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European Patent Law Update

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Title: 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.

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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 44 20 7240
4405
Fax 44 20 7240 9339
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