News concerning European patent practice
Processing applications in English (and the London Agreement)
On 1st November 2011 the London Agreement came into force in Finland. The aim of this agreement is to reduce the costs relating to the translation of European patents.
In practice, this means that a European patent granted from said date can be validated in Finland without supplying a translation of the entire specification into Finnish if said specification is available in English. Only a translation of the claims into Finnish will be required. However, a specification available only in German or French will still have to be translated into English or Finnish.
The language requirements for national patent applications (including PCT national phase entries) filed in Finland will also change on 1st November 2011. Applications having filing dates on or after said date can be filed and also processed in English. In this case, only a translation of the claims will be required, and should be filed prior to publication of the application.
The changes in the language formalities do not require any significant changes in the practice of the Finnish Patent Office, since said Office has accepted and searched applications filed in English since 1997 and has been a PCT searching authority since 2005, thus providing also communications in English.
<<Back to News archiveAllowability of disclaimers according to EPO decision G 2/10
In the G 2/10 decision on 30 August 2011, the EPO Enlarged Board of Appeal (EBA) ruled on the allowability of disclaimers excluding protection for subject-matter that relates to a specific disclosure, such as a preferred embodiment. The EBA allowed such disclaimers in principle, but such disclaimers are, as any other amendment, subject to the so-called disclosure test. Thus, with respect to all amendments, it is to be examined whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed.
The decision also includes several interesting comments by way of obiter dicta. In these comments, for example, the EBA acknowledges that it is legitimate to obtain “a first quicker protection for a preferred embodiment and pursue the general teaching in a divisional application.” This, of course, raises questions of double patenting. The EBA leaves us without an answer but goes on to state very interestingly “Whether or not and, if so, under what circumstances, in such a case a disclaimer would be necessary in order to avoid the so-called prohibition on double protection is a different matter. It is sufficient to say that such procedural behavior is not abusive and even legitimate.”
The decision discusses and explains many previous decisions by the EBA, and also cites several national court decisions. The reasons for the decision are valuable reading for those who want to successfully tackle difficult questions relating to claim amendment under the EPC, either when drafting amendments to optimize protection or when seeking ways to limit competitor’s claims in opposition proceedings. For a practitioner’s every day work, this decision of the EBA stresses the ultimate importance of proper and skillful drafting of patent specifications and claims from the outset. The first application needs to be drafted such that it provides basis for any conceivable amendment that may prove necessary later during the prosecution.
Link to the full text of the decision:
http://documents.epo.org/projects/babylon/eponet.nsf/0/C777CFB3654BB240C12578FE00485B6C/$File/g2_10.pdf
EPO's new rule amendments
European "IDS" praxis
As part of the so-called Utilization Pilot Project which aims to avoid overlapping work between national patent offices, and according to new rules 141 and 70B of the European Patent Convention entering into force in the beginning of 2011, the European Patent Office will require that an applicant reports the novelty search results of a priority application to the EPO as soon as possible. While the EPO receives these results automatically from the patent offices of some countries, Finland is not one of them. Thus, it is the applicant's, or their agent's, responsibility to provide the necessary material. The EPO may also, as the examination progresses, ask the applicant for additional material, e.g., examination results of parallel applications belonging to the same family. If results are not reported, then the application will be dismissed.
Response due dates of Euro-PCT applicationThe European Patent Office will change the due date for amending the description and claims of a Euro-PCT application, as well as the due date for responding to the written opinion regarding the PCT application, if the EPO has made the international novelty search and possibly the international preliminary examination. The due date of one month, according to the earlier implementing rule 161, will be extended to 6 months as of May 1, 2011. Possible additional claim fees can be paid within the same due date. This change will significantly reduce the time pressure in connection with amendments of Euro-PCT applications and will also help to distribute the necessary costs associated with the filing more evenly over a period of time.
<<Back to News archiveEPO's effort regarding patent quality and examination speed shows
The EPO finished the examination of over 102 000 patent applications during 2009. The number is 13 % higher than in 2008. About 42 % of the examinations resulted in the grant of a patent which, however, is 8 percentage units less than in the year before. The EPO interprets this as a sign of increased quality of patents.
Also the number of European patent applications filed decreased for the first time in 20 years. About 135 000 EP applications were filed during 2009 which is about 8 % less than during the previous year. Finnish applicants filed 15 % less applications than in 2008.
The abovementioned information appears in the recent statistical annual report of the EPO and a related press release.
<<Back to News archiveProsecution of EP applications becomes more straightforward
As of April 1, 2010 the EP application process has, to some extent, remarkably changed in order to reduce the prosecution time of applications.
Changes before novelty search
In the future, the EPO may request an applicant to reduce the number of independent claims before a novelty search if the claims include several independent product or method claims. Before the novelty search, an applicant may also be asked to clarify the wording of the claims or to indicate the description parts which support the claims.
New response deadline for a direct EP application
An applicant has now to react, by a predefined due date, to possible deficiencies noted in a written opinion associated with an Extended European Search Report (EESR). In practice this usually means that a complete response and any possible changes to the claims must be filed with the EPO within 6 months from publication of the search report.
Response deadline for an Euro-PCT application
When the EPO acts as the examining authority for a PCT application, an applicant has to react to any deficiencies noted in the International Preliminary Report on Patentability (IPRP) by a separate due date of 1 month from when the Euro-PCT application was made pending.
On the other hand, if the EPO does not act as the examining authority then the applicant has to react to any deficiencies noted in a supplementary search report by a predefined due date which is usually 6 months from the publication of the serach report.
Divisional patent applications
The due date for filing a divisional application has been changed. Now a divisional application has to be filed within 2 years from a first office action (so called voluntary division) or from a first office action concerning non-unity (so called mandatory division) issued by the examining division. At least one of the afore-mentioned requirements must be fulfilled. Furthermore, the earlier application must still be pending.
Official fees As of April 1, 2010 the EPO’s official fees have increased by about 5 – 8%.
<<Back to News archiveThe EPO has expanded the interpretation of second medical use
According to the recent decision G 2/08 of the enlarged board of appeal, a use of a known medicament for the treatment of a known desease, even if it were known to use that medicament for the treatment of that desease, is patentable provided that the dosage regime, for example, of the medicament is novel and the invention fulfills the other requirements of patentability (in particular inventive step). The decision expands the interpretation of second medical use (Art. 54(5) EPC) and allows for the following form of claim to be used:
"Substance A for use in the treatment of disease B, wherein the substance A is administered X - Y mg per day."
According to the decision, also the possibility to use the so-called Swiss-type claim construction is abolished.
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