European Patent Convention Flashcards
How is excluded subject matter treated differently in the UK/EP?
UK - Identify the actual contribution (what the inventor added to human knowledge) consider whether the actual contribution falls solely within an exclusion (i.e. it relates to it as such). Check if the actual contribution is technical.
EP - consider what are the technical aspects (e.g. computer) and whether those are inventive
*e.g. for a business method implemented using a conventional computer
UK - the actual contribution is a business method and so is not patentable
EP - the claim has a technical aspect (the computer) and so is not a business method as such and is patentable, but the computer is not inventive once the business method as such is discounted from consideration.
What happens to European prosecution when a person proves to the EPO they have begun entitlement proceedings in a national court
The EPO stays prosecution of the patent application
Renewal fees are not paused
What happens to a European application when entitlement is decided by national law
The newly entitled person can:
take over prosecution of the existing application
file their own version (treated as a divisional re. the filing date)
request the existing application is refused
What happens if the entitled person chooses to file a new version of the application (EPC)
The original application is deemed withdrawn on the date of filing the new application in the designated states recognising the original national law decision
the new filing cannot extend the subject matter of the original application.
The entitled person needs to pay the filing fee and search fee within one month of filing
The designation and exam fees are paid as normal within 6 months of publication of the search report.
What happens if an inventor name needs to be corrected? (EPC)
The correction of inventors requires the consent of any wrongly designated inventor who is to be removed. If X and Z are named inventors but Y not Z actually contributed, Z’s consent is required to replace the with Y. If Y is a third inventor to be added, neither X or Z’s consent is needed to add them
What is the effect of revocation or limitation (EPC)
fully retroactive
What is the extent of provisional protection for a European patent?
Provisional protection of a scope determined by the published claims
The final protection that the proprietor can enforce retrospectively is that of the granted and settled claims, except where these are broader than the published claims.
Hence if granted claims are narrower than the published claims, third parties acting inside the scope of the published claims but outside the scope of the granted claims are not liable for infringement during the period between publication and grant. If the granted claims are broader than the published claims, the third parties acting outside the scope of the published claims but inside the scope of the granted claims are still not liable for infringement between the publication and granted (though they are for periods after grant)
When is the last date to file a divisional
When the parent is still pending - up to 2 months after notification of a decision to refuse (the period for appealing a refusal), regardless of whether an appeal is filed or not.
What is not novelty only prior art?
Invalid publications - e.g. if an application is withdrawn or refused after preparations to publish have been finalised.
*Note withdrawing the GB designation prior to publications still count for novelty
When can you not request central revocation or limitation of a granted patent? (EPC)
During opposition proceedings.
When do revocation or limitation take effect?
Upon publication in the Bulletin
Steps for Further Processing
If the applicant misses a time limit relating to prosecution before the EPO they may request further processing
Fee must be paid
Omitted act must be completed
within 2 months of notification of the loss of rights
If granted, the legal consequences of missing the time limit are deemed not to have occurred.
Re-establishment of Rights
If despite all due care an applicant misses a time limit relating to prosecution before the EPO and this leads to loss of rights in the patent application, they may request to have their rights re-established
Fee must be paid
Omitted act completed
within 2 months of the removal of the cause of non-compliance and within 12 months of the missed time limited
If granted, the legal consequences of missing the time limit are deemed not to have occurred.
A person in a designated state who in good faith begins or makes serious and effective preparations to begin using the invention within the period between the loss of rights and publication of the re-establishment of those rights may continue to do so.
Selection Inventions - what does and does not confer novelty (lists)?
A selection from a single list of specifically disclosed elements does not confer novelty
A selection from two or more lists of a certain length to arrive at a specific combination of features does confer novelty
When is a range not new?
When an example is known that falls within the range (analogous to “genus anticipated by species”)
When an end point of a prior art range falls in the claimed range
When a prior art sub-range fully falls in the range
When a test point in the prior art range falls in the claimed range
When a prior art example falls in the error margin of the claimed numerical range, in particular if language like “about” is used
