Williams Powell

British and European Patent and Trade Mark Attorneys

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Jonathan Exell

Jonathan is a British and European Patent Attorney. He studied Cybernetics with Computer Science at Reading University. He is also a Chartered IT Professional and is a member of the BCS, the Chartered Institute for IT. He is active in promoting IP awareness in IT companies and spends much of his time dealing with both IP for IT and technical IT issues.

It was understood that UK Government had planned to ratify the UPC agreement in May 2017 so that the Unified Patents Court could open by the end of the year.  However, that timetable now looks likely to experience minor delays and could push opening of the Court into 2018.

A side-effect of the span election announced by UK Prime Minister, Theresa May, on 18 April 2017 is that Parliament will dissolve on 3 May 2017 and this will prevent changes to UK law (which includes approval of statutory instruments such as the one needed for the UK to ratify the UPC).  Parliament will reconvene in June but only for a short period before breaking up for summer vacation in July. The necessary legislation might be squeezed through in the short period between June and July 2017 but more than likely will slip until September 2017.

Once UK and Germany have ratified (other countries necessary to meet minimum requirements have already ratified), a provisional application procedure begins during which the court structures will be established. The UPC preparatory committee had previously estimated 7 months for this period before the Court opened in December 2017.  due to delays in UK ratification this timetable can be expected to slip unless the preparatory period is shortened.  As a result, the Court will now likely open in 2018.  A sunrise period during which European patents and patent applications can be opted out of the competence of the UPC will run for a minimum of 3 months prior to opening of the Court.

The UK Patent Box has enjoyed a good level of success.  According to the UK Government, by mid 2015 over 639 companies had used it and received a benefit totaling £335,000,000.  

Tagged in: Patent Box patents UK

A validation agreement has been reached between the European Patent Office and the Republic of Moldova.  The entry into force of the validation agreement with Moldova means that, as of 1 November 2015, a European Patent can offer protection in up to 42 countries including the 38 EPO member states, Bosnia-Herzegovina, Montenegro, Morocco and Moldova.

Tagged in: EPO patents

When the EU parliament approved the Unitary Patent legislation in December 2012, some (including ourselves) optimistically said we may see Unitary Patents granted as early as the middle of 2014.  While implementation still appears to be well on track, we are still some way off - because of politics.

For the Unitary Patent system to come into force, the legislation must be ratified by thirteen member states (which must include UK, France and Germany).  As at February 2015, France, Austria, Belgium, Denmark and Sweden have ratified the legislation.  It is highly unlikely that the UK will ratify the legislation in 2015 as it is to hold a general election in May. 

More formal issues also still remain undecided - how much will the renewal fees be?  The aim for the Unitary Patent is for a single annual renewal to be payable covering all states.  In order to be attractive to SME's, the EU want the single renewal fee to be relatively low.  However, this will likely reduce the income of many member states and has therefore been a point of much debate. We understand discussions on this point continue between the European Patent Office, EPO, and member state governments.

We will keep you appraised of developments as they occur and would be happy to answer any questions.  Ultimately, when the Unitary Patent system finally comes into force any pending European patent application should be able to be converted into a Unitary Patent at grant so there is no reason or benefit in delaying filing. For pending European patent applications that are approaching grant, filing a divisional application would keep them pending and therefore leave open the opportunity of conversion to a Unitary Patent when the option finally becomes available.

 

From 1 March 2015, anyone filing a European patent application will be able to request validation for Morocco. European applications and patents validated for Morocco will have the same legal effect as Moroccan patents and will be subject to Moroccan patent law.

 

On 17 December 2010, the President of the European Patent Office and Morocco's Minister for Industry signed an agreement on the validation of European patents (validation agreement).

 

The agreement enters into force on 1 March 2015. European patent applications or International patent applications filed from that date will have the option to be validated in Morocco.

 

Unlike validations of designated states that are required at the grant of a European patent to bring it into force in that designated state, "validation" here refers to the payment of a fee to the EPO.  This is due within six months of the date of publication of the European search report. In the case of European patent applications based on an international application (PCT), the fee is due on entry into the European phase.

Tagged in: EPO patents

On 26 September 2014, Norway acceded to the London Agreement, waiving the requirement for a full translation of a European patent on grant as long as the patent is granted in English.  A Norwegian translation of the claims must still be supplied for the patent to have effect in Norway.

The Agreement on the application of Article 65 EPC, also known as the London Agreement, is an optional agreement that aims to reduce the costs relating to the translation of European patents.  It was concluded at the Intergovernmental Conference held in the London on 17 October 2000 (see OJ EPO 2001, 549) and since then 21 contracting states of the European Patent Convention (EPC) have ratified or acceded. The EPC contracting states which have ratified or acceded to the Agreement undertake to waive, entirely or largely, the requirement for translations of European patents. 

For European patents granted with effect for Norway on or after 1 January 2015, no Norwegian translation of the European patent specification need be supplied if the patent is granted in English or if an English translation of the patent is supplied. A Norwegian translation of the claims must still be filed. Where a European patent is granted in a langauge other than English, an English or Norweigian translation of the entire patent must be filed for the patent to have effect in Norway.  We provide English language translations of patents which are both competitively priced and checked for technical langauge accuracy - please contact us for more details.

All European patents with a filing date on or after 1 April 2009 will automatically designate Norway and would therefore benefit from this arrangement if granted on or after 1 January 2015.

The new rules do not apply to European patents amended in opposition, appeal or limitation proceedings which were granted before 1 January 2015 and amended on or after that date.

Tagged in: EPO patents

When EU member countries decided to work together to create the EU Unitary Patent, Spain refused to take part and subsequently filed various challenges against the proposals with the Courts of Justice of the EU (CJEU).  

On 18 November 2014, the Advocate General published an opinion suggesting the CJEU should dismiss the challenges.

We now await the CJEU's decision.  While the CJEU is not obliged to follow the Advocate General's opinion, it often does so and this would result in one more hurdle in the way of implementing the Unitary Patent being overcome.

The European Patent Office, EPO, has announced that as of 1 November 2014, it is relaxing rule R164 EPC on how lack of unity is dealt with.  Currently, on European applications that are filed from an International application (PCT), it is not possible to have further inventions searched if claims are found to be directed to more than one invention.  The only "fix" for this was to file a divisional application and as a result end up with two or more applications, even if only the later unsearched claims were wanted.  Following the changes to R164 EPC details linked here, it will be possible in all cases to pay an additional search fee to have further inventions searched.

This is a welcome change to practice before the EPO. It is not uncommon for new prior art to be found by an EPO Examiner at the search stage that results in a lack of unity objection arising.  In such situations, not all claims may be searched and this can have complications during examination.  Under current practice, applicants face the tough choice of sticking with the claims the Examiner has searched, or paying the high costs associated with a divisional application. Under the new rules, this situation can be avoided.

The European Patent Office has announced changes to R36 EPC with effect from 1 April 2014 such that a divisional application may be filed for any pending European patent application.  The wording of the changed rule appears to include those cases for which the current divisional deadline (2 years from issue of the first examination report) has expired but which are still pending as of 1 April 2014.

An additional fee (amount not yet announced) will be introduced as part of the filing fee for certain divisional applications. The amount of this fee will grow progressively with each subsequent generation of divisional applications up to a certain level, becoming then a flat fee.

The current rule was brought into effect in 2010 by the European Patent Office in an attempt to prevent “abuse” of the divisional system by the filing of one or more divisional applications shortly before the parent case was to be considered (and potentially rejected) at oral proceedings. However, the number of divisional applications in fact increased.  The effect of the current rules were further reduced by the decision of the Enlarged Board of Appeal on G 1/09 in which it was decided that a European patent application that was refused could still be used as the basis for filing a divisional application until expiry of the appeal deadline.

The announcement of the European Patent Office doesn’t quite admit the current version of Rule 36 EPC rule was a mistake but the practical effect cannot be denied. The change is welcomed and will lead to a return to a more reasonable approach to the filing of divisional patent applications.  We will be happy to provide specific advice should you have any query.

On 16 Apr 2013, the Court of Justice of the European Union (CJEU) rejected challenges by Spain and Italy to the legislative process used to establish the unitary patent framework. 

Spain and Italy had attempted to block the creating of the unitary patent agreement, both by non-participation and legal challenge to the process used (typically EU law requires all member states to agree to legislation).  The argued among other things that the unitary patent agreement would undermine the internal market and that it would create a barrier to trade and distort competition to the detriment of businesses in their countries. 

Rejecting their challenges, the CJEU said that it cannot validly be maintained that the unitary patent agreement would damage the internal market or the economic, social and territorial cohesion of the Union. 

While there is significant political pressure to conclude the unitary patent agreement and the EU is unlikely to allow the process to be blocked, this is not the end of the line for the challenges. Two further actions for annulment have been lodged by Spain before the CJEU.

By a large majority, the EU Parliament today (11 December 2012) voted to approve legislation that enables implementation of the Unitary Patent and the Unified Patent Court.

Only in the EU could the legislation that finally brought to a conclusion some 40 years of debate, negotiation and compromise on the Unitary Patent be immediately followed in the same document by the “Implementation of the bilateral safeguard clause and the stabilisation mechanism for bananas of the EU-Central America association agreement”.

While not an absolute certainty (the legal challenges by Spain and Italy are still be to decided and additionally member states must ratify the legislation), EU politicians have now had their say and have cast their final votes.  In all likelihood we will be seeing Unitary Patents relatively soon.

Many have commented that the legislation has been rushed and is flawed.  There are certainly many areas that will require clarification in years to come.  The provisions on jurisdiction clearly open up a new era on forum shopping and could result in validity being heard in a court in a different country to that of infringement.  However, there are many positives, particularly to the SME and its budget:

  • Translations will (eventually) be no-more
  • Annual maintenance fees will be less than those that would currently be paid if all EP member states were validated
  • Infringement decisions will be enforceable in all member states without further activity
  • SMEs to benefit from reduced annual maintenance fees

The Unitary Patent System will be administered by the European Patent Office.  Examination will be subject to the same EPC provisions as currently apply.  However, at grant a European Patent can be registered as a “Patent with Unitary Effect” instead of being validated in national member states (the legislation explicitly state that a Unitary and a national patent should not be allowed).  It appears that existing European Patent applications that grant after the implementation date of the Unitary Patent may be registered on grant as Patents with Unitary effect. Therefore we could be seeing Patents with Unitary Effect being granted (and therefore available for use in commencing an infringement action) as soon as early 2014.

There are of course many questions:

  • Will Spain and Italy give up their objections and challenges and join the Unitary Patent System now the Advocate General has issued his opinion suggesting their legal challenges be rejected (and the likelihood of the Court of Justice of the EU agreeing))
  • Will the UKIPO and UK courts finally have to shift towards EPO practice on matters such as patentability of software related inventions?
  • Will the UK courts have to abandon their system of following precedent decisions or will the codified legal systems of France and Germany have to be compromised?
  • Will the EPO now have to take notice of decisions from a body (the Unified Patent Court) outside of the EPO (something it has traditionally been reluctant to do)?

As infringement actions must be brought before local courts or courts in the country in which the patentee has its place of business, will business in countries with lesser developed local court systems be disadvantaged?

One politician commented that the time has come for the politicians to hand over to those responsible for implementing the new systems.  More details will follow here as the implementation detail is released and flaws and issues become clear.

The EU's Advocate General Bot proposes today (11 December 2012) that the Court should dismiss actions brought by Spain and Italy against the Council’s decision authorising enhanced cooperation in the area of the unitary patent

In 2011, agreement could not be reached over the languages to be used for the unitary patent (also known as the community patent).  Spain and Italy were unable to reach a compromise with other states (who had agreed on English, French or German). The Council authorised enhanced cooperation between 25 of the 27 EU Member States – Spain and Italy having refused to participate – with a view to creating unitary patent protection. The aim of that cooperation is to set up centralised EU-wide authorisation, coordination and supervision arrangements.

Spain and Italy have asked the Court of Justice to annul the Council’s decision, maintaining that it is invalid for a number of reasons.

In his Opinion delivered today, Advocate General Bot replies to the arguments put forward by Spain and Italy, suggesting to the Court that they reject the requests on all points.

The Courts decision is not expected until 2013.  The Advocate General's opinion will give some comfort to the European Parliament who are today voting on the text to implement the Unified Patent Court which would decide on validity and infringement issues on unified patents.

The press release and the Advocate General's opinion can be found at Press release and Opinion

Tagged in: community patent EU

A compromise agreement means that the court hearing cases concerning the EU will be split between Paris, Munich and London.  

What has been referred to as the final issue blocking implementation of the EU patent has now been resolved.  

After what appears to have been significant negotiation, agreement over the location of the EU patent court (called the Unified Patent Court) has been reached.  The court will be shared between Paris, London and Munich. The court's central division will be in the French capital, Munich will deal with applications relating to mechanical engineeering, and the UK end of the operation will be responsible for patents concerned with pharmaceuticals and chemistry.

Changes to the regulation meant that the Court of Justice of the EU (CJEU) will not have final jurisdiction in the unified patent regime.

The European Parliament must now approve the agreements on the court and the EU patent system before implementation can take place, although there is reported to be concern in the parliament over removal of the CJEU's jurisdiction.

Tagged in: community patent EU

The EU committee on Legal Affairs optimistically delclares "Done Deal on the EU Patent!".  We're not there yet but we do appear to be moving forward after more than 30 years negotiation.

In a press release issued 2 December 2012, the EU Parliament's rapporteurs declared that a political agreement had been reached on the proposals for an EU unitary patent and language regime.  A proposal for a unified patent court is still the subject of discussion with two (yet to be named) states disagreeing about where the court should be situated (it is believed that it is between London and Germany).

The agreements have a long way to go before coming into effect - they will have to be confirmed by both the EU Parliament and the Council and at least some aspects at national level. The press release stated that a regulation should enter into force in 2014, although we think this is likely to slip.

The proposed regime for translating EU patents would make them available in English, German and French, although applications could be submitted in any EU language. The press release said that translation costs from a language other than the three official ones would be compensated.

Details on the full agreement are not yet public.

Can copyright cover software functionality in Europe? EU Advocate General thinks not.

The boundary between types of Intellectual Property is not always clear. Occasionally, different Intellectual Property types may provide overlapping protection.  For example, a widget may be protectable by both patents and registered designs.

One argument that is raised by opponents of patents for computer implemented inventions is that copyright already provides more suitable protection. However, the extent to which copyright protection extends beyond the code into the "look and feel" or functionality of software has, at least in the UK, never been clear. Copyright infringement generally requires copying of the copyright material to be proven.  Computer software is protected in Europe as a written work and therefore a logical (although narrow) construction would be that copying must be of the written work - the software code, object code, binaries etc. However, UK Courts have reached different conclusions in the past, providing at least some protection under copyright to look and feel.

This issue is the subject of the case SAS Institute Inc v World Programming Ltd that is being considered by the UK High Court.  There appears to be no dispute over copying of actual code - SAS's complaint is that World Programming Ltd copied functionality of the SAS system and its language. As UK law in thsi area is set at the EU level, there is only limited discretion for the Courts to interpret issues it may consider to be unclear.  In the present case, the Judge has referred several questions to the European Court of Justice on interpretation of the law.

As part of the referral process, the EU Advocate General has issued an opinion suggesting that the narrow construction set out above is correct.  He suggests that the Court of Justice should hold that copying of functionality is not an infringement of copyright provided that a substantial part of the original program (code) is not reproduced in the process of copying that functionality.

Guidance on proper interpretation of the law in this area can be expected from the Court of Justice in due course.  The Court of Justice is not bound by the Advocate General's opinion and does sometimes reach different conclusions/interpretation of the issues.  Nevertheless, the scope of copyright protection of computer programs in Europe could well be clarified (and narrowed) shortly.

My personal opinion is that the Advocate General's opinion is correct -  Protection of functionality should be left to the patent system, copyright is about protection of the expression not the idea.