4) The patent application process via the EPC Flashcards
What are the advantages of the EPC?
Economy and efficiency
• A cost-effective and time-saving way of applying for patent protection in several different countries.
Unitary effects in the contracting states
• Term, scope of protection, binding text, grounds for revocation.
A ‘strong’ patent
• Every European patent has undergone substantive examination and can be obtained for countries which otherwise operate only a registration system
What are the requirements for a patent to be granted on an invention in the EPC?
- Art. 52(1): European patents shall be granted for any inventions, in all fields of technology, provided that they are:
- new
- involve an inventive step and
- are susceptible of industrial application.
What are not inventions in the EPC?
• Art. 52(2): The following are not inventions (as such):
a. discoveries, scientific theories and mathematical methods;
b. aesthetic creations;
c. schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
d. presentations of information.
What are the exceptions to patentability in the EPC?
• European patents shall not be granted in respect of:
• (a) inventions the commercial exploitation of which would be contrary to “ordre public” or morality; such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States;
• (b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof;
• (c) methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods.
[Art. 53]
What is the definition of novelty in the EPC?
- Art. 54(1): An invention shall be considered to be new if it does not form part of the state of the art.
- The definition of the state of the art in the EPC amounts to absolute novelty, i.e. the state of the art is held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing or priority date [Art. 54(2)].
What are non-prejudicial disclosures to novelty in the EPC?
• a disclosure of the invention shall not be taken into consideration if it occurred no earlier than six months preceding the filing (note not priority) of the European patent application and if it was due to, or in consequence of:
a) an evident abuse in relation to the applicant or his legal predecessor, or
b) display at an official, or officially recognised, international exhibition (must state this on filing)
What are the requirements under Art 54(3) EPC?
• Additionally, the content of European patent applications filed prior to the date of filing or priority date and published on or after that date is considered as comprised in the state of the art in respect of all Contracting States, regardless of designations or designation fees if the later application is FILED on/after 13 December 2007.
• Art 54(3) documents therefore have earlier priority and/or filing dates but have been published after the priority date of the application in suit.
• Also applies to divisional applications if the divisional application was received by the EPO on/after 13 December
2007; the date of filing is irrelevant hence Article 54(3) prior art may apply differently to the parent and the divisional application.
Under Art 54(3) EPC, what parts of an earlier application are prejudicial to novelty?
• The whole content of the earlier application as filed is prejudicial to novelty (and not just the claims). Excludes priority document or abstract.
Under Art 54(3) EPC, what is the content of the earlier application available for assessing?
• The content of the earlier application as disclosed is available for assessing novelty only and not inventive step of the later application (cf US).
Does Art 54(3) include national applications?
• Does not include national applications.
When is a Euro-PCT application Art 54(3) art?
- Euro-PCT application is Article 54(3) art if [R.165]:
- The filing fee to enter EP Regional Phase is paid [R. 159(1)(c)]; and
- The application or its translation into DE/EN/FR is published [R. 153(3)(4)].
What is the EPO’s approach to assessing inventive step?
• The EPO adopts the problem & solution approach to assessing inventive step.
What are the stages to the problem and solution approach?
• In the problem and solution approach there are three main stages:
i. determining the closest single piece of prior art;
ii. establishing the objective technical problem to be solved; and
iii. considering whether or not the claimed invention, starting from the closest prior art would have been obvious to the skilled person.
What are the requirements under Article 57 EPC?
An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture.
What are the requirements under Article 82 EPC?
- The European patent application must relate to a single invention only or to a group of inventions so linked as to form a single general inventive concept.
- If several inventions comply with this requirement, the patent application may contain several independent claims in the same category or, according to the circumstances, several independent claims in different categories.
- Lack of unity is not a ground of opposition.
What are the requirements under Article 83 EPC?
Sufficiency
The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.
Who can apply for a European patent?
- A company or an individual can apply for a European Patent. They will (at some point after filing) have to confirm that they own the invention to be granted a patent.
- If the company or individual does not have either a residence or a principal place of business in one of the member countries of the EPC, then they must be represented by a European Patent Attorney throughout the application procedure, except for the initial filing of the application.
Where can a European patent be filed?
a. at the EPO
b. if the law of a Contracting State so permits or prescribes, at the central industrial property office or other competent authorities in that Contracting State.
• However, divisional applications must be filed directly with the
EPO.
What language can a European patent be filed in?
• European patent applications may be filed in any language
• No definition of “language” is given in the EPC
• Translation into an EPO official language (English, French and
German) within two months of filing
• If not filed, the EPO invites applicant to file translation within two months under R.58
• Further processing excluded but Re-establishment possible
• Translation may be brought into conformity with the application as filed throughout proceedings before EPO
[Art. 14 (1)(2)]
What are the consequences of providing a translation into one of the EPO’s official languages?
- Official language chosen becomes the language of the proceedings. [Art. 14(3)]
- All amendments must be filed in that language. However, in written proceedings any party may use any official language of the EPO
What are the language requirements for applicants in a contracting state with a language other than English, French or German?
- Applicants in a Contracting State with a language other than English, French or German as an official language, and nationals of that State who are resident abroad may file documents which have to be filed within a time limit in a language of the Contracting State concerned. [Art. 14(4)]
- Must file translation within 1 month deadline or deemed not received
- Fee reduction. Applicants making use of Art. 14(4) when filing application are entitled to fee reduction [R. 6(3)]. However, since 1 April 2014, this is limited to SMEs, natural persons, non-profits, universities and public research organisations.
What must an application contain to be accorded a date of filing?
• To be accorded a date of filing, the application must contain [Art. 80/R. 40]:
a) Indication that a European patent is sought
b) Information identifying the applicant (email address/phone number)
c) Description or reference to a previously filed application.
What are the consequences of an application not meeting the requirements to be accorded a date of filing?
• If R.40(a)-(c) requirements are not met, filing date changes to date deficiencies remedied [R.55].
What aspects of an application are irrelevant as to being accorded at a date of filing?
• Note - the following are irrelevant for according a date of filing:
language of the application, claims, fees.