WP IP

News and commentary on IP issues

European Patent Office pushes use of video conferences in Opposition Division oral proceedings

 As of January 2021, parties will no longer have free choice on whether a hearing (oral proceedings) during examination or opposition is in person or via video conferencing before the European Patent Office (EPO). Video conferences will be the default. 12 months ago, we would have had to fight for a hearing (oral proceedings) to be held with t...
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139 Hits

DABUS Appeal Rejected by High Court

The DABUS appeal was rejected by the High Court this week highlighting further the need for fundamental review of patent laws to keep up with the very technological advances they exist to protect. Dr Thaler is attempting to establish that DABUS (the AI machine) is the creator of its inventions. In the original decision by the UK IP Office it was ac...
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250 Hits

Supplementary Protection Certificates: Only for First Use of an Authorised Product

A Supplementary Protection Certificate (SPC) can provide up to five years additional protection for a patented active ingredient of a pharmaceutical product that has received a marketing authorisation. The objective is to compensate a patent holder for the delay in being able to use the patent by the need to obtain the marketing authorisation. An S...
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119 Hits

UK IPO Calls for Views on Patents for AI Inventions

We have previously written about our involvement in filing and prosecuting patent applications for two inventions created by the AI inventor DABUS, and naming DABUS (the true deviser of the inventions) as the inventor.The UK IPO found the inventions to be both novel and inventive, and therefore, in principle, protectable by patent.  ...
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96 Hits

UK Withdraws from Unified Patent Court system - but likely with less impact than you would expect

On 20 July 2020, the UK Government announced its official withdrawal from the Unified Patent Court (UPC) Agreement.  This is a disappointment but not unexpected.   Does this mark an end to over 40 years of efforts to produce a harmonised IP litigation process in Europe?  Of course not.  The UPC has, in recent year...
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432 Hits

UK Patent Courts Warn Against Greedy Claims

Ever since the Decision issued back in 1997 in the case of Biogen v Medeva the concept of insufficiency has been extended, particularly in the chemical and biotech fields, to include claims that have "excessive breadth" (so-called "Biogen insufficiency"). The Courts in the UK have applied this frequently to revoke patents that they decide clai...
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395 Hits

UK Supreme Court invalidates transgenic mouse patents for insufficiency

Regeneron Pharmaceuticals' European patent EP 1360287 and its divisional EP 2264163 relate to methods of producing transgenic mice able to produce antibodies having human sequences, and the mice produced thereby. These patents covered the idea of producing mice having mixed human-murine gene sequences that could be subsequently modified t...
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578 Hits

European Patent Office Suspends Late Payment Fees on Renewals

The European patent office has announced here that until 31 August 2020, no surcharge is payable for late paid renewal fees.  This provision applies to EPO renewal fees having a deadline (without extension) between 15 March 2020 and 30 August 2020.  Cases falling into this provision, will be deemed validly paid if the renew...
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528 Hits

Plants Produced by Essentially Biological Processes are not Patentable in Europe

vegetables
You might think that an article dealing with broccoli, tomatoes and peppers ought to be on a recipe blog. However, these are the names of high profile cases in an area that, over recent years, has seen more change in European patent law than perhaps any other. It now seems that the European Patent Office wants closure. We reported here on the most ...
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668 Hits

Clarification on patentability of plants and animals at European Patent Office?

The European Patent Office's Enlarged Board of Appeal, decided that "dynamic interpretation" on legal issues is possible and has issued a ruling that reverses its previous position and significantly changes the patentability of plants, plant materials and animals at the European Patent Office. The Enlarged Board of Appeal, ...
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666 Hits

German Constitutional Court deals blow to Unified Patent Court

On Friday 20 March 2020 the German Federal Constitutional Court dealt a blow to the Unified Patent Court (UPC), issuing a decision to uphold a constitutional complaint lodged against the German ratification of the UPC agreement. The complainant (a German patent attorney), had argued that the ratification of the UPC agreement was contrary to the Ger...
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504 Hits

European Patent Office Fee Increases

The European Patent Office (EPO) has announced its biennial fee increases.  These take effect from 1 April 2020. Details can be found here. As in the past, the majority of the increases are explained to be inflationary with an average increase of 4-5%. An notable exception is the appeal fee, which will be increasi...
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UK Ratifies Unified Patent Court (UPC) Agreement

The United Kingdom's Intellectual Property Minister Sam Gyimah announced on World IP day, 26 April 2018, the ratification by the UK of the Unified Patent Court (UPC) Agreement. The UPC agreement also implements the Unitary Patent, a single EU Patent that will be available to applicants via the European Patent Office. The UPC and Unified Patent offer many advantages to patent holders including reduction in translation and renewal costs and simplified and streamlined litigation.

Alexander Ramsay of Sweden, who chairs the UPC Preparatory Committee, is reported in the Financial Times to have said:

Some of the wording of the agreement will have to be amended after the UK leaves the EU but I would very much like Britain to participate in the UPC in the long term. The whole of Europe will benefit from the system having the broadest possible geographical coverage.

The UK is the 16th country to ratify the UPC Agreement, the others being Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, and Sweden.   As the UK, France, Germany and 10 other countries must have ratified the Agreement for it to enter into force, only Germany’s ratification is now required.  The Agreement will enter into force on the first day of the fourth month after Germany deposits its instrument of ratification.

Germany’s completion of the procedure is currently on hold due to a constitutional complaint that is expected to be heard by its courts later in 2018.  Other countries, such as Bulgaria, Latvia, Lithuania and Slovenia, are close to completing the procedure.  If the German courts dismiss the complaint by the summer, it is likely the UPC will open in early 2019.

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1068 Hits

EPO Added Subject Matter Test is Relaxed

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.

 

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963 Hits