European Patent Law Update

1
European Patent Law Update

• Presentation to the Houston Intellectual Property
  Law Association
  
• Stephen Gill
• 24 January 2008

2
Agenda

• EPC 2000
• The London Agreement
• EPO fees

3
EPC 2000
4
The 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

5
Unity 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.

6
Unity 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.

7
Unity 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.

8
Amendment 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.

9
Amendment 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

10
Amendment 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.

11
Medical 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.

12
Medical 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.)

13
Priority

• 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).

14
Designations

• 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.

15
Petition 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.

16
EPC 2000 Questions?
17
London Agreement
18
The 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

19
Present 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

20
Present 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.

21
EP 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.

22
EP 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.

23
EP 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.
  

24
EP 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.

25
Translation definitely not required in

• UK
• France
• Germany
• Malta
• Ireland
• Luxembourg
• Monaco
• Switzerland
• Lichtenstein

26
Translation 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)

27
Translation 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
  

28
Translation 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

29
Entry 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.

30
(No Transcript)
31
(No Transcript)
32
(No Transcript)
33
(No Transcript)
34
(No Transcript)
35
(No Transcript)
36
(No Transcript)
37
Example - 1

• UK, France, Germany only
• Big saving.
• Translations of the granted patent into French
  and German will not be needed.

38
Example - 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).
  

39
Example - 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.

40
Example - 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.

41
Possible 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.

42
London Agreement Questions?
43
EPO Fees
44
Changes 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

45
Claims 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

46
Claims 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

47
Designation 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
  

48
Designation 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

49
Renewal fees
50
Renewal 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.

51
Page 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

52
EPO Fees Questions?
53
MORE QUESTIONS? Stephen Gill stephen.g
ill_at_mewburn.com

Mewburn Ellis LLP York House, 23
Kingsway, London WC2B 6HP, UK Tel [phone]
4405
Fax [phone]