EPO official fees are rising by about 5% from 1 April 2008. In
addition there are significant increases to renewal fees (as much as
35% under normal conditions or 50% if paid late) and changes to the
charging of excess claims.
Further changes to excess claim and designation fees have
also been announced that will apply from 1 April 2009.
Excess claim Fees
The manner and charges for so-called excess claims changes as follows:
|
Effective date |
Definition of excess claim |
Charge per excess claim |
|
Pre 1 April 2008 |
11th and subsequent claim |
EUR 45 |
|
1 April 2008 onwards |
16th and subsequent claim |
EUR 200 |
For claim sets modelled on the US based 20 claim limit, these changes will
result in an increase of EUR 550 payable in official fees.
We therefore recommend that claim amendments be considered on filing
to reduce the number of claims.
Renewal Fees
Renewal fees are due annually on European patent applications for the third
and each subsequent years. The fees increase with the age of the
application. Renewal fees for the later years will increase by up to 35%.
The fee for late payment of a renewal fee in the 6 months following the due
date will increase from 10% of the late renewal fee to 50%.
Please note that the above increases apply to all fees paid after 1
April. The increases can be avoided by paying fees early. Renewal fees can
be paid up to one year in advance.
As of 1 May 2008, the translation requirements needed to validate a
granted European Patent in many EPC contracting states will be
dropped.
It will still be necessary to file a translation of the claims into French
and German (assuming that the application is in English) prior to grant.
However validation costs are expected to drop significantly.
The current signatories to the
|
Country |
Requirements |
|
|
No Translation |
|
|
No Translation |
|
France (FR) |
No Translation |
|
|
No Translation |
|
|
No Translation |
|
|
No Translation |
|
|
No Translation |
|
|
English description, Dutch claims |
|
|
English description, Danish claims |
|
|
English description, Swedish claims |
|
|
English description, Icelandic claims |
|
|
English description, Croatian claims |
|
|
Latvian claims
and title |
|
|
Slovenian claims |
Joining the London Agreement is optional.
For countries not signing up, the current law will remain i.e. they
may require full translation of the patent specification into their national
language in order for the patent to take effect in their country. It is not
expected that countries such as
The UK Intellectual Property Office (UKIPO) have announced that the
translation requirements for European patents granted in French or
German will be dropped for European patents granted on or after 1
February 2008. A patent
application in French or German granted by the European patent
office and designating the
For patents granted before 1 February 2008 in French or German, a
translation is still required within 3 months from grant for the
It will be appreciated that an English translation of the claims must still
be filed at the EPO prior to grant.
A recent UK
High Court decision has challenged the policy of the UKIPO to
automatically refuse patent application claims for computer
programs.
In 2006, the UKIPO began its policy to refuse claims drafted to computer
programs, whether in independent form or dependent on method claims.
The policy was issued by the UKIPO in a practice note in response to the
Aerotel and Macrossan decisions of October 2006.
The practice note stated that the UKIPO would refuse all patent
claims directed to computer programs, regardless of whether any
corresponding apparatus or method claims were allowable.
UKIPO Examiners have, in cases following the practice note, stated on
record that method claims would protect computer program implementations.
The policy was inconsistent with that applied by the EPO where computer
program claims have been allowed over this time period.
In the decision of Astron Clinica Ltd and others, and the Comptroller of
Patents Designs and Trademarks, (2008 EWHC 85 (Pat)) handed down on 25
January 2008, Mr. Justice Kitchen argued that the current UKIPO approach is
essentially incorrect. He states:
“In a case where claims to a method performed by a computer running a
suitably programmed computer, or to a computer programmed to carry out the
method are allowable, then in principle, a claim to the program itself
should be allowable.”
In response to this decision, the UKIPO has changed its practice, and has
stated that it will allow claims directed to computer programs so long as
they relate to an allowable computer implemented invention. Not all claims
would be allowable, however, only those that are “drawn to reflect the
features of the invention that would ensure patentability of the method
which the program is intended to carry out if it is run”.
This decision and policy change does not affect the test for excluded
subject matter, and is unlikely to resolve the significant issues plaguing
As of 7 April
2008, fast track trade mark examination is available at the UKIPO.
Under the new
(optional) procedure, the UKIPO undertakes to examine new applications and
issue its examination report within 10 clear business days of the filing of
the application, compared to the current average period of 1 month between
filing and examination.
UK and Europe – an increasing gulf in patentable subject matter?
The UK Patents Act 1977 and the European Patent Convention use exactly the same terminology to define subject matter that is excluded from patentability. These areas of excluded subject matter include computer programs and schemes rules and methods for doing business and apply “only to the extent that a patent or application relates to that thing as such”.
However, whilst the wording used is the same, very different mechanisms have been used by the UKIPO (the new name for the UK Patent Office) and the EPO in deciding whether a patent application relates to excluded subject matter “as such”. Recently, those differences have been increasing. In fact, the Judges of the UK’s Court of Appeal were so concerned about these differences in the Aerotel/Macrossan case, they asked the EPO to clarify this point of law. Regrettably, the EPO declined to do so and this has left the UKIPO and the EPO to go their own ways.
Up until late 2006, the UKIPO tried their best to follow the EPO’s approach despite the lack of clarity over what is and is not technical. However, in the above Aerotel/Macrossan case, the UK Court of Appeal decided this was not possible due to contradictory decisions being issued by the EPO on the same points. The approach decided by the UK Court of Appeal was to determine whether the claimed contribution (the novel and inventive features) fell wholly within areas of subject matter excluded from patentability. A final check looked for technical nature in the contribution but was said to be optional. The problem that arose from this approach is the UKIPO’s interpretation. Senior Examiners of the UKIPO have decided in many of the 30 or more hearings on this point that followed the Aerotel/Macrossan case that an invention implemented in software on a conventional computer system was a “computer program as such”. Whilst we acknowledge that many of these cases are probably borderline on whether they are business methods or not, it is a concern that arguments relating to technical effect appear to be being discounted due to the nature of implementation of the invention. These are just published decisions and we expect there are many such objections that are also being raised during examination.
For now, all we can say is watch this space. The UK is clearly in a state of flux on this point and there is no easy way to sidestep the problem. Our current recommendation is that EPO based filings be considered instead of UK based filings until the issues are resolved
As always, when drafting software based applications, particular emphasis should be given to possible novel and inventive implementation features (data processing speed improvement, reduced bandwidth use …) as these could provide escape routes should problems be encountered during prosecution.
A handful of recent decisions from the UKIPO offer possible hope. Applications to a number of software implemented inventions where the invention had a real-world link have been allowed (for example, one of the cases concerned a data processing method that produced improved seismic imaging data).
On 28 June 2007, the Enlarged Board of Appeal of
the EPO finally reached decisions on points of law relating to the
validity of divisional patent applications (cases G 1/05, G 1/06 and
G 3/06)
The decisions have been welcomed as they confirm former practice and
in general they allow applicants to correct deficiencies of a
divisional application which result from deviations of the text
relative to the text of the parent application and which are
only objected to under Article 76 (1) EPC later in prosecution.
Where a divisional application is filed containing added subject matter, it is permissible to amend the application to delete such matter (providing the amendment conforms with other EPC requirements) irrespective of whether the parent application is still pending.
In the case of cascading divisional applications,
the claims of a second or
further divisional application do not have to be limited to subject
matter claimed in the immediate parent application. It is
only necessary for the relevant subject matter to have been
disclosed in each of the preceding applications on filing and to
have been present in the immediate parent at the time of filing the
divisional application in question (i.e. not
unequivocally abandoned).
We recommend when filing a divisional
application that all of the relevant
content of the parent application, including the subject matter of
the original claims, is included.
The full text of the decisions can be viewed at
http://www.epo.org/patents/appeals/eba-decisions/date.html.
We have introduced a special reduced charge
for the European regional phase of a PCT application. Please
contact us for an exact price for each case, but a typical filing cost including
our charges and all official fees including the examination fee would be
$5400 plus $126 per country designated.
The Good, The Bad and The Ugly - Changes
to European Patent Law under EPC2000
December 13 2007 finally sees the overhaul of the European Patent Convention agreed at a Diplomatic Conference back in November 2000. To adapt and harmonise European patent law with international law, many of the changes make the lives of applicants and their representatives easier. But beware: some of the changes only make the life of the EPO easier.
The Good:
- Relaxation of requirements to obtain a filing date
- It may be possible to add a missing part of the description or drawings
- Late declarations of priority and corrections to priority declaration possible
- Re-establishment of rights available for priority period
- Further processing will be available as a remedy for many more missed deadlines
- No longer necessary for “second medical use claims” to be in Swiss-form
- Central limitation/revocation procedure post grant
The Bad:
- Prior co-pending European applications published after priority date will be prior art for novelty purposes for all designated states
- Where there is a plurality of inventions, European ex-PCT application must be limited to the first invention mentioned in claims filed at European regional phase entry
No longer possible to pay additional search fees.
- Fee payable for late filing of a sequence listing
The Ugly:
- Due account of equivalents for determining extent of protection
It is as yet unclear what the effect of this will be; we should emphasise that reliance on this provision is no substitute for proper drafting of claims at the outset.
- Transitional provisions
These will be complex, and further advice should be sought from us where applicable.
It is not yet clear how applicants will be affected by these changes, or indeed how some of these will be implemented in practice. However, it will be interesting to see how European practice develops in the future as a result.
The above is merely an overview of the changes most
likely to be of interest. In light of the space available it has
not been possible to provide detail. However, we would be happy to
provide further advice on a case-by-case basis.
Norway to Join EPO
Norway is set to become a member of the
European Patent Organisation on 1 January 2008. This will bring
the total member countries to 33. All member countries can be
designated in a European patent application upon payment of just seven
country designation fees.
Priority documents: electronic exchange between the EPO and USPTO
For a European patent application claiming priority
from a US first filing, it is no longer necessary to file certified
paper or digitally signed copies of the US first filing
in order to satisfy the requirement to file the priority document at the
EPO under Article 88(1) EPC. Instead, filing form PTO/SB/39 at the
USPTO will instigate an automatic retrieval from the USPTO.
However, applicants may still file digitally signed electronic priority
documents at the EPO should they wish.
For US applications claiming priority from a
European first filing, retrieval of the priority document from the EPO
will be automatic and without formalities for US filings made on or
after 4 June 2007. To obtain the exchange of a priority document from a
first filing in another office and contained in the EPO electronic file,
Form PTO/SB/38 must be filed at the USPTO giving the number of the US
file.
Trade Marks: Important Changes to UK Intellectual Property Office (UK-IPO) Examination Practice
With effect from 1st October 2007 the UK Intellectual Property Office (UK-IPO) will no longer raise objections against UK national trade mark applications or international registrations designating the UK based on conflicting earlier trade marks. The effect of this change in practice will be to place the onus on trade mark owners to exercise greater vigilance in monitoring the registers with a view to challenging conflicting new applications.
Instead of refusing to register conflicting marks ex officio, UK-IPO procedure will be as follows:
The UK-IPO will still search the relevant registers as part of the examination process, and will send the results to the applicant, but largely for information only. The applicant may then either:
- continue with the application despite the
existence of the conflicting marks;
- restrict the list of goods and/or
services to try to overcome the perceived conflict;
- withdraw the application.
If the applicant decides to continue with the application the UK-IPO will send notification to the owners of the “cited” marks drawing their attention to the potential conflict. The UK-IPO will automatically notify the owners of earlier UK national marks and international designations, but not CTM owners, unless they “opt in” by filing form TM6 with the UK-IPO and paying a fee for the notification service. No precise fee has been decided on by the UK-IPO at the date of writing, but the UK-IPO is apparently considering the figure of £50 for a three-year period of notification.
Both trade mark owners and new applicants will accordingly need to give careful consideration to the best way of protecting their existing rights and/or improving their prospects for registering new marks, under the new examination regime.
Trade Mark Owners
Owners of UK national registrations, UK designations of International registrations, and Community trade marks can no longer rely on the UK Intellectual Property Office to act as the first line of defence for their trade mark rights in the UK. CTM owners will not even be automatically notified of a potential conflict unless they “opt in” to the UK-IPO notification scheme. We shall shortly be writing to clients with our recommendations for dealing with this significant change in examination practice.
Applicants
New applications will no longer undergo the filtering process of full examination on relative grounds, and will accordingly meet with far more risk of opposition or even of an infringement action than was previously the case. One obvious way of reducing this risk is to carry out an appropriate trade mark search before proceeding with any UK trade mark application. Whilst searching provides no absolute guarantee that an opposition will not be filed by an over-zealous trade mark owner, it should at least allow the applicant to prepare in advance for any such eventuality.
As with all change of this nature, the important thing is to be prepared well in advance, particularly during the initial period, when inconsistencies of UK-IPO practice may arise. If in doubt please feel free to contact John Reddington or Ian Tollett.