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

Intellectual Property (3rd edition)

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 Where the Request for Substantive or Modified Substantive Examination is not received, the application will be withdrawn.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In the event the registration is opposed by a third party, and the opposition is accepted, the application will be withdrawn.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.

Norway Small Flag Norway

If registration of a patent, design or a trademark is refused, the applicant will have the opportunity to rectify the deficiencies within a deadline set by NIPO.

If NIPO’s refusal of the patent, design or trademark application is final, the applicant has a right to appeal the decision to the Norwegian Board of Appeal for Industrial Property Rights (KFIR). KFIR’s decision may further be appealed to the Oslo District Court if the decision from KFIR goes against the applicant.

Singapore Small Flag Singapore

During the application process, the applicant is given the opportunity to address any grounds for refusal that may be raised by the Registrar. If the Registrar maintains a decision to refuse registration, the applicant can appeal the decision to the High Court.

Mexico Small Flag Mexico

Inventions

IP right

Available steps if registration is refused?

Patents

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

Utility models

Industrial designs

Integrated circuits

Brands

IP right

Available steps if registration is refused?

Trademarks

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

Trade names

Slogans

Trade dress

Appellations of Origin

Geographical Indications

Copyright and other rights

IP right

Available steps if registration is refused?

Copyright registration

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

Reservation of rights

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

Plant varieties

Challenge the decision by means of either: a Revision Appeal before the Mexican Ministry of Agriculture or an appeal before the Federal Administrative Court

China Small Flag China

The applicant could appeal with the competent authorities if registration is refused.

Ecuador Small Flag Ecuador

Administrative steps:

The applicant can challenge the unfavourable resolution by administrative appeals and reviews.

Judicial steps:

Once the administrative procedure is exhausted, it is possible to file a subjective appeal before the contentious-administrative court within a period of 90 days after the notification of the administrative decision.

South Africa Small Flag South Africa

Patents and Registered Designs cannot be refused as South Africa is a non-examining country.

Trade Mark - refusal can be taken on review or appeal.

Plant Breeders – Appeal is possible to the Minister of the Department of Agriculture, who shall appoint an Appeal Board which shall consist of-

(i) one person designated as chairman on account of his knowledge of law;

(ii) two persons who in the opinion of the Minister have expert knowledge of the subject of the appeal.

Cyprus Small Flag Cyprus

The decision of the Registrar regarding the approval of a patent as well as a trade mark and a design application, constitutes an administrative decision and as such, it may be appealed against with a recourse filed in the administrative court, within 75 days from the date of the decision.

Japan Small Flag Japan

When a patent application, a design application or a trademark application is refused, the applicant can file an appeal with the Trial and Appeal Department of the Japan Patent Office. A board of trial examiners then hears the appeal. If the board of trial examiners renders a trial decision dismissing the appeal, the applicant can file with the Intellectual Property High Court for litigation seeking to revoke the trial decision.

Switzerland Small Flag Switzerland

A decision refusing the registration can be appealed within 30 days to the Federal Administrative Tribunal. Based on a limited set of legal grounds, the decision of the Federal Administrative Tribunal can then be appealed to the Federal High Court.

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.

Brazil Small Flag Brazil

It is possible to file an appeal against the rejection at the BPTO (or SNPC, in case of plant variety rights). 5 years counted from the date of the publication of the rejection decision, the applicant may file a court action in the Federal Court to try the reversion of the BPTO´s administrative decision, in case the applicant understands that all the requirements for the protection of the IP right are met.

Israel Small Flag Israel

Patents and Trademarks: The applicant may file an administrative appeal against the examiner’s decision. The appeal will be heard by the patent registrar or deputy registrar. The decision may be appealed by right to a district court within 45 days from its issuance.

Designs: If the registrar refuses to register a design, it may, at the applicant’s request, reconsider such refusal, provided that the petition to reconsider is filed within three months from the date the notice of the competent authority’s refusal for such registration was sent to the applicant. The decision may be appealed by right to a district court within 45 days from its issuance.

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.

Italy Small Flag Italy

Under Article 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. Under LD 15/2019, the decision issued by the Commissione dei Ricorsi (i) may be challenged in the last instance before the Italian Supreme Court of Cassation or (ii) revoked ("revocazione") in the specific cases set out in Article 395 of the Italian Civil Procedural Code ("ICPC"), including when the ruling was issued on the basis of evidence that is revealed to be false or was the result of intentional misconduct by the judge or one of the parties involved.

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 respect, the applicant can exchange with the examiner to further explain, justify or amend the application when applicable.

For:

• patents: the applicant can choose to waive or amend one or several claims in order to reduce the scope of the invention and abandon contested elements (L.613-24 of the IPC). Also, as a patent application shall relate to one invention only or to a group of inventions relating to the same inventive step, the INPI can request the applicant to divide the application, failing this, the application will be rejected (Article L.612-4 of the IPC). In addition, in regards of the search report, the applicant shall give its observations upon request of the INPI, failing this, the application will be rejected (Article L.612-14 of the IPC);

• utility certificates: As for the patent application, the applicant can choose to waive or amend one or several claims in order to reduce the scope of the invention and abandon contested elements At the INPI request, the applicant can also be required to divide the application and file divisional applications (Article L.611-2 of the IPC) ;

• trademarks: the applicant can choose to limit the list of goods or services for which the trademark has been applied for by giving up the contested goods and services (Article R.714-1 of the IPC);

• collective and certification marks: the applicant can choose to limit the list of goods or services for which the mark has been applied for the contested goods and services or, especially for the certification mark, amend the regulation governing use (R.712-11 of the IPC);

• geographical indications: After the conduct of a public inquiry and consultation related to the application for the geographical indication, the INPI shall prepare observations to be transmitted to the applicant. The applicant shall have two months from their receipt to submit comments or to give notice to the INPI,of its intention to amend the application (Article R.721-5 of the IPC);

• designations of origin and traditional specialty guarantees: the applicant can modify the specifications of production of the products (Article R.641-13 of the Rural and Sea Fishing Code);

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).

Peru Small Flag Peru

If a registration request is denied, the Peruvian Intellectual Property Office grants you 15 working days so that with factual and legal arguments, you can appeal to the resolution in the first instance. A new resolution confirming or revoking will be issued within 120 working days. If said resolution is also denied, it can be appealed by the courts as the second and final instance, which will be pronounced within a period of 6 months, confirming or revoking.

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.

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-In stance 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.

Malta Small Flag Malta

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

Saudi Arabia Small Flag Saudi Arabia

Under the new Trademark Law, an appeal against the imposition of a condition by the Trademark Office or refusal decision can be filed before the Trademark Appeal Committee. The time limit is 60 days from issuance of the refusal decision or imposition of the condition. The decision of the Trademark Appeal Committee can be further appealed by an aggrieved party to the Administrative Court within a 60-day period and decision of the Administrative Court can be challenged before Administrative Court of Appeal. A final appeal can be filed before the High Court on point of law only.

If the Saudi Patent Office refuses to grant Patent or Industrial Design rights, an applicant can file appeal before Saudi Patent Committee within 60 days period. The decision of the Saudi Patent Committee can be further appealed by an aggrieved party to the Administrative Court within a 60-day period and decision of the Administrative Court can be challenged before the Administrative Court of Appeal. A final appeal can be filed before the High Court on point of law only.

Australia Small Flag Australia

  1. Patents – you can appeal from a decision of the Commissioner of Patents within 21 days of the date of the decision by filing a Notice of Appeal in the Federal Court.
  2. Trade marks – you can appeal a decision, direction or determination of the trade marks Registrar to the Federal Court or Federal Circuit Court. Appeals from Registrar’s decisions may be made inter alia in respect of the rejection of an application or the rejection of an International Registration Designating Australia.
  3. Geographical indications –
  4. a. GIs registered using the certification trade mark (CTM) system – the trade mark rights of appeal from decisions of the Registrar apply. You can apply for review by the Administrative Appeals Tribunal (AAT) if the Australian Competition and Consumer Commission (ACCC) makes a decision not to give a certificate as to the competence of the certifying body, or the appropriateness of the rules; or to approve, or to not approve, a subsequent variation of the rules governing the use of a registered certification trade mark.

    b. GIs for wine registered under the Wine Act 2013 – appeals against the final determination of the Geographical Indications Committee (GIC) must be made to the AAT within 28 days. Appeals against an AAT decision can be lodged with the Federal Court.

  5. Designs – you can apply to the AAT for review of a decision of the Registrar to inter alia refuse an application.
  6. Plant breeder’s rights – a decision of the Registrar to accept or reject an application is reviewable by the AAT.

United States Small Flag United States

For patents and trademarks, the USPTO issues an office action to the applicant whose application has been rejected, explaining the basis of rejection and requesting the applicant to respond to the office action within a certain time period. The applicant must respond to the office action and respond to the examiner’s objections and/or rejections of the claims.

When a patent examiner issues a final office action, the applicant can file further arguments and/or claim amendments, reopen prosecution by filing a Request for Continued examination along with any further arguments and/or claim amendments, or appeal the objections and/or rejections in the office action to the Patent Trial and Appeal Board.

Similarly, when a trademark examining attorney issues a final action, the applicant can file a request for reconsideration of the final action. If unsuccessful, the applicant can then appeal the examining attorney’s decision to the Trademark Trial and Appeal Board.

When a copyright registration application is rejected, the applicant can request the Copyright Office to review the application again and reconsider the rejection. If the Copyright Office issues another rejection after the first request for reconsideration, the applicant can then make a second request for reconsideration at the Copyright Office’s Board of Review. The Board’s decision is the final agency action.

Updated: September 12, 2019