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

Intellectual Property (2nd edition)

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. In this way, the applicant can correspond with the examiner to further explain, justify or amend the application when applicable.

Regarding trademarks the applicant can for instance choose to limit the list of goods or services for which the trademark has been applied for.

Regarding patents, the applicant can choose to reduce the scope of the invention.

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 (Article R.411-19 and R. 411-20 of the IPC).

Switzerland Small Flag Switzerland

A decision refusing the registration can be appealed within 30 days to the Federal Administrative Tribunal. The decision of the Federal Administrative Tribunal can then be appealed to the Federal Tribunal.

Poland Small Flag Poland

The decisions of the Patent Office in registration proceedings are subject to request for re-examination which then subsequently may be appealed in administrative courts, while the decisions concerning plant varieties, issued by the Director of the Central Research Centre for Cultivar Testing, can be contested by filing an appeal before the Minister in charge of agriculture, and then – to the administrative courts.

Italy Small Flag Italy

Under art. 135 IPC, the decision of IPTO refusing to grant IP rights, may be contested by interested parties before the Commissione dei Ricorsi which is a panel made up of judges and university professors of Law, appointed by the Government. The panel, after hearing the parties, decides the case issuing a decision that may be challenged in last instance before the Italian Supreme Court of Cassation.

Cyprus Small Flag Cyprus

For Patents, SPCs, Trade marks and Designs the applicant can file an appeal against the decision of the Registrar before the Administrative Court of Cyprus.

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 a second step, in which the applicant will argue against the objection in an attempt to persuade the registrar. The 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.

Chile Small Flag Chile

The Industrial Property Law states that in the case of a rejection of an application, the applicant has 15 days to file an appeal, which will be heard by the Industrial Property Court.

In the case of the registration of an intellectual work, should an application be rejected, the applicant has a period of 10 days to file an appeal for reconsideration, which will be heard by the Intellectual Rights Department. However, in subsidy - in case the rejection is reaffirmed -, the appeal can be heard by the corresponding hierarchical superior.

Greece Small Flag Greece

  • Patents, SPCs, utility models, semi-conductor topographies, and registered designs: An appeal against the rejecting decision of the Greek Patent Office can be submitted before the Council of State (the Supreme Administrative Court), which acts as a first and final instance court.
  • Trademarks: The Examiner’s decision to reject a trademark can be challenged by filing a recourse action before the Trademark Administrative Committee. The Committee’s decision is subject to further recourse before the Administrative Court of First Instance. Decisions of the First-Instance Administrative Court are subject to appeal before the Administrative Court of Appeal. Appeals in cassation may be filed before the Council of State only for specific grounds, regarding points of law, but are of very limited practical significance.

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 an 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 a change is made to a patent application, it is usually 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 UK trade marks and designs, appeals may also be made to the Appointed Person.

Pakistan Small Flag Pakistan

The applicant may prefer an appeal against the refusal in High Court.

Ecuador Small Flag Ecuador

The applicant can challenge the resolution that is not favourable by administrative remedies as reversal, appeal and review.

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.

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.

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.

Japan Small Flag Japan

An appeal to a trial court at the Japan Patent Office against examiner’s decision of refusal is available within three months from the date on which the certified copy of the examiner’s decision is served. In addition, the applicant may file with the intellectual property high court a suit for cancelling such trial decision.

UAE Small Flag UAE

Right

Appeal to refusal

TMs

An appeal can be filed with the Trade Marks Committee within 15 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)

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.

Utility Certificates

Designs

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 1,600. 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.

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

Geographical Indications

 

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.

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 against the order of the controller.

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.

Latvia Small Flag Latvia

Patents - If the applicants disagree with the decision of the Latvian Patent Office, they are entitled to submit a written motivated appeal to the Patent Office within three months from the day of receipt of the decision, upon payment of the respective fee. Submission of an appeal must suspend the execution of the decision of the Patent Office.

Trade marks - If the applicants disagree with the decision of the Latvian Patent Office, they are entitled to submit a written motivated appeal to the Patent Office within three months from the day of receipt of the decision, upon payment of the respective fee. Submission of an appeal must suspend the execution of the decision of the Patent Office.

Registered designs - If the applicants disagree with the decision of the Latvian Patent Office, they are entitled to submit a written motivated appeal to the Patent Office within three months from the day of receipt of the decision, upon payment of the respective fee. Submission of an appeal must suspend the execution of the decision of the Patent Office.

Vietnam Small Flag Vietnam

Where applications are refused as to formality (eg. non-patentable or non-protectable subject matters or other irregularities), the NOIP or PVP Vietnam will issue notices of irregularities and allows the applicant to response or correct in 2 months (1 month for plant variety). In the event that no timely response is made or inappropriate response or correction is made, decisions on rejection will be released. Similarly, at the substantive examination stage, if applied-for subject matters are deemed unsatisfied with their criteria, the NOIP or PVP Vietnam will issue notices of intention of refusal and the applicant has 3 months to respond or amend. If in the absence of response or the as-filed response is improper, decisions on refusal will be issued. Kindly note that one-only 2-month or 3-month extension regarding the above notices respectively is permissible against official charge). The aforesaid decisions may be subsequently subjects of the possible complaints if they are timely submitted against the NOIP’s General Director in 90 days. If unsatisfied with the complainants by the NOIP’s General Director, the complaints either have right to appeal to the NOIP’s upper body being Minister of Science and Technology or initiate a lawsuit before an administrative court. If still unsatisfied with the settlement by the Minister of Science and Technology, the complainants are able to bring the case to an administrative 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.

Malta Small Flag Malta

Applicants will have the right to appeal the decision refusing registration. Appeals will have a suspensive effect on the application.

Updated: August 2, 2018