Title: European Patent Law Update
1European Patent Law Update
- Presentation to the Houston Intellectual Property
Law Association
- Stephen Gill
- 24 January 2008
2Agenda
- EPC 2000
- The London Agreement
- EPO fees
3EPC 2000
4The EPC 2000
- Major EPC revision, completed in 2000.
- Very many changes, major and minor.
- Came into force on 13 December 2007.
- Some of the interesting changes
5Unity PCT regional phase
- Under EPC 1973 - where EPO found European
regional phase application lacked unity, the
applicant could request searches in respect of
any of the inventions identified. - Irrelevant who was ISA.
6Unity PCT regional phase
- Under EPC 2000 and EPO ISA
- No chance now to search unsearched non-unified
subject matter in EPO regional phase can only
elect subject matter of PCT search.
- If EP/ISA raises unity objection, consider
further searches in reply otherwise EP
divisional will be needed.
7Unity PCT regional phase
- Under EPC 2000 and USPTO (or KPO etc.) ISA
- Only the invention appearing first in the claims
at the time of the supplementary European search
can proceed.
- If EPO finds lack of unity, irrelevant that
US/ISA did not, and no warning.
- Think about reordering the claims when entering
the EP regional phase or in response to
Communication under Rule 161.
8Amendment after grant
- Under old system, after grant you could amend at
the EPO only in opposition proceedings.
- Self-opposition was forbidden by EPO.
- So, voluntary amendment not possible at EPO
must be at national patent offices.
- National amendments are often impossible or
difficult (different laws), and expensive to
carry out in multiple countries.
9Amendment after grant
- New procedure in EPC 2000 limitation or
revocation of a granted EP patent at the EPO is.
- Proprietor can apply to EPO to
- Amend the claims, or
- Revoke the patent.
- Examined only for compliance with
- Article 123(2) added matter
- Article 123(3) added scope
- Article 84 clarity
10Amendment after grant
- Main features of procedure
- No time limit life of patent.
- Not allowed if opposition exists opposition
always dominates.
- Ordinary examiners handle it.
- No need to state reasons for wanting the
amendment.
- National patent offices may require
translations/fees (as after an opposition), so
cost will still be significant.
- Amendment is effective for all designated states.
11Medical use claims
- New claim format for second medical uses.
- EPC 1973 Use of X in the manufacture of a
medicament for the treatment of disease Y.
- EPC 2000 X for use in the treatment of disease
Y
- Same format as 1st medical use claims, but
limited to a specific use, not use in methods of
treatment or diagnosis generally.
12Medical use claims
- Allows greater flexibility in claiming.
- More intelligible some courts dislike existing
second medical use claims.
- Applies to applications still pending when EPC
2000 came into force.
- Should be applicable to any new specific use
(dosing, routes, patient subgroup, etc.)
13Priority
- New right to add or correct priority claim up to
16 months from priority date (previously this was
done as correction, with extra requirements).
- Re-establishment of rights available in respect
of 12m priority period, for applications filed
within 2m of expiry of 12m period.
- High threshold
- Also newly possible to claim priority from
application in WTO but non-PC country (e.g.
Taiwan).
14Designations
- At time of filing EP application, all contracting
states deemed to be designated.
- But, at present, designations still subject to
payment of designation fees.
- Coming soon (1 April 2009), a flat rate
designation fee.
15Petition to Enlarged Board
- But only in cases where
- Fundamental violation of right to be heard or
fundamental procedural deficit, for example
- Oral proceedings not appointed.
- Failing to decide on request.
- Non-member of Boards of Appeal or member with
conflict of interest takes part.
- Criminal act may have affected decision.
16EPC 2000 Questions?
17London Agreement
18The London Agreement
- Agreement to reduce translation requirements at
grant of EP patent
- Optional system any EPC state can join
- Not all EPC states have joined the Agreement
19Present EP grant procedure
- The EPO issues the Communication under Rule 71(3)
(previously Rule 51(4)) allowing an EP
application.
- When the application is in English, the applicant
must then
- File translations of the claims into French and
German
- Pay grant fees
- This is unchanged under the London Agreement
20Present EP grant procedure
- After grant, necessary to file translation of
whole patent specification into an official
language of each EPC state in which the patent is
to take effect. - Time limit is normally 3 months from grant date.
- This can be an expensive step, if many countries
are selected, due to the cost of translations.
21EP grant procedure under the London Agreement
- The members of the Agreement agree not always to
require translation of a granted EP into their
national language.
- The procedure is unchanged in countries which
have not signed up to the Agreement.
22EP grant procedure under the London Agreement
- If a member state has an EPO language (English,
French, German) as a national language, they will
never require translation of the Patent.
- For example, Germany would accept validations of
EPs in French or English.
23EP grant procedure under the London Agreement
- If a member state (for example Denmark) does not
have an EPO language as a national language, they
will nominate at least one EPO language in which
they will accept validations of EPs. - For example Denmark will accept validations in
English, but not in French or German.
- Translations of the claims in to the national
language may be required.
24EP grant procedure under the London Agreement
- If all EPC states joined the agreement,
translation into French and German would be
sufficient for validation in all EPC
territories. - Not all states have yet joined.
25Translation definitely not required in
- UK
- France
- Germany
- Malta
- Ireland
- Luxembourg
- Monaco
- Switzerland
- Lichtenstein
26Translation of claims only into a national
language required in
- Sweden (English is nominated language)
- Denmark (English is nominated language)
- Iceland (probably English will be nominated
language)
- Netherlands (probably English will be nominated
language)
- Latvia (nominated language not known yet)
- Slovenia (nominated language not known yet)
27Translation into a national language will be
required in
- Italy
- Spain
- These countries have not signed up to the London
Agreement, and are not likely to do so in the
foreseeable future
28Translation into a national language may be
required in
- These countries have not yet signed up to the
London Agreement, and we do not know whether they
will do so
Turkey Lithuania Estonia Finland Norway Cypru
s
Greece Croatia
Austria Hungary Czech Republic Slovak Republic
Poland Romania Bulgaria Belgium
29Entry into force
- Exact date not yet known.
- Probably sometime in 2008.
- Any European patent that is granted after entry
into force of the Agreement will be affected.
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37Example - 1
- UK, France, Germany only
- Big saving.
- Translations of the granted patent into French
and German will not be needed.
38Example - 2
- UK, France, Germany, Belgium, Austria
- No saving.
- BE and AT are unlikely to join at day one and
will require translations of the granted patent
(into French and German, respectively).
39Example - 3
- UK, France, Germany, Sweden, Denmark
- Big saving.
- Translations of the granted patent not required.
- Only translation of the claims is required, into
Swedish and Danish.
40Example - 4
- All countries
- Saving is substantial but perhaps not a large
proportion of the total.
- Saving is by reduction from translation of the
granted patent to translation of claims alone for
SE, DK, IS, NL, LV and SI.
41Possible action now
- If the Rule 71(3)/ 51(4) communication has
recently been received, delaying grant might
allow cost saving, using the London Agreement.
- For example, use further processing of 71(3)/
51(4) time limit, for a small cost.
- And/or late pay renewal fee.
42London Agreement Questions?
43EPO Fees
44Changes in two tranches
- 1 April 2008 (binding on fees paid on or after
that date)
- Claims fees
- Designation fees
- Page fees
- Renewal fees
- 1 April 2009 (applies to applications and
regional phase entries filed on or after that
date)
- Claims fees
- Designation fees
- Page fees
45Claims fees
- From 1 April 2008
- 15 free claims instead of 10.
- Cost per claim over first 15 increasing from 45
to 200.
- From 1 April 2009
- 500 per claim over first 50
46Claims fees
- Examples
- 17 claims
- At present 10 (free) 7 (45) 315
- 1 April 2008 and 1 April 2009 15 (free) 2
(200) 400
- 30 claims
- At present 10 (free) 20 (45) 900
- 1 April 2008 and 1 April 2009 15 (free) 15
(200) 3,000
- 60 claims
- At present 10 (free) 50 (45) 2,250
- 1 April 2008 15 (free) 45 (200) 9,000
- 1 April 2009 15 (free) 35 (200) 10 (500)
12,000
47Designation fees
- From 1 April 2008
- Cost per designation increasing from 80 to 85.
- But still one fee per country up to seven.
- From 1 April 2009
- Flat rate of 500 for designating one or more
states
48Designation fees
- Examples
- All states
- At present 7 x 80 560
- 1 April 2008 7 x 85 595
- 1 April 2009 500
- 2 states
- At present 2 x 80 160
- 1 April 2008 7 x 85 170
- 1 April 2009 500
49Renewal fees
50Renewal fees
- and late payment surcharge increasing from 10
of relevant fee to 50 of fee
- So
- Late payment can be costly
- Delay payment of renewal due in 2008 in hope of
falling under London Agreement?
- Renewal fees can be paid up to one year in
advance, so consider paying early to avoid 18-56
fee increase.
51Page fees
- From 1 April 2008
- Cost per page of first 35 increasing from 11 to
12.
- From 1 April 2009
- Page fees move
- At present paid at allowance
- From 1 April 2009 paid on or shortly after filing
52EPO Fees Questions?
53MORE QUESTIONS? Stephen Gill stephen.g
ill_at_mewburn.com
Mewburn Ellis LLP York House, 23
Kingsway, London WC2B 6HP, UK Tel 44 20 7240
4405
Fax 44 20 7240 9339