Overseas Law

Question 1

What are the different lengths of priority set out in Article 4 of the Paris Convention?

Answer 1

12 months for patents and utility models.
6 months for industrial designs and trade marks.

Question 2

When can a subsequent national filing for the same matter be treated as the first application? (5)

Answer 2

If:
1) It is filed in the same country as the previous application, and
2) the previous application is withdrawn/abandoned/refused.
3) without publication,
4) leaving no rights outstanding, and
5) having itself not served as the basis for a priority claim.

Question 3

How do you obtain a priority claim?

Answer 3

You must make a declaration stating the date of filing of the first application and the country it was made in.

You may then be required to supply a certified copy of the first application (and a translation if needed) within three months.

Question 4

Can you file an industrial design claiming priority from a utility model at 12 months?

Answer 4

No.
You can file a patent claiming priority from a utility model within 12 months, and vice versa.

However, if you file an industrial design claiming priority from a utility model, you only get the industrial design’s six-month priority period.

Question 5

Can business methods implemented using a conventional computer by patented under the EPC?

Answer 5

No.
The claim might have a technical aspect (the computer) making it thus not a business method as such, however, once the business method is discounted, the computer by itself is not inventive.

Question 6

Are second medical use claims at the EPO possible for the same illness?

Answer 6

Yes.
G02/08 held that a new dosage regime for the same illness is patentable.

Question 7

When the entitlement to an EP application is decided by national law (i.e. s12 UKPA), then the newly entitled person can do what? (3)

Answer 7

1) take over prosecution of the existing application;
2) file their own version (treated as a divisonal re the filing date, etc.) [and pay file and search fee within 1 month] or
3) request that the existing application is refused.

If 2), the original is deemed withdrawn as of filing date of new one.

Question 8

What happens once a person proves to the EPO that they have begun entitlement proceedings in a national court?

Answer 8

The EPO stays the prosecution of the application and also limits the ability of the current applicant to withdraw the EP patent application or designations.

However, renewal fees are still due during this period and the truely entitled person should make arrangements for the payment of said fees.

Anyone can pay renewal fees.

Question 9

Providing the EP application has not yet granted, the entitled person has how long from a national law decision to make a request under Art 61?

What happens if this deadline is missed?

Answer 9

3 months, if this is missed, further processing is not available.

Question 10

If an EP patent application publishes with narrower claims than those that eventually grant, is an infringer who is outside the scope of the narrow published claims but within the scope of the broader granted claims liable for any infringement during the period before publication of the granted claims?

Answer 10

No.
Likewise, if a patent grants with narrower claims than it publishes with, any person who infringes only the broader published claims is not liable.

Question 11

What is the authentic text of an EP?

Answer 11

The language (EN, FR or DE) that the application was originally filed in or translated into for prosecution to grant (not JP if filed in JP before translation to EN) but,
National translations can be used in a contracting state subject to certain conditions.

Question 12

Can interest in an EP application be assigned/transferred on a country-by-country basis?

Answer 12

Yes.

Question 13

How is registration of a transfer of rights in an EP application done?

Answer 13

It can be requested by any party having an interest in the transfer, together with evidence of the transfer and the fee of 105 Euro. The effective date of transfer is when the request, evidence and fee have all been received by the EPO.

Question 14

Is it possible to register transfers of an EP patent during the opposition period or opposition proceedings?

Answer 14

Yes, it is required by the EPO so that the valid parties can be identified.

Such post-grant transfers typically also require parallel registration in the validated states.

Question 15

A European Divisonal application can be filed from any pending application.

It must be filed in what language?

If not filed in this language, what must happen?

What must be paid within one month of filing?

What must be paid within 6 months of publication of the search report?

Answer 15

The language of the proceedings of the parent.

Translation within two months if not in that language.

The filing and search fees must be paid within one month of filing.

The des and exam fees must be paid within six months of publication of SR for divisional. (all states are designated by default but not confirmed until these fees are paid).

Note: the filing of a divisional carries an additional fee.

Question 16

What was clarified in G1/09 regarding pendency of EP applications?

Answer 16

Still pending during period for appealing a refusal (two months from receiving notification of a decision to refuse) - regardless of whether an appeal is filed or not on the parent.

Question 17

What if we miss the deadline to pay the designation fees?

Answer 17

use FP within two months (remembering 10 day rule).

Question 18

Can an invalid publication be used for novelty only prior art?

Answer 18

No. It can be used as full prior art for claims with effective dates AFTER the invalid publication but not for claims with effective dates after the priority date of the invalid publication but prior to publication.

Question 19

What happens if an applicant requests examination before publication of the european search report?

Answer 19

The EPO gives the applicant up to 6 months after publication of the SR to indicate if they wish to proceed further. If they do not reply in time = deemed withdrawn.

Question 20

If a r70(2) communication is missed (intent to proceed to examination) how many FP fees are due?

Answer 20

Typically 2

Question 21

When can PPH be requested?

Answer 21

Only before examination begins.

Question 22

When can 100% of the exam fee be refunded?

Answer 22

If you withdraw an application before the first exam report is issued under Art 94(3).

If withdrawn before expiry of the deadline for reply to the first Art 94(3) report, you will recieve 50% of the exam fee back.

Question 23

Unity and entitlement are not grounds for opposition against an European Patent, what are grounds?

Answer 23

1. Not patentable (known or obvious)
2. Sufficiency of disclosure
3. Added matter

Question 24

What is the well-known Article 123(2)-(3) trap w.r.t Opposition?

Answer 24

If a new feature is added to a claim during prosecution which limits the scope of the claim but is found during opposition to add matter (against A123(2)), then the feature cannot be removed again since this would broaden the scope of a granted claim (against A123(3)).

Question 25

Can a Euro patent be limited or revoked by applicant during opposition proceedings?

Answer 25

No

Question 26

What happens if an opposition is filed against an Euro patent when limitation proceedings are open?

Answer 26

Limitation is cancelled and fee refunded.

Question 27

What is the difference between the retroactive effect of UK/EP limitations/amendments?

Answer 27

EP: the revocation or limitation take place upon publication in the Bulletin, but are fully retroactive (ab initio or ex tunc).

UK: post-grant amendment is only retroactive to the date of grant.

Question 28

What does the EPO check w.r.t limitation? (3)

Answer 28

1. narrows the scope
2. results in claims which are clear
3. does not add matter

Question 29

What notable time limits are excluded from further processing? (5)

Answer 29

1. the 12m priority period for filing;
2. the 2m for notification and 4m for grounds for appeal;
3. the 2m for petition to review an appeal;
4. the 2m for requesting FP itself;
5. the period for re-establishment of rights; and
6. the periods listed in Rule 135(2) EPC…

Question 30

How can a pending EP application be amended? can it?

Answer 30

Yes - it can be amended after receipt of the SR or ISR where EPO was ISA, in any event the applicant is ALSO entitled at the same time to one amendment of their own volition.

Amendments should be directly and unambiguously derivable from the content of the application as filed.

Question 31

What is the Article 123(2)-(3) trap?

Answer 31

Where added matter which narrows the claim escapes notice and said claim grants - such a claim is invalid but cannot be amended to keep the claim alive without broadening the claim which is not allowed post-grant.

Similar trap in UK law.

Question 32

Can a PCT application be filed later than 12 months from the priority date?

Answer 32

Yes, up to 14 months late. The priority will not be considered void for the purposes of the international phase only. Any request to restore priority must be filed within that same two months period (from 12m), requires a fee and evidence that the delay was either in spite of due care (EP/JP) or unintentional (US/UK). National phase countries will apply own criteria and EP/JP will only accept evidence of all due care.

for UK, a late declaration to priority can also be made within one month of NPE.

Question 33

Can a late declaration to priority be made within one month of UK NPE?

Answer 33

Yes

Question 34

What is the deadline for correction of errors in the International Phase and to whom should requests be sent and when?

Answer 34

Corrections must be obvious - replacement of missing pages not allowed.
Mistakes in the Original Application request should be sent to the rO.
Mistakes in the claims, drawings or description should be sent to ISA during Chapter I or IPEA during Chapter II.

Rule 91 PCT (this cannot be used for abstract or priority claim errors).

Corrections should be requested within 26 months from priority.

Question 35

The international phase can be terminated if the international application is refused or considered withdrawn, in which case national phase entry under A22 or A39 PCT no longer applies. The PCT gives designated/elected offices discretion to allow a corresponding national application. Where an applicant believes the PCT terminated the application in error, what can they do?

Answer 35

They can, within two months of notification (no ten day rule), enter the national phase and each designated office will determine if they agree with the termination or not.

Question 36

Does the US 1 year grace period protect against independent disclosures?

Answer 36

Yes.

Question 37

Why can a continuation application not form the basis of a priority claim?

Answer 37

It is by definition not the first application for the subject matter.

New SM added to a CIP can be basis for priority claim.

Question 38

How do the rights of co-owners in a US patent differ to those in a UK patent?

Answer 38

US = co-owners can independently licence a patent/application, unlike the default position in UK.

Question 39

What is a broadening reissue?

Answer 39

After US grant it is possible to extend claim scope in the first two years with a broadening ‘reissue’.

Question 40

Does a US unregistered design right have protection in the UK?

Answer 40

No, and a UK unregistered design right has not protection in the US.