EP Procedure and Quirks

Question 1

When does an EP patent application designating the UK take effect in UK law?

Answer 1

From publication of the mention of grant in the European patent bulletin, an EP(GB) patent is treated as a UK patent issued under s24.

• Proprietor has the same rights
• All references in the UKPA will be treated as applying to the EP(GB) patent

NB renewal fees falling in the opposition window will be paid to the UKIPO, not the EPO.

Question 2

Do any EPC provisions apply to EP(GB)s after grant?

Answer 2

Yes, even though after grant it is treated as a UK application, certain EPC provisions still apply:

• Opposition
• Appeal
• Central limitation

Question 3

What happens if an EP(GB) is amended or revoked in opposition proceedings?

Answer 3

It will be treated as amended or revoked under the UKPA.

However, an amedment made in French or German at the EPO will not be valid in the UK until a UK translation is filed.

Question 4

What happens if an EP(GB) is restored under the EPC?

Answer 4

It will also be restored in the UK.

However, third party rights can rise in the UK under s28A, as they would for a UK patent.

Also, any renewal fees that fell due in the interim will need to be paid within 2 months.

Question 5

How does address for service work at the EPO?

Answer 5

The address for service by default is the proprietor’s address. It is good practice to update the address for service so you get the correspondence.

Question 6

What are the language requirements for a granted EP to be valid in the UK?

Answer 6

On grant, you need to file French/German/English translations of the claims only.

A german patent application with english claims is valid in the UK.

A translation of the full document may be required for infringement proceedings.

Question 7

How is an EPC application treated under UKPA?

Answer 7

Applications with an EPC filing date will be treated as an application with a corresponding GB filing date.

This applies to:

• Priority
• Registration
• Co-Ownership
• Infringement/Prior Use
• Threats
• Validity Proceedings
• Extent of Invention

If EP(GB) is withdrawn/refused, or the GB designation is withdrawn, the above will not apply.

Question 8

When will an EP(GB) application be considered as s2(3) prior art?

Answer 8

If it has a priority date before, but is published after then it is s2(3) prior art (NB it isn’t s2(3) prior art until it publishes).

It is irrelevant if the application is refused or the GB designation is withdrawn, it will still be considered s2(3) prior art.

i.e. no way to prevent s2(3) prior art problems if you have corresponding EP (filed first) and GB applications.

Question 9

Scenario:

The GB designation of an EP application is withdrawn but later re-established. In the intervening period a third party began using the invention.

Answer 9

During any period between the GB designation being withdrawn and then re-established, any third party who, in good faith, begins (or makes serious and effective preperations to begin) an otherwise infringing act in the UK, will have the same prior user rights as a UK application.

Question 10

What is the effect of reinstating an EP(GB) application?

Answer 10

It is the same as if a UK application had been reinstated.

Therefore, third party rights can arise (and similarly, this does not allow the third party to licence their right).

NB the EPO uses the higher standard of “all due care” to re-establish rights.

Question 11

When will (infringement) rights for an EP application begin in the UK?

Answer 11

For a French/German EP(GB), only once an English translations of the claims is filed with the UKIPO and published.

A good strategy is to send a translated copy of your claims to an infringer to put them on notice.

Question 12

Which langauge version of an EP patent is relevant in which scenarios?

Answer 12

The authentic text of the EP patent is the text in the language of the proceedings at the EPO.

For GB domestic purposes, it is the GB translations of an FR/DE language text.

However, for revocation proceedings, the original EP language must be used.

Question 13

Scenario:

A translation error resulted in narrower GB protection that that of the granted EP patent in the language or proceedings.

Answer 13

Supply a corrected translation to the UKIPO to publish.

This is the only instance in which post-grant claim broadening is allowed.

However, the wider protection is not retroactive and 3rd party rights can arise (good faith required).

Question 14

When will an EP(GB) be converted into a UK application?

Answer 14

If the application is not received by the EPO within 14 months from priority (e.g. due to a PCT receiving office error) provided either:

• Applicant requests conversion within 3 months from notification of loss of rights (not extendable) and then pays the application fee and, if necessary, files English translations of the application and any amendments within 2 months; or
• A request is relayed from another patent office of an EP convention country within 20 months from priority and the applicant then pays the application fee and, if necessary, files English translations of the application and any amendments within 4 months

NB applicant can also request UKIPO to forward the request to other convention countries, where the national law will apply.

Question 15

What is the filing date for a converted application?

Answer 15

If an application is converted from a EP to a UK, then the filing date is what it would have been had it been properly sent to the EPO.

Question 16

What happens to an EP application if entitlement proceedings are filed in a convention country?

Answer 16

EPO will stay all prosecution of the application and limit the applicant’s ability to withdraw the application.

Renewal fees are not paused during this time - need to keep paying them (remember anyone can pay a renewal fee).

Question 17

Scenario:

Your client has successfully challenged entitlement of an EP(GB)

Answer 17

If you win entitlement proceedings at the UKIPO in relation to an EP application you have 3 months to make a request (either to take over prosecution, file your own version or remove the application).

• This 3 months matches the UK 3-months
• Further processing of this deadline is not possible
• Filing/seach fees due within 1 month of filing a new application

Question 18

Can EP patent applications be transferred?

Answer 18

Yes, can be transferred in whole or in part (and can give rise to rights for one or more European contracting states seperately).

Registrations must be evidenced and fee must be paid (no official form like at the UKIPO)

Needs to be signed by both parties (unlike UK where only the assignor needs to sign)

Language requirement - ‘evidence’ must be filed in EN/DE/FR

Deadline is the end of the opposition window (afterwards must do so in individual states).

Question 19

Can divisionals of EP applications be filed? When? What are the requirements (e.g. fees)?

Answer 19

Yes, they are filed at the EPO and cannot add matter (A123(2) EPC). The divisional inherits the designated states of the parent as of the day of filing.

• Must be filed from a pending application
• Remains pending during the period for appealing a refusal - so will have 2 months from notification (10 day rule) to file a divisional.
• Renewal fees will be due on filing
• Filing/search fee are due within 1 month

NB at the EPO technical preperations for publication are completed as soon as possible after all formal requirements with respect to the divisional have been fulfilled.

Question 20

What states are designated for an EP application?

Answer 20

All states are designated by default. Thus, a valid publication will automatically result in s2(3) art, regardless of whether the UK designation is later removed.

Question 21

What is the deadline to pay the examination fee for an EP application?

Answer 21

6 months to request examination AND pay the examination fee, from the publication of the search report. Regardless of whether it is an EP direct of a PCT(EP), once the EESR publishes, you have 6 months.

So, for a PCT(EP) it is 6 months from publication of the ISR (but this won’t expire before 31 months).

(For UK application, the deadline is 6 months from the publication of the application).

Question 22

Can you use PPH at the EPO?

Answer 22

PPH = Patent Prosecution Highway

If there is a recently granted corresponding application in another jurisdiction, you can use the PPH (must request prior to examination start).

Not recommended - it is more expensive, it has the same effect as a PACE request and you also need to supply foreign prosecution documents.

Question 23

What are the requirements for an EPO opposition to be filed?

Answer 23

Within 9 months of the publication of grant, anyone can oppose an EP patent by filing a notice identifying the patent number and the applicant and including both a statement of grounds and an opposition fee.

The opposition applies in all states where the patent has effect.

Question 24

Scenario:

Opposition proceedings are filed against a patent which has different proprietors in different states.

Answer 24

All of the proprietors are automatically made party to the proceedings.

Where there are mutltiple proprietors, each can represent themselves seperately.

Question 25

What are the grounds for an EPO opposition?

Answer 25

• Invention not patentable
• Description not sufficient
• Added matter

NB:

• Entitlement not a ground - left for national courts
• Post-grant broadening is a ground for revocation, but not opposition as the claims being opposed are those granted (no broadening allowed).

Question 26

What can an EP proprietor do if they want to withdraw or amend a granted patent?

Answer 26

Can request central revocation/amendment upon payment of a fee at any time except during opposition proceedings.

Question 27

What are the requirements to be met for central limitation of a granted EP?

Answer 27

• Amendment narrows the claims
• Resulting claim scope is clear
• Amendment does not add matter

Question 28

Does the EPO allow reinstatement?

Answer 28

Basically yes, but its called re-establishment of rights.

The higher standard of all due care is used.

Must be requested within 12 months.

(Remember, once granted renewal fees are paid nationally so restoration of a granted patent is never an EPO matter)

Question 29

What is the London Agreement? How does it affect the UK specifically?

Answer 29

Firstly - alway need to file FR, DE and EN claims as part of the EP grant procedure.

The London Agreement intends to reduce translation costs associated with validating patents in Europe for those states that are signatories to the agreement.

Agreement provides two cases:

1. A state has at least one of DE, FR or EN as an official language - they will not require a translation of the European patent (even if not published in one of its own official languages).
2. A state does not have one of DE, FR or EN as an official language, but will not require a translation if the patent is published in one of the EPO official languages chosen by that state. However these states can also require a translation of the claims in an official language of the state.

Any state can still require the translation of the whole patent in the event of a dispute.

Any state that is not a signatory of the London Agreement can still require a full translation.

The UK is a type 1 country, so there is no requirement for the application to be translated into English.