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.
What are the requirements to obtain a filing date based on a reference to a previously filed application?
• To obtain a filing date based on a reference to a previously filed application, must provide on filing [R.40(2)]:
i. Filing date ii. Filing number of that application iii. Office where the application was filed iv. Indication that the reference replaces the description and any drawings
• Certified copy of previous application referred to and translation, if necessary must be filed within two months of filing. If not filed within two months, invitation to file within further two months
• Only able to refer to a single, previously filed application.
Are claims required to be filed to be accorded a date of filing?
• Claims are not necessary for according a date of filing but if no claims are present on filing the EPO will invite the applicant to file claims within 2 months.
What are the consequences if the claims are not present in the application as filed?
- Claims filed later may not contain added matter and must be in the language of the proceedings.
- Since claims usually form the broadest definition of the invention in the application, it is difficult to achieve a broad scope in late filed claims without adding matter. Thus late filing of claims should only be used in cases of emergency.
- Claims may be filed by reference to a previous application.
- Further claims cannot be added prior to search.
Discuss when claims fees are applicable?
- Any European patent application comprising more than 15 claims at the time of filing incurs payment of a claims fee in respect of each claim over and above that number. The claims fee is payable within one month after the filing of the application. [R.45 / Rfees2(1).15]
- If the claims fees have not been paid in due time they may still be validly paid within a non-extendable period of grace of one month of notification of a communication pointing out the failure to observe the time limit.
- If the fees are not paid within this period, the claims for which fees have not been paid are deemed to be abandoned and the applicant is notified to that effect.
- If the patent application contains more than 15 claims at the time of grant, the claims fees are payable at this stage if they have not already been paid. If payment is not made within the fixed period, the application is deemed to be withdrawn.
- This relates to claims fees paid on or after 1 April 2008. Claims 16-50 cost €235. Claim 51 and above cost €580 euro!
What is the purpose of the abstract?
- Merely serves for use as technical information.
- Not available as Article 54(3) prior art.
- Does not form part of application as filed. Thus cannot use for amending content of specification (Article 85, Article 123(2)).
Describe the process for designating states.
Designation of States
• All EPC contracting states at the time of filing deemed to be designated on filing. [Art. 79]
• Single Designation Fee (€580) covers all 38 contracting states. Fee due:
• within six months of the date on which the European Patent bulletin mentions the publication of the European Search Report (changed April 2009); or
• for Euro-PCT applications entering the European phase: 31 months from the date of filing (or the oldest priority date) or six months from the date of publication of the international search report, whichever is the latest.
• If not paid in time the designation is deemed to be withdrawn. No grace period but further processing available.
• The designation of a Contracting State may be withdrawn at any time up to the grant of the European patent.
How many contracting states are there?
• Since 1 October 2010 there are 38 Contracting States:
• Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany,
Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, former Yugoslav Republic of
Macedonia (renamed Republic of North Macedonia, Monaco, Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the UK.
What is an extension state?
- An extension state is not an EPO contracting state but is one which has entered into an extension agreement with the EPO. The agreement means that granted EPO patents can be made effective in that state.
- States having an Extension Agreement with the EPO are: Bosnia and Herzegovina, Montenegro.
Describe the process for extension states.
• Due date to pay the extension fee is the same as for the designation fee. If not paid, a 2 month grace period with 50% surcharge is available. The EPO will not issue a loss of rights communication for the extension fee. Therefore, unless the designation fee is not paid, further processing will not be available.
Describe what a validation state is and the process associated.
- It is possible to pay a validation fee to extend protection to Validation countries. After validation, will confer essentially the same protection as with the 38 Contracting States.
- Morocco since 1 March 2015.
- Moldova since 1 November 2015.
- Tunisia since 1 December 2017.
- Cambodia since 1 March 2018.
- Due date to pay the validation fee is the same as for the extension fee.
- See January 2016 EPO Official Journal for details of the procedure if needed.
When are fees due for a European patent application?
- Filing fee and search fee: due within one month of filing [R.38]. Application deemed withdrawn of not paid. Further processing available.
- Additional fee for more than 35 pages: due within one month of filing the application or the first claims (latest of) [R.38]. Application deemed withdrawn of not paid. Further processing available.
- Claim fee: due within one month of filing [R.45]. One month grace period from notification of failure to pay available.
- Designation fee and extension/validation fees: due within six months from the publication of the search report [R.39]. Further Processing available for designation fee. Grace period available for extension/validation fees.
- Divisional fee (for further divisionals): due within one month of filing divisional. Further processing available
How can a European patent application claim priority?
- Priority may be claimed for a European patent application by a person, or the successors in title of a person, who, in the twelve months prior to the filing of the European patent application, has filed an application for a patent or for the registration of a utility model or for a utility certificate in respect of the same invention, in or for any State party to the Paris Convention for the Protection of Industrial Property or any member of the WTO (for example, Taiwan).
- Priority may also be claimed from an earlier European or PCT application.
- In the event of failure to comply with the twelve-month time limit, re-establishment of rights may be filed. The request for reestablishment of rights for the priority period must be filed within two months of expiry of the unobserved time limit.
What is the process for a EP application to claim priority?
- The date and state or member in or for which the priority application was made and the file number should preferably be provided on filing.
- However, the declaration of priority can be made after filing within 16 months from the earliest priority date claimed, at the latest 4 months from the accorded date of filing.
- Correction of declaration of priority within the same time limit.
- A copy (paper or electronic) of the priority document must be filed by the end of the 16th month after the priority date and it must be certified.
- Note that a priority document is not required if the priority document is available to the EPO such as an earlier EP, JP, Korean, US, PCT filed at EPO or JPO or in the case of a divisional.
- A translation of the priority document is only needed when it is necessary for assessing patentability.
What is partial priority?
- G1/15 “Partial Priority”
- The question referred sought, in particular, to clarify how Art 88(2) second sentence is to be applied in light of G2/98 in cases where a claim encompasses, without spelling out, alternative subject matter having all of the features of the claim (known as generic “OR” claim) and whether parent and divisional applications may be prior art under Art 54(3) against one another in respect of subject matter disclosed in a priority application but not entitled to priority.
- The decision confirmed that individual claims can be entitled to multiple priority dates. In particular, the Enlarged Board held that a “generic ‘OR’-claim”, which encompasses alternative subject matter using a generic term, may not be refused priority, provided that the alternative subject matter has been directly, at least implicitly, and unambiguously disclosed in the priority document.
What is the process for designating an inventor?
- If the applicant is not the inventor or is not the sole inventor then a form for designation of the inventor must be provided.
- Can be filed up to 16 months from priority date (or filing date if no priority is claimed). If the deficiencies are not remedied in due time, the application is refused. Further processing is available for the 16-month period. The period is deemed to have been observed if the deficiency has been remedied before the completion of the technical preparations for publication of the application.
• Note: since 1 April 2021, inventors do not need to indicate their full address but only the
country and place of residence.
When can divisional applications be filed?
- Usually filed to manage unity objection.
- A divisional application can be filed as soon as the parent application is pending and for as long as the parent application is still pending (i.e. until up to but not including the publication by the EPO of the mention of grant in the European Patent Bulletin, i.e. day before grant).
- A divisional can be filed during Appeal proceedings following refusal of an application by an Examination Division because the appeal has suspensive effect. Following G1/09, it is also OK to file a divisional within the 2-month time limit for filing a notice of appeal following such a refusal, even if no appeal is filed.
- R.14 prevents the filing of a divisional if the proceedings for the parent application are stayed (pending entitlement proceedings).
- The parent and divisional applications may not claim the same subject matter, in order to avoid double-patenting (although there is conflicting case-law on this issue).
From 1st April 2014, the 24 month divisional time limit no longer applies – the applicant may file a divisional application relating to any pending earlier EP application.
• The amended R.36 applies to all divisional applications filed on/after 1 April 2014, hence it is possible to file divisional applications in respect of pending EP applications even where the time limit for filing such an application had expired under the previous rule.
Describe the fees associated with a divisional application?
- An additional fee forming part of the filing fee is payable for divisional applications filed in respect of any earlier application which is itself a divisional application, i.e. for divisional applications of second or subsequent generations. The amounts of the additional fee are as follows:
- for a divisional application of the second generation: EUR 210
- for a divisional application of the third generation: EUR 420
- for a divisional application of the fourth generation: EUR 630
- for the fifth and any subsequent generation: EUR 840
What are the requirements for a divisional application?
- Must be filed directly at the EPO (Hague or Munich) and not at national patent offices.
- Application cannot contain subject matter not present in the parent application.
- The filing, search and claims fees are due within 1 month of filing. Designation and examination fees are due within 6 months of the date of publication of the search report of the divisional.
- The application (or the translation thereof) must be filed in the language of the proceedings of the parent.
- The application may be filed by reference to an earlier application.
- Claims may be filed after the date of receipt of the divisional application, within 2 months of an invite to do so.
- The divisional takes the same date of filing and, where applicable, priority date as the earlier application.
Describe the formalities examination.
- Examination as to formal requirements is conducted once a date of filing has been given.
- Where the Receiving Section notes that there are deficiencies which may be corrected it will give the applicant an opportunity to do so.
- If the applicant does not remedy the deficiencies, the application is refused. Further processing is NOT available. [Art. 90]
Describe the process associated when an application is considered to contain a plurality of independent claims.
- Before the search, the Search Division will review the claims.
- If there is a plurality of independent claims in each category not in compliance with certain exemptions (interrelated products, different uses of a product, alternative solutions to a problem), an invite to indicate within 2 months the claims to be searched may be sent [R. 62a].
- Alternatively or in addition, the EPO may choose to raise an objection of lack of unity (see later).
- Cannot amend claims in response to R.62a invite, but can argue and file main and auxiliary requests.
- If no reply is received, Search Division will search the first independent claim in each category.
- During Examination, the claims must be restricted to the subject matter searched [R.137(5)] unless it can be shown that the objection was not justified.
Describe the process of an incomplete search.
- If the Search Division decides it is impossible to carry out a meaningful search on the basis of some or all of the subject matter claimed, an invite to indicate within 2 months the subject matter to be searched will be sent [R.63]
- Cannot amend claims in response but can argue.
- If no reply is received or reply considered inadequate, Search Division will perform partial search if possible, or issue a reasoned declaration as to why no search is possible.
- During Examination, the claims must be restricted to the subject matter searched unless it can be shown that the objection was not justified.
Describe the process if the EPO considers that the application does not comply with unity requirements.
- If the EPO considers that the application does not comply with the unity requirements it will draw up a partial search report in relation to the invention first mentioned in the claims.
- The applicant will be invited to pay further search fee(s) within 2 months to get the remaining invention(s) searched.
- Subject matter which has not been searched must be removed from the application but can be pursued in a divisional application.
- If it is subsequently found that subject matter for which a further search has been carried out was unified then the further search fee will be refunded.
What is the extended European search report?
- The extended European search report (EESR) is prepared and sent to the applicant. It contains the European search report, the search opinion and a copy of any cited documents.
- If the Search Division considers that the European patent application does not comply with the requirement as to unity of invention, it will draw up a European search report on those parts of the application which relate to the invention first mentioned in the claims. For direct EP applications, it informs the applicant that if the search report is to cover the other inventions a further search fee must be paid for each invention concerned within the specified period. The opinion of the search division cannot be contested until the examination stage when it is then possible to submit arguments for unity to the Examiner.
What do the symbols in a European search report indicate?
- The main symbols used to indicate the relevance of documents:
- A - merely serves to show the technical background of the invention (i.e. not prejudicial to novelty or inventive step).
- X - of particular relevance to novelty or inventive step when the document is considered alone.
- Y - of particular relevance to inventive step when the document is considered in combination with one of the other documents cited in the search report.
- D - document cited in the specification.
- P - document published in the interval between the priority date and the filing date.
- Documents may be assigned one or more letter, e.g. a document can be both an A and D document.
What is the search opinion and when must it be responded to?
• The EPO issues a non-binding opinion at the same time as the search report (unless the applicant has requested examination before the search report has issued and waived his right to indicate whether or not he wishes to proceed with the application).
• The opinion is in effect a first examination report, which if negative must be responded to (for direct EP):
• within 6 months of the publication of the search report; or
• if a request for examination has been filed before the transmittal of the search report, within 6 months of an invite to respond, in which the applicant is also requested to indicate whether they wish to proceed further with the application.
• If no response is filed, the application is deemed withdrawn.
Further processing is available as a remedy.
What is the process regarding prior search results?
• Since 1 January 2011, applicants must provide a copy of the results of any search that was carried out on a priority application when filing a convention European application or when entering the regional phase in Europe [R.141 / 70b]. The search results may also be provided within 2 months of an invite to do so under R.141(3).
• However, under R.141(2), applicant is exempt from this requirement if priority filing is from: Austria, Denmark, Spain (since 1 June 2016), Spain (since 1 June 2016), Switzerland (since 1 Aug 2019), China
(since 1 July 2021), Sweden (since 1 July 2021), Japan, Korea, the UK or the US, or if the EPO carried out the search.
• The R.141(2) list of exemptions will likely be expanded.
Describe the publication of an EP application.
- Published as soon as possible after the expiry of a period of eighteen months from the date of filing or from the earliest date of priority.
- The European patent application will not be published if it has been finally refused or withdrawn or deemed to be withdrawn before the termination of the technical preparations for publication.
- Preparations are deemed to have been completed five weeks before expiry of the eighteenth month following the date of filing or, if priority is claimed, following the date of priority.
- The file relating to the application is available for public inspection as from the date of publication of the European patent application.
What is the request for examination?
- The request for examination can be filed by the applicant up to the end of a period of six months after the date on which the European Patent Bulletin mentions the publication of the European search report. [Art. 94, R.70]
- The request will not be deemed to be filed until after the examination fee has been paid.
- If the written request for examination is not filed and/or the examination fee is not paid within the above-mentioned time limit, the application is deemed withdrawn. Further processing may be used as a remedy.
What is examination of an EP application?
- After the request for examination has been made, the EPO examines in the light of the search report and the response to the written opinion.
- Determines whether the application meets the requirements of the EPC, and in particular whether the invention is patentable.
- If a non-unity objections was raised during the search, this finding will be reviewed at the examination stage. The finding can be contested by submitting arguments for unity to the Examiner.
What is the effect of search on examination?
- Subject matter that was not searched is not examined.
- Claims must be limited to the searched invention. Amended claims may not relate to unsearched subject matter which does not combine with the searched invention to form a single inventive concept.
- In addition, for applications on which the search report was issued after 1 April 2010, amended claims may not relate to subject matter not searched in accordance with R.62a (plurality of independent claims) or R.63 (unsearchable subject matter)
• 2020 - The Examining division can now refuse an application if it considers that the
biological material in a deposit insufficiently discloses the subject of the invention.
What is the process if the examiner has any objections to the application during examination?
- If there are any objections to the application the examiner responsible within the Examining Division invites the applicant to file his observations and, where appropriate, to amend the description, the claims and the drawings.
- The applicant is given a period of between 2 and 4 months in which to reply. This is extendible as of right by a further 2 months. Further extensions may be available at the discretion of the Examining Division and further processing is available as a remedy.
- It is good practice to request oral proceedings as a precaution when responding to an Examination Report to avoid the application being refused.
When can amendments be made to a EP application?
- Before receiving the European search report the applicant may not amend the description, claims or drawings.
- After receiving the European search report the applicant may of his own volition amend the description, claims and drawings at the same time as replying to the opinion accompanying the European search report (for direct EPs).
- The deadline for replying is 6 months from the publication of the (supplementary) European search report or 6 months from the invite respectively. If no reply is made the application is deemed withdrawn; further processing is available as a remedy.
- Exceptionally, where no search opinion is issued (e.g. where the applicant has requested examination before the search report has issued and waived his right to indicate whether or not he wishes to proceed with the application), the applicant may of his own volition amend the description, claims and drawings in reply to the first communication from the Examining Division.
- In all cases, further amendment can only be made if the Examining Division gives its consent.
When can errors be corrected in a EP application?
- Linguistic errors, errors of transcription and mistakes in any document with the European Patent Office may be corrected on request. However if the request for such correction concerns a description, claims or drawings, the correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction.
- All documents filed at the EPO can be corrected, i.e. all documents of the application and those filed during opposition. Not correctable are acts or missing acts, such as payments.
- [R.139]
What is PACE?
• PACE (Programme for Accelerated Prosecution of European Patent Applications). Applicant can request PACE: no reason needed and no extra fee
• Applicant must deal with all issues on time to remain under PACE(so cannot request extensions)
• From 1 January 2016, PACE has been revised affecting both new and existing requests. Major changes:
• Can only request PACE once for search and once for examination
• Application is removed from PACE if renewal not paid on time
(cannot use 6 month grace period)
• PACE must be requested on EPO Form 1005 (not as request in the body of a letter)
• If PACE used for Search, it must be re-requested during Examination
• Applicants cannot use PACE for all of their cases
What is the process associated with allowance (R 71(3))?
• The Examining Division first informs the applicant of the text
(the Druckexemplar text) in which it intends to grant the European patent, requesting him to indicate his approval within four months.
• The 71(3) text is the authentic text of the European Patent so it is important to confirm that the text is correct. G1/10 confirmed it is not possible to correct the text after grant.
• The period for response is non-extendible – further processing must be used to extend the four month deadline.
What is the process once an applicant approves the text proposed for grant?
- When the applicant approves the text proposed for grant he must provide translations of the claims into the two other official EPO languages (e.g. into French and German).
- Grant and printing fees must be paid within the four month period set by the rule 71 (3) communication.
- Excess claims fees and excess pages fees may also be due at this point and must be paid.
- If a renewal fee or the designation fee is due after the rule 71(3) communication but before the expected date of publication of the mention of the grant of the European patent, this is drawn to the applicant’s attention and grant shall not occur until the respective fees have been paid (Rule 71a EPC).
What is the process if the application wishes to amend the application proposed for grant?
- If the applicant wishes to amend the claims, description or drawings proposed for grant he may (instead of paying the fees and filing claim translations) file reasoned amendments or corrections.
- If the Examining Division does not approve the amendments or corrections, it shall resume the examination proceedings.
- If the Examining Division approves the amendments or corrections, a new communication under Rule 71(3) will be issued.
- From 1 July 2015, the EPO has initiated a new waiver process whereby if the applicant expressly waives the right to receive a further 71(3) and completes the grant procedure (files claim translations; pays the fees for grant, publishing and claim fees (if applicable); and provides a marked up copy from the application as filed) then the EPO directly proceed to grant without issuing a further 71(3). MUST be careful to ensure text is correct as no later opportunity to change and EPO will make no changes of its own volition.
o Since 1 July 2020 – the waiver has
Describe the grant process.
- Once R71(3) text has been accepted, the EPO send a communication giving date of grant.
- Grant takes effect on the date on which the European Patent Bulletin mentions the grant.
- This also sets the deadline for filing a divisional.
- The time period for publication of the mention of the grant in the European Patent Bulletin has been reduced from six weeks to four weeks (OJ 2006, 409) after issue of the decision to grant. At the same time as it publishes the mention of the grant the EPO publishes a specification of the European patent containing the description, claims and any drawings.
Describe the validation process.
- The patent must be “validated” in whichever of the designated (and extension) countries are required by the patentee.
- In the event of failure to observe the relevant national provisions, the European patent will be deemed to be void ab initio for the country(ies) concerned.
- Since the introduction of the London Agreement, in countries in which the agreement has entered into force it is no longer necessary to prepare a translation of the entire patent specification into an official language of that country.
What are the effects of the London Agreement
The London Agreement distinguishes between (1) states having an official language in common with one of the official languages of the EPO (English, French and German) and (2) states having no official language in common with one of the official languages of the EPO. There are 21 States in the London Agreement.
What are the national translation requirements for states having an official language in common with one of the official languages of the EPO?
- States having an official language in common with one of the official languages of the EPO dispense with translation requirements. This provision currently applies to the following
states: France, Germany, Ireland, Liechtenstein, Luxembourg, Monaco, Switzerland and UK.
What are the national translation requirements for states that do not have an official language in common with one of the official languages of the EPO?
- States which do not have an official language in common with one of the official languages of the EPO may require that a translation of the claims into one of their official languages be supplied.
Describe the process of renewal fees.
- Need to be paid while the application is pending, to keep it alive.
- The first renewal fee is due two years after filing the European Patent Application, and subsequent renewal fees are due annually.
- Renewal fees in respect of the coming year are due on the last day of the month containing the anniversary of the date of filing of the European patent application.
- In the case of a divisional filed more than 2 years after the parent is filed, the “back renewal” fees fall due when the divisional application is filed (or within 6 month late payment period with a fee). They may be paid within 4 months from filing the divisional without payment of additional late fees.
When can renewal fees be paid?
• Payment can be validly made within six months following the due date provided that an additional fee of 50% of the amount of the normal fee is paid within the same period. If the renewal fee has not been paid in due time, the application is deemed to be withdrawn. Payment is also due on the last day of the month. Re-instatement after failure to pay renewal fees now starts after the 6 month grace period.
When is the last renewal fee payable?
• The last renewal fee payable in respect of a European patent application is that for the year in which the mention of the grant of the patent is published. Renewal fees for subsequent years during the term of the European patent must be paid to the national industrial property office of each designated State.
Describe the protection conferred by a EP application.
- A European patent may be regarded as a bundle of national patents.
- A European Patent gives its owner the same rights as a national patent in each country for which it is granted.
- If the subject matter of the European patent is a process, the protection conferred by it extends to the products directly obtained by that process.
- Any infringement of a European patent is dealt with by national law.
- Once the European Patent has been granted, it effectively splits into a group of separate national patent rights. Annual renewal fees will need to be paid in each chosen country to keep the national patent right in force.
Describe provisional protection associated with a EP.
- In most countries, can only claim damages once the patent has granted however for all countries can claim damages in respect of acts performed after publication but before grant.
- Before the European patent is granted, the applicant wishing to benefit in the designated States from the provisional protection conferred for the period between publication of the application and grant of the European patent must file a translation solely of the claims in the application with the national Offices of the relevant Contracting States (alternatively can send suspected infringer a copy of the claims).
- All the Contracting States and extension States require a translation of the claims as a condition of provisional protection.
- For damages to be obtained in respect of acts performed before grant of the patent the alleged infringing acts must be claimed in the application as published and in the patent as granted.
What is the term of a EP?
• The term of the European patent is twenty years as from the date of filing (not priority) of the application (subject of course to payment of renewal fees).
• Divisionals: term of protection is twenty years from the date of filing of the parent.
• Note in most EPC countries supplementary protection certificates (SPCs) can be obtained which provide up to 5 years additional protection for patented products
(pharmaceutical and agricultural products) which have been delayed from coming to the market because of delays in obtaining regulatory approval; note that this is not a patent term extension - the term of the patent is not extended; rather the period of protection for the product (and closely similar products) which is/are the subject of the regulatory delay is extended.
Describe third party observations. Who, how, language, fees, requirements etc.
- Can be filed by any person once the application has published but before the final decision closing proceedings.
- Can also be filed during limitation proceedings.
- Can submit anonymously and in any one of the 3 official languages.
- No fee needed.
- Observations must be in writing and state the ground/reasons on which they are based.
- Do not become party to the proceedings - therefore to find out what effect your observations have had will need to inspect the file - if desired could then file further third party observations.
- Comments should be limited to the patentability of the invention (novelty, inventive step) but in practice can also include comments on, say, clarity and support.
What is the 10 day rule and how can it be applied to an examination report?
- A time limit based on the notification of a letter starts on the day following the date of receipt of the letter [R.131(2)].
- The date stamped on the document to be notified is the date of dispatch. Hence, the fictitious date of delivery, being the date of notification, is the date of dispatch plus 10 days.
- Thus, when you receive an examination report setting a 4 month period for responding, the period runs from the date stamped on the communication plus 10 days plus the 4 months (note the 10 days should be added before the 4 months as otherwise a different date can be calculated).
- When time limit expires on a non-working day (e.g. weekend or official EPO holiday), time limit is extended to next working day [R.134(1)].
- From 1 April 2015, expanded to include electronic communications.
What post service can be used?
• From 1 April 2015, Rule 126(1) was amended to read:
“Decisions incurring a period for appeal or a petition for review, summonses and other such documents as determined by the President of the European Patent Office shall be notified by registered letter with advice of delivery or equivalent. All other notifications by postal services shall be by registered letter”
• This was changed to enable the EPO to select the postal service it used (for example UPS rather than a national postal service).
• Discussed in G1/14.
What is further processing and when can it be used?
- If an applicant fails to observe a time limit vis-à-vis the EPO, he may request further processing of the EP application.
- Can be used when there is a total or partial loss of rights
- Covers all time limits (also when the time limit is defined in the EPC and is not set by the EPO), except those listed in Art. 121 (4) and R. 135 (2).
- Further processing is not available post grant: e.g. in opposition and appeal proceedings following oppositions (as previously).
- Further processing is thus the standard legal remedy for applicants.
What are the requirements for using further processing?
- Request: Further processing shall be requested by payment of the prescribed fee.
- No reasoned statement required.
- Period for making the request: 2 months of the communication concerning either the failure to observe a time limit or a loss of rights.
- Completion of the omitted act (within the period for making the request for FP).
- Further processing is available as of right, in contrast to reestablishment.
What are the fees for further processing?
- Fee for further processing
- in the event of late payment of a fee 50% of the relevant fee
- in the event of late performance of the acts required under R.71(3), 250
- other cases, 250
- Examples
- R 71(3): fees for grant and printing, translation of the claims
- “other cases”: performance of acts
What is re-establishment and when will it be granted?
- Only rarely used - it is really a last resort.
- An application for re-establishment of rights can be filed by the applicant or the proprietor of the patent. Exceptionally, an appellant already known as opponent may apply for reestablishment for filing the grounds of appeal within the 4 month time limit.
- Re-establishment will only be granted if he was unable to observe the time limit in spite of all due care required by the circumstances.
- If the applicant acts through a professional representative, the application for re-establishment of rights can only be granted if the latter has taken the care required of the applicant under Article 122(1)
When is re-establishment available?
- The scope of the remedy of re-establishment has been reduced and is excluded for all time limits for which further processing is available.
- The remedy of re-establishment is excluded for the time limit for requesting re-establishment of rights but not excluded for the period for filing a request for further processing.
- Re-establishment is available in respect of the priority period.
- New calculation of time limit for re-establishment for renewal fees (Article 86, Rule 51 EPC 2000). In the case of non-payment of a renewal fee, the one year period is calculated from expiry of the period of grace. Previously in the case of non-payment of a renewal fee, the 6 month grace period was deducted from the period of one year.
When should re-establishment be filed?
- The application for re-establishment of rights must be filed in writing within two months from the removal of the cause of non-compliance with the time limit (e.g. two months after one became aware of missed deadline). The omitted act must be completed within this period. The application is only admissible within the year immediately following the expiry of the unobserved time limit.
- Note: specific (shortened) time limit for requesting reestablishment in Art.87(1), and in Art.112a(4) 4: two months of expiry of that period.
What are the requirements of re-establishment?
- The application must state the grounds on which it is based, and must set out the facts on which it relies. It is not deemed to be filed until after the fee for re-establishment of rights has been paid.
- Re-establishment, unlike further processing, is not retroactive and thus persons who begin in good faith to do an act/prepare to do an act between the loss of rights and publication of the re-establishment of rights get intervening user rights.
What are the grounds for introducing central limitation?
- Policy grounds for introduction
- Central review of EPs previously available only in opposition
- “Self-opposition” by patent proprietor not allowed.
- National limitation proceedings differ / not available in all Contracting States.
What is the purpose of limitation (and revocation) proceedings?
• Purpose of Limitation (and Revocation) proceedings
• Avoid disputes over validity of EP; Restore validity of patent where prior art emerges
• Enhance legal certainty
• Provide procedures which are simple, rapid and efficient
• May be requested for any EP regardless of date of filing or grant,
i.e. even if already granted at date of entry into force of EPC 2000
What are the requirements associated with limitation and revocation proceedings?
- Entitlement: Requester must be EP proprietor
- Request filed at EPO any time after grant
- Even after EP has lapsed
- No requirement to show legitimate interest
- No pending opposition
What is the precedence of pending opposition when request for limitation filed?
- Request for limitation deemed not to have been filed
* Limitation fee refunded
What is the precedence when limitation proceedings are pending when opposition is filed?
- Limitation Proceedings terminated
* Limitation fee, and if paid, printing fee refunded
What is the precedence between national proceedings and limitation proceedings?
• No precedence over national proceedings
• Suspension of national proceedings depends on national law
• To the extent that central Limitation Proceedings narrows EP further than national decision, Limitation Proceedings prevail.
• To the extent that national decision defines narrower protection,
Limitation Proceedings version of EP overridden for that State
What are the requirements for filing a request for limitation or revocation?
- Request in writing indicating whether revocation or limitation is sought.
- Particulars of Requester and where >1 proprietor, evidence that requestor is entitled to act on behalf of others
- EP Number
- List of Contracting States in which EP has taken effect (even if lapsed)
- Complete version of amended claims (+ description + drawings if also amended)
- Particulars of representative if appointed
- Limitation fee paid: 1155 €. Fee reduction if filed in admissible non-EPO language
What is the process if a formalities officer considers a request for limitation or revocation proceedings to be deficient?
- If there are deficiencies in the request a formalities officer invites Requester to correct deficiencies within specified period.
- If deficiencies not remedied in due time a reasoned decision rejecting request as inadmissible is notified to requester. Reestablishment of rights is available or a new request may be filed.
- The Examining Division examines whether the amended claims constitute a limitation of granted claims i.e. a reduction in extent of protection conferred.
- The Examining Division also examines whether the amended claims comply with the requirements of Articles 84 and 123(2) and (3) EPC.
- Requester may state why request allowable or explain purpose of amendment; not required but may be helpful.
- No examination of whether Residual subject-matter is patentable under Arts. 52-57 or whether the Objective of the amendment is actually achieved.
- The intent is to provide a speedy procedure with maximum legal certainty.
- If deficiencies, Examiner must give ONE opportunity to correct. The time limit is usually 2 months and is extendable under exceptional circumstances.
- Any request for oral proceedings must be granted if request for limitation not allowable.
In limitation or revocation proceedings, describe the process associated when a decision has been made.
- If request is allowable, decision to limit EP is communicated to the requester.
- Within 3 months, requester must pay prescribed printing fee and file translation of amended claims into 2 other official languages.
- If failure to comply in due time: 2-month grace period with payment of 120 € surcharge.
- If failure to file translations or pay fee(s) the request is rejected.
In limitation or revocation proceedings, describe the effect when a decision has been made.
- General principle: one amended version of patent applying to all Contracting States for which granted.
- EP is deemed to have conferred the scope of protection as limited ab initio.
- Limitation of EP takes effect upon publication of mention of decision on limitation in European Patent Bulletin.
Describe the requirements and contents of a request for revocation.
- Requirements of request
- same requirements as for request for limitation. Deemed not to be filed until revocation fee paid (520 €).
- Contents of request
- same requirements as for request for limitation
Describe the procedure of revocation.
- Procedure
- confined to determination of admissibility of request.
- Procedure
- If request admissible, EP revoked by Examining Division. The Decision is notified to Requester and entered into Register. The Decision takes effect on date published in EP Bulletin.
What is the effect of the decision to revoke a EP?
- Effect of decision
- The EP is revoked for all Contracting States in which granted. The effect is ab initio. Precedence over opposition procedure filed later: if EP revoked, opposition terminated.
What are the consequences to revocation or limitation if opposition is pending?
- If patentee wishes to obtain limitation, the patentee should defend the limited patent as main request (the amendment must be occasioned by a ground for opposition).
- To obtain revocation, the patentee should declare that it no longer approves the text as granted; the patent will be revoked.
What are the timings associated with opposition?
- Opposition must be filed within nine months following the mention of grant of the patent in the European Patent Bulletin.
- Must be filed at the EPO
- 9 months is not extensible & cannot use further processing or re-establishment.
- Notice of opposition is not deemed to have been filed until the opposition fee has been paid.
Who can file opposition?
• An opposition can be filed by any person except the patentee
(legal or natural), including (according to a decision of the Enlarged Board of Appeal) a nominal opponent (“a straw man”), thus allowing the true identity of an opponent to be concealed.
• However, such a procedure must not be such as to conceal opposition by the patentee himself (self-opposition is not allowed), or improper representation before the EPO.
• Enlarged Board decision limited ability of opponents to transfer opponent status to different entities.
What are the requirements for filing opposition?
- In addition to providing details of the opponent and patent to be opposed, the Notice of Opposition must state [R.76]:
- The extent of opposition (which claims are to be opposed) and the grounds of opposition, and must indicate the evidence (e.g., prior art), facts and arguments upon which the opposition is based.
- Otherwise the notice of opposition is rejected as inadmissible.
- The opposition should be in EN, FR or DE, or in another European language if a translation is subsequently filed.
What are the grounds for opposition?
• Opposition can only be filed on the grounds that:
1. the subject-matter of the patent is not patentable within the terms of Article 52 to 57; (prohibited subject matter; novelty and inventive step; industrial applicability)
2. the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.
3. the subject-matter of the European patent extends beyond the content of the application as filed.
• i.e. patentability, sufficiency, and added subject matter (not unity).
• G3/14 – issued 24 March 2015
• Article 84 is not a ground of Opposition – i.e: ‘the claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description’.
• However, G3/14 has confirmed that any amendments filed by the patentee during the opposition proceedings may be examined for compliance with Article 84 only when, and then only to the extent that, the amendment introduces non-compliance with Article 84.
Describe the procedure for opposition.
• As of 1 July 2016, the EPO has introduced streamlined opposition procedures with the aim of speeding up decisions. The new procedures has been flagged in red text and see the May Official Journal for a detailed summary of the procedure: http://www.epo.org/law-practice/legal-texts/officialjournal/2016/05.html
• As soon as the EPO receives the notice of opposition it is communicated to the proprietor of the patent and the opposition is examined for admissibility.
• If defects are found the Opponent is invited to correct them
(where correctable). Major defects if not corrected within the Opposition period will lead to rejection of the opposition as inadmissible.
• Where there are multiple oppositions, proceedings are consolidated.
• The proprietor of the patent is invited to file his observations and to file amendments, where appropriate, within a period of 4 months. The deadline may be extended by a further 2 months by exception only (previously the deadline was fixed by the EPO at 4 months but one or more extensions in 2 month chunks were generally acceptable).
• The deadline is not fatal as not filing any observations does not automatically result in revocation of the patent. (The EPO will, in any event, examine the opposition of their own motion and come to a decision on the basis of whatever the opponent and the patentee themselves submit from the filing of the opposition onwards).
• The patentee’s observations are then communicated to the opponent. The opponent is not given a formal opportunity to file further comments but the opponent is allowed to respond on its own initiative.
When do oral proceedings occur?
- The opposition division is not obliged to consider all the grounds for opposition.
- The EPO then issues a preliminary and non-binding opinion.
- If oral proceedings have been requested by either or both parties (which happens in the vast majority of cases), or on the EPOs own motion, the EPO will set a date for oral proceedings giving at least 6 months notice.
- Final submissions (and filing amendments) will be due 2 months before the hearing. New documents or amendments are only admitted with extreme reluctance after this date.
What is the process for oral proceedings?
- The oral proceedings will be in the language of prosecution of the patent but free, simultaneous interpretation between this and the other two official languages will be provided if requested by one of the parties beforehand.
- A decision will almost always be reached and given at the hearing, with the official written decision issuing (usually from one to six months) afterwards.
- The decision will either revoke the patent, uphold the patent, or uphold the patent in amended form (note that although amendments can be made during the opposition proceedings, the scope of the claims cannot be broadened after grant).
Describe what happens when a decision is made at oral proceedings.
- If a decision is made to maintain the patent in amended form, the EPO informs the parties of the text it intends to maintain and invites them to file comments within two months if they disapprove of that text [Rule 82(1)].
- From 1 May 2016 rule 82(2) has been amended so that the authentic text of the patent as amended will be the text filed during oral proceedings even if the proprietor is unable to provide formally correct documents at that moment. As such, the EPO can rely on handwritten amendments made during Oral Proceedings as the authentic text.
- In this circumstance, the formally compliant amended text can be supplied at the same time as the other formal 82(2) requirements.
- Any party adversely affected by the decision of the Opposition Division may file a notice and ground of appeal, due within an inextensible period of two months and four months respectively from the date of the written decision.
- The appeal follows a similar procedure to the opposition.
- Any party which doesn’t appeal is automatically party to the appeal.
- The appeal is terminated by a decision, which can be to: (a) remit to the Opposition Division (who are bound by the Appeal Board Decision as far it goes); (b) revoke the patent; (c) uphold the patent; (d) uphold the patent in amended form.
- No further appeal is possible, but a sideways reference on an important and contentious point of law to the Enlarged Board of Appeal can be ordered by the Board (but not by the parties) and in exceptional circumstances it may be possible to petition for a review of the decision by the Enlarged Board of Appeal (see later).
When can appeal occur?
- Can appeal from decisions of the Receiving Section, Examining Divisions, Opposition Divisions and the Legal Division.
- Cannot appeal from decisions of the Search Division.
What effect do appeals have?
• Appeals have suspensive effect. This means that decisions may not yet become final and their effects are suspended.
What are the deadlines associated with appeals?
• Notice of appeal must be filed in writing within two months after the date of notification of the decision appealed from. It is not deemed to have been filed until after the fee for appeal has been paid.
• Within four months after the date of notification of the decision, a written statement setting out the grounds of appeal must be filed.
These 2 and 4-month time limits may not be extended.
What fees are associated with appeals?
• From 1 April 2018, there will be two levels of appeal fee:
• For appellants that are either (a) a natural person, or (b) a small- or medium-sized enterprise, a non-profit organisation, a university or a public research organisation, the appeal fee will remain at 1,880 EUR.
• For all other entities, the appeal fee will increase to 2,255
EUR.
What should a notice of appeal contain?
- The notice of appeal must contain (a) the name and address of the appellant; (b) a statement identifying the decision which is impugned and the extent to which amendment or cancellation of the decision is requested.
- The statement of grounds should be a succinct but full statement of an appellant’s arguments in the appeal. Since in practice the appeal procedure is primarily a written procedure, arguments should always be fully developed in writing and not be reserved for a possible oral hearing.
How is an appeal processed?
- The appeal is referred to the department whose decision is contested and, if that department considers it to be admissible and well founded, it must rectify its decision after receipt of the statement of grounds of appeal. If the said department does not allow the appeal, it is remitted to the Board of Appeal without delay.
- Since 1 April 2014, 50% of the appeal fee will be reimbursed if the appeal is withdrawn before specified actions have taken place [R.103(2)]
What are the boards of appeal?
- The Technical Boards of Appeal are responsible for appeals from decisions concerning the refusal of a European patent application or the grant of a European patent and from decisions of an Opposition Division.
- This is the final as of right appeal for a European patent (although see EBA and petition for review discussed below).
- An appeal decision to revoke a European patent overrides any national decisions to uphold and the patent is revoked ab initio.
What are the enlarged boards of appeal?
- The Enlarged Board of Appeal is referred to in its capacity as the body responsible for ensuring uniform application of the law or if an important point of law arises.
- A Board of Appeal may refer any question to the Enlarged Board of Appeal if it considers that a decision is required for the above purposes. This may be on its own volition or following a request from a party to the appeal.
- The President of the European Patent Office may also refer a point of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on that question.
- The decision of the Enlarged Board of Appeal is binding on the Board of Appeal in respect of the appeal in question.
What is a petition for review?
- Parties adversely affected have possibility that final decisions of the Boards of Appeal are reviewed by the EBA on the grounds as specified in Art. 112a(2).
- Not a review regarding how substantive law has been applied by the Boards of Appeal.
- Aim: provide a remedy in individual cases, not to ensure a uniform application of the law.
- No suspensive effect. The decision of the Board has legal effect until the decision of the EBA sets it aside. Differs from effect of decisions of the Boards of Appeal on decisions of the departments of first instance. Aims at providing speedy procedure.
What are the grounds for a review?
- Wrong composition of the Board.
- Member took part in case who had:
- personal interest
- previously acted as professional representative/party
- participated in the decision under appeal
- Member took part despite having been excluded.
- Member took part who had not been appointed as a member of the Boards of Appeal.
- Fundamental violation of Art. 113 EPC which relates to a right to be heard.
- Any other fundamental procedural defect defined in the Implementing Regulations.
- Board failed to arrange oral proceedings despite a request by petitioner or Board decided on appeal without deciding on a request relevant to that decision.
- If a criminal act may have had an impact on the decision.
What is the procedure for a review?
Obligation to raise objection
• Objection must have been raised during appeal proceedings and have been dismissed by the Board.
• Not relevant where ground is a criminal act or where objection could not have been raised.
Time limit for filing
• General rule: two months from notification of Board’s decision
• Exception: where criminal act occurred, petition must be filed within two months of date on which criminal act was established AND no later than five years from notification of Board’s decision.
• Time limit excluded from further processing (Art. 121(4)), only reestablishment of rights available.
What is the contents of a petition for review?
Contents of the petition for review:
• Name and address of the petitioner
• Indication of decision to be reviewed
• Reasons for setting aside decision of the Board
• Facts and evidence on which the petition is based
• Petition not deemed filed until fee paid
What is the two-stage process before the EBA?
- Stage 1: filters out cases which are clearly inadmissible or unallowable
- Decision made on basis of petition only by two legally qualified members and one technically qualified member
- Excluded is chairman of Board against whose decision petition is filed and members who participated in the attacked decision
- Decision requires unanimity
- Stage 2: deciding on petition for review
- Decision made by four legally qualified members and one technically qualified member
- Three member board for first stage is supplemented by a further two legal members. Rapporteur in first stage usually also rapporteur in second stage
- Oral proceedings have to be held where requested or regarded as necessary
- Decision by majority
What time limits are affected by a petition for review?
Time limits (R. 109(1)) - may be shortened
• Period of notice for summons to oral proceedings: may be less than two months
• Period of notice for summons to give evidence: may be less than two months
• Periods specified by EPO: minimum and maximum periods do not apply
• Minimum one-month period of notice by party of use of language other than language of proceedings: EBA may set shorter period
What are the consequences of petition for review if successful?
If successful:
• EBA sets board’s decision aside and re-opens proceedings before Board
• Fee for petition will be reimbursed
• EBA may order replacement of members of Board who participated in the decision set aside
What are the consequences of petition for review if EBA re-opens proceedings before Board?
If EBA re-opens proceedings before Board:
• Any renewal fee which would have fallen due between Board’s decision and notification of EBA decision re-opening proceedings shall be due on the latter date and is payable within four months without an additional fee.
• Any renewal fee which was due on date of Board’s decision, but six months period under R. 51(2) had not yet expired, may still be paid within six months from date of notification of EBA decision re-opening proceedings provided additional fee is also paid.
What is the new 2 step test under Art 82?
• NEW 2 step test:
1. determining, in the light of the application as a whole, the subject-matter that is
common to the claims directed to the different claimed inventions, i.e. the technical
features of these claims that are the same and/or corresponding,
2. examining whether any of this common matter is special within the meaning of
Rule 44(1).
• 44(1) Where a group of inventions is claimed in a European patent application, the requirement
of unity of invention under Article 82 shall be fulfilled only when there is a technical relationship
among those inventions involving one or more of the same or corresponding special technical
features. The expression “special technical features” shall mean those features which define a
contribution which each of the claimed inventions considered as a whole makes over the prior
art.
Discuss the reduction in search fees (new)?
• Refundable search fees: where the European search report or supplementary search
report is based on an earlier search report prepared by the Office on a corresponding
application (for example, one whose priority is claimed), then the search fee paid for the
search on the pending European patent application shall be refunded as follows:
o With written opinion: EP search (full – 100%, partial – 25%); EPO acting as ISA or
acting on behalf of national office – (full – 84%, partial – 21%)
o Without written opinion: full – 70%, partial – 17.5%
• Where the international search report drawn up by the Office acting as ISA is based on an
earlier search report prepared by the Office for a corresponding application whose priority
is claimed for the international application, then the international search fee paid shall be
refunded as follows:
o With written opinion: full – 100%, partial – 25%
o Without written opinion: full – 70%, partial – 17.5%
Discuss the EPO’s new two step test for unity.
• NEW 2 step test:
1. determining, in the light of the application as a whole, the subject-matter that is common to the claims directed to the different claimed inventions, i.e. the technical features of these claims that are the same and/or corresponding,
- examining whether any of this common matter is special within the meaning of Rule 44(1).
• 44(1) Where a group of inventions is claimed in a European patent application, the requirement
of unity of invention under Article 82 shall be fulfilled only when there is a technical relationship
among those inventions involving one or more of the same or corresponding special technical
features. The expression “special technical features” shall mean those features which define a
contribution which each of the claimed inventions considered as a whole makes over the prior
art.
Discuss refundable search fees.
• Refundable search fees: where the European search report or supplementary search
report is based on an earlier search report prepared by the Office on a corresponding
application (for example, one whose priority is claimed), then the search fee paid for the
search on the pending European patent application shall be refunded as follows:
o With written opinion: EP search (full – 100%, partial – 25%); EPO acting as ISA or
acting on behalf of national office – (full – 84%, partial – 21%)
o Without written opinion: full – 70%, partial – 17.5%
• Where the international search report drawn up by the Office acting as ISA is based on an
earlier search report prepared by the Office for a corresponding application whose priority
is claimed for the international application, then the international search fee paid shall be
refunded as follows:
o With written opinion: full – 100%, partial – 25%
o Without written opinion: full – 70%, partial – 17.5%
What are the exceptions to Art 121(4)/Rule 135(2) EPC (further processing)?
• Article 87(1): priority period
• Article 108: filing of notice of appeal + grounds of appeal
• Article 112a(4): filing of petition for review
• Article 121: filing request for further processing itself
• Article 122: filing for re-establishment
• Rule 6(1): filing of the translation of the application
• Rule 16(1): decisions as to entitlement
• Rule 31(2): deposit of biological materials
• Rule 36(2): period for filing translations of divisional applications
• Rule 40(3): supplying of previous application in case of filing-by-reference
• Rule 51(2)-(5): payment of renewal fees
• Rule 52(2) and (3): declaration / correction of priority
• Rules 55, 56, 58, 59: correcting deficiencies at filing
• Rules 62a and 63: periods for indicating claims/subject matter to be searched
• Rule 64: payment of extra search fees in case of non-unity
• Rule 112(2): decision as to a loss of rights
• (From 1 November 2014) Rule 164(1) and (2): payment of extra search fees on ex-PCT
applications
