European Patent Office (EPO)


This past Thursday the Brexit vote sent shockwaves around world, including the IP community and in particular with respect to IP rights in the UK and Europe. But concerns at the moment are speculative as nothing yet has changed.

The UK has only voted on whether to leave the EU. The UK has not actually left the EU, nor is any such departure likely for at least two years from the date the UK officially notifies the EU of its plan to withdraw. Modifications to any IP laws will come only through terms of the Brexit negotiated between the UK and the EU in the coming months and years.

In the meantime, we can predict and highlight potential impacts that could result from a UK exit from the European Union.

Continue Reading Keep Calm and IP On: Planning for UK IP Post-Brexit

From 1 March 2015, a new agreement will come into force that allows European patents to be validated in Morocco. This is the first time that a non-member country of the European Patent Organisation will have recognised European patents as national patents. It takes the number of countries in which patent protection can be obtained with a single European patent application to 41.

A request for validation in Morocco will be automatically included in any European or international application filed from 1 March 2015. For the request to take effect, however, a validation fee of €240 must be paid to the European Patent Office within 6 months of the publication of the European search report or on expiry of the time limit for regional phase entry of an international application, which is the same period within which the designation and extension fees are due. Limited and costly remedies for late payment of the validation fee will be available.

Similar agreements are expected to enter into force in Tunisia and Moldova in the future, pending ratification by their respective national governments.

Authored by Jacqueline Ireland

Lack of clarity is not a ground for opposition before the EPO, but can be raised against amendments filed during the opposition proceedings.  In accordance with Article 101(3) EPC, any amendments made to a granted patent during opposition proceedings must meet the requirements of the European Patent Convention.

A new Enlarged Board of Appeal (EBA) referral asks whether an amendment made during EPO opposition proceedings can be challenged for lack of clarity if the amendment simply involves incorporating the feature of a granted dependent claim into the granted independent claim from which it depends.

Previously in T1855/07, the Board of Appeal declined to refer a question on this matter and held that a mere syntactical incorporation of a dependent claim into an independent claim cannot trigger a lack of clarity objection.

However, a few subsequent decisions, e.g., T459/09, have held that a substantial amendment, i.e., an amendment consisting of the incorporation of a technically meaningful feature into an independent claim, in principle, justifies an unrestricted exercise of the examination power derivable from A.101(3) EPC, irrespective of whether the amendment arises from the combination of a feature from the description with an independent claim, or from the literal combination of claims of the granted patent.

In the light of these conflicting decisions, in T0373/12 (concerning EP05851833.3) the Opponent requested a stay of proceedings to seek guidance from the EBA on this matter and submitted the following question:

“Does an amendment of an independent claim during opposition proceedings hinder the examination with regard to clarity (A.84EPC), if the amended claim is a combination of an independent claim as granted with the elements of a dependent claim as granted? (Contrary to the decisions T 459/09 and T 409/10).”

The Board of Appeal has allowed the referral.   However, the exact form of the referral question may be revised by the Technical Board of Appeal.

Authored by David Wraige.

In October 2013, we reported that the EPO had removed the time limits for filing divisional applications. An outstanding detail at that time was the level of the fees that would be levied for filing second or any subsequent generation divisional applications. Those fees, which are payable in addition to the filing fee, have now been announced:

  • Additional fee for a divisional application of second generation – €210
  • Additional fee for a divisional application of third generation – €420
  • Additional fee for a divisional application of fourth generation – €630
  • Additional fee for a divisional application of fifth or any subsequent generation – €840

It seems unlikely that these fees will put  applicants off since they already have to pay retrospective renewal fees for divisional applications, which will often swamp the new fees. It would nevertheless be worthwhile taking care to file new divisional applications based on the oldest generation earlier application that is still pending to minimise the fees due. The new fees will be payable from 1 April 2014.

Authored by Julian Crump.

The Patent Prosecution Highway (PPH) gives applicants the opportunity to accelerate the examination of their patent applications in multiple countries once they have received a favourable report in one country.  This is useful to inventors and businesses because it allows foreign patents to be granted sooner, and by having IP offices make use of the work products of other offices also yields cost savings and other efficiencies to the benefit of all stakeholders.  In January 2014, further improvements to the system will be launched in the form of the Global Patent Prosecution Highway (GPPH).

The first PPH agreements were bilateral, allowing favourable examination reports in the office of first filing to be employed in a second office to short-circuit the examination process.  Since 2006, 30 separate bilateral PPH arrangements have been implemented, resulting in a complex network of agreements that is sometimes called “The Spaghetti Bowl“.  The problems with these early PPH agreements is that they required an applicant to have a positive examination report in his office of first filing before he could accelerate processing in the office of second filing, which was not always possible, especially if the first application was withdrawn in favour of an international application under the PCT, and there were disparate formalities requirements under different agreements, leading to even greater complexity.  Subsequent developments were the PCT-PPH, allowing users to make use of a favourable international preliminary examination report in participating offices, and, most significantly, PPH 2.0 or “Mottainai” which allowed applicants to make use of any positive examination report – not just one from the office of first filing.

Continue Reading New Global Patent Prosecution Highways to Accelerate Examination of Patents

Authored by Isobel Finnie and Jennifer Karnakis.

On 4 December 2013, the High Court of Australia handed down a decision confirming that methods of medical treatment can fall within the scope of patentable subject-matter.

It is interesting to note that this is the first time that the High Court of Australia has explicitly considered this question.  Accordingly their consideration involved an extensive analysis of case law on what is excluded from being a manner of manufacture and hence excluded from patentability.

The conclusion is good news in the form of certainty for patent applicants and patentees in the healthcare sector.

While methods of medical treatment fall within the scope of patentable subject-matter in the United States, it remains the case that methods of medical treatment are not considered patentable subject-matter by the European Patent Office. Patent protection for such subject-matter in Europe should be sought via alternative claim types, such as first and second medical use claim formats.

Authored by Alison Haile

The European Patent Office (EPO) has announced rule changes that will provide applicants with the option to have additional searches carried out during the European regional phase of Euro-Patent Cooperation Treaty (PCT) applications.

In future, for any applications for which the EPO was not the International Searching Authority (ISA) and the supplementary European search report has not been drawn up by 1 November 2014, the EPO will issue an invitation to pay one or more additional search fees for the second and subsequent inventions identified by the examiner.  An additional search report will then be drawn up for those inventions for which an additional fee has been paid and the applicant will be allowed to select the invention to be prosecuted within the application.

This is a significant improvement on the current situation, in which the search report is only drawn up in relation to the invention first mentioned in the claims and the applicant is forced into pursuing this invention or filing costly divisional applications if the subsequently mentioned inventions are of more interest.  Applicants who have avoided using other ISAs, such as the United States Patent and Trademark Office (USPTO), for this reason may therefore now select the ISA of their choice without fear of restricting their future options in Europe. Continue Reading More EPO Rule Reversals – Additional Searches Available During European Regional Phase

Authored by David Wraige

News broke last week that the European Patent Office’s (EPO) Administrative Council has decided to remove the time limits for filing divisional applications.  As of 1 April 2014, applicants will be able to file divisional applications at any time whilst an application is pending at the EPO. Applicants need to be aware that this might change the way they choose to prosecute some of their applications – full details are in our advisory. There are still some details to be made available, which we will report in this blog when they are released.

Written by David Wraige

There is a general belief that it is not worth applying for patent protection for computer-implemented inventions and software in Europe because the legislation, at first glance, excludes computer programs and business methods from patentability. However, these sorts of exclusions have been modified over the last few years, in many cases allowing companies to seek meaningful patent protection for software both in Europe and the U.S.A.

Mintz Levin Attorneys Anne Campbell and David Wraige recently published an article on the changing patent landscape in Cleantech Business News. As Anne and David explain in “Computer-Implemented Inventions – Are They Patentable?”, many computer-implemented methods are now considered to be more than just a computer program under patent law and may therefore be patentable. To obtain patent protection in Europe, the invention must make a technical contribution to the world. In the cleantech industry for example, computer-implemented control of a solar panel could be patentable. More recently, software that results in an improvement in the efficiency of a computer system has been held to be patentable in the UK.