Name is reviewed within one week.

Spain Small Flag Spain

PATENTS & UTILITY MODELS:
Should the SPTO refuses the patent, its applicant can file an administrative appeal (recurso de alzada) before the SPTO within a month’s term. Against such decision, the aggrieved party can take still file a jurisdiction appeal before the (non-IP specialised) Tribunal Superior de Justicia (contentious-administrative courts).

TRADEMARKS:
In the case that the trademark application is refused, the applicant can contest the SPTO´s decision through an administrative appeal procedure within one month of its publication.

Further, any unsuccessful party in the administrative appeal process may lodge an appeal before the contentious-administrative courts within two months of publication of the SPTO´s administrative appeal decision.

DESIGNS:
When the registered design is cancelled, the design owner can contest the cancellation before the SPTO through an administrative appeal procedure within one month of the publication of the cancellation.

The decision of the SPTO´s could be subject to a further appeal before the contentious-administrative courts within two months of publication of the SPTO´s administrative appeal decision.

COPYRIGHTS:
Should the Copyright Registry refuse to grant copyright protection, the aggrieved party can appeal the Registry’s decision before the Civil courts.

Israel Small Flag Israel

The applicant can first try to overcome a refusal directly with the patent examiners. An application for appeal can be submitted to the Registrar of Patents as second step, in which the applicant will argue against the objection in an attempt to persuade the registrar. Third step, in the case of a refusal by the registrar, is an appeal before the district court. The final step is a request of permission to appeal to the Supreme Court.

Brazil Small Flag Brazil

It is possible to appeal from that decision to the BPTO or to the SNPC, in case of plant variety rights. If the second (and final) decision refuses the IP right protection, it is possible to file a court action in the Federal venue to revert the administrative decision, in case the applicant understands that all the requirements for the protection of the IP right are met.

Updated: November 1, 2017