Williams Powell

British and European Patent and Trade Mark Attorneys

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Over the past few years, the assessment by the European Patent Office of any amendments made to an application or patent in connection with the issue of added subject matter has been extremely strict.  The commonly applied test has been to require the amendments to be supported word for word in the original specification and ascribed directly to the subject matter being claimed, that is not to any one specific embodiment only.  This often led to an applicant or patentee being prevented from amending the application or claims beyond the very strict wording of the written description as filed, irrespective of what the application actually taught the skilled person.  While such a stance can be mitigated with very careful drafting of the specification in the first instance, it has led in our experience to many applicants being denied the opportunity to make the most of their patent applications.

The EPO has finally relented on this test, we believe following the realisation that some applicants were being denied protection for patentable subject matter which the skilled reader would have been able to gather from the disclosure in the application.  The EPO is changing the threshold for determining added subject matter from a strict forensic legal examination to seeking to understand what the skilled person would have made of the original disclosure and therefore the extent of the original teaching.  The change in the EPO’s approach began formally with the decision of the Enlarged Board of Appeal of the EPO, which is equivalent to the Supreme Court,  in its decision G2/10.  The Enlarged Board of Appeal held that an amendment should be regarded as introducing subject-matter if the overall change in the content of the application (whether by way of addition, alteration or excision) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application, even when account is taken of matter which is implicit to a person skilled in the art.  In other words, when assessing an amendment for added subject matter, the focus should be on what was really disclosed to the skilled person in the application as filed.  In particular, the Examiner should avoid disproportionally focusing on the structure of the claims or the literal wording of the original text, to the detriment of what the skilled person would have directly and unambiguously derived from the application as a whole.

This is a welcome change in practice but we expect will take some time to become habitual in the practice of the Examining and Opposition Divisions of the EPO.

Notwithstanding this change, we expect that the EPO will maintain a relatively strict approach to the assessment of added subject matter introduced by amendments made to an application or patent.  Careful drafting of the original application therefore remains of paramount importance.  In this regard is it critical to keep in mind that the EPO will be looking for technical pointers to the skilled person in the original disclosure, which is likely to put legalese often introduced into patent specifications into the spotlight.  That is, we expect the EPO to continue to view evidently legal phraseology with scepticism.  Examples include numerous long lists of options for certain elements of a device or method, generalised broadening passages relating to alternatives and so on.  Additionally, we do not expect the EPO to relent in its assessment of new claim combinations not originally covered in the application, making it important to ensure that multiple dependencies are included in PCT and European applications at the time of filing, that all alternatives are carefully tied to all of the embodiments to which they are intended to apply and that they are clearly distinguished from other features not essential with those alternatives.  We would be happy to advise on specific cases or in connection with specific issues.

 

Tagged in: EPO patents

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

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

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.

Uses of human embryos for industrial or commercial purposes are excluded from patentability in Europe and the UK.  In Decision G2/06 of the Enlarged Board of Appeal of the European Patent Office, it was held that human stem cell cultures that can only be obtained by destroying human embryos are not patentable.  But what is a human embryo?

In October 2011, in the Brüstle case (Case C-34/10), the Court of Justice of the European Union (CJEU) considered whether an unfertilised human oocyte parthenogenetically activated to divide falls under the term “human embryo”.  The CJEU controversially held that a “human embryo” is any unit capable of commencing the process of development of a human being, even if that unit could never have completed development into a human. 

It was further held that an invention is excluded from patentability if prior destruction of a human embryo is required at any stage, even if that destruction occurred long before implementation of the invention or if the description of the technical teaching claimed does not refer to the use of human embryos. 

Although not legally bound to do so, the European Patent Office follows this decision, and the Guidelines for Examination have been updated accordingly:
http://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_ii_5_3.htm

The UK Intellectual Property Office has considered whether it able to depart from the Brüstle decision of the CJEU.  Whilst it concluded that it was permitted to do so, it decided that extreme caution must be exercised in departing from any aspect of the CJEU’s decision.  It should therefore be anticipated that the UK IPO will follow the EPO in applying the Brüstle decision when examining UK patent applications.

Tagged in: biotech EPO EU patents

A disclaimer is an exclusion, in negative terms, of subject matter from the scope of a claim.  Disclaimers are generally used to carve out from the claim scope something that is co-incidentally covered by prior art but which is not relevant to overall novelty/inventive step of an invention. In its decision of G2/10, the Enlarged Board of Appeal at the European Patent Office has considered whether and when it is allowable to amend a claim to disclaim subject matter which was disclosed as an embodiment of the invention in the original application.

In G1/03, the Enlarged Board laid out strict rules governing when it is allowable to use a disclaimer which was not disclosed in the application as filed.  Subsequent case law at the EPO generally adopted the approach that even if the subject matter excluded by the disclaimer was disclosed in the application as filed, the disclaimer would count as an undisclosed disclaimer if the subject matter had been originally disclosed as part of the invention.  The reasoning behind this was that to avoid the rules of G1/03, the disclaimer itself needed to be disclosed, not just the subject matter excluded by the disclaimer.  However, in G2/10, the Enlarged Board found this approach to be incorrect.  It found that the rules laid out in G1/03 only apply to situations where neither a disclaimer nor the subject matter excluded by the disclaimer was disclosed in the application as filed. 

In the present decision, the present Enlarged Board decided that the criteria of G1/03 only applies to disclaimers where both the negative limitation and the excluded subject-matter were not disclosed in the application as filed. In contrast, the Enlarged Board decided that disclaimers which exclude subject-matter disclosed as part of the invention in the original application do not necessarily add subject-matter. Whether such a disclaimer would be allowable is dependent on normal added subject-matter tests (whether it is directly and unambiguously disclosed in the application as filed).

In reaching its decision, the Enlarged Board of Appeal also rejected the argument that the disclosure of a generic claim and a specific embodiment necessarily discloses all of the other embodiments of the generic claim as the logical complement of the specific disclosed embodiments and such a disclaimer cannot therefore add subject matter.

The Enlarged Board found that the question to be asked was whether there is basis in the application as filed for the subject matter remaining in the claim, and that determining whether or not that is the case “requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject matter and its relationship with the subject matter remaining in the claim after the amendment”. 

In particular, the Enlarged Board suggested that where, in the application as filed, “an invention has been disclosed and claimed in general terms and different specific embodiments or groups thereof have also been disclosed, and one of these later excluded from the requested protection by the disclaimer, the remaining subject matter, i.e. the remaining general teaching, will normally not be modified by the disclaimer”.  However, the Enlarged Board contrasted this with the situation in which “the disclaimer would have the effect of confining the subject matter remaining the claim to a sub-group of the originally claimed subject matter, which sub-group could not be regarded as disclosed in the application as filed”.  It considered that such a disclaimer would impermissibly add subject-matter and would therefore not be allowable.

Tagged in: disclaimers EPO patents