European Patent Law Update

Presentation to the Houston Intellectual Property Law

Association

Stephen Gill

24 January 2008

Agenda• EPC 2000

• The London Agreement

• EPO fees

EPC 2000

The EPC 2000• Major EPC revision, completed in 2000.

• Very many changes, major and minor.

• Came into force on 13 December 2007.

• Some of the interesting changes …

Unity – PCT regional phase• Under EPC 1973 - where EPO found European

regional phase application lacked unity, the applicant

could request searches in respect of any of the

inventions identified.

• Irrelevant who was ISA.

Unity – PCT regional phase• Under EPC 2000 and EPO = ISA:

• No chance now to search unsearched non-unified subject

matter in EPO regional phase – can only elect subject matter

of PCT search.

• If EP/ISA raises unity objection, consider further searches in

reply – otherwise EP divisional will be needed.

Unity – PCT regional phase• Under EPC 2000 and USPTO (or KPO etc.) = ISA

• Only the invention appearing first in the claims at the time of

the supplementary European search can proceed.

• If EPO finds lack of unity, irrelevant that US/ISA did not, and

no warning.

• Think about reordering the claims when entering the EP

regional phase or in response to Communication under Rule

161.

Amendment after grant • Under old system, after grant you could amend at

the EPO only in opposition proceedings.

• Self-opposition was forbidden by EPO.

• So, voluntary amendment not possible at EPO –

must be at national patent offices.

• National amendments are often impossible or

difficult (different laws), and expensive to carry out in

multiple countries.

Amendment after grant• New procedure in EPC 2000 – limitation or

revocation of a granted EP patent at the EPO is.

• Proprietor can apply to EPO to:

• Amend the claims, or

• Revoke the patent.

• Examined only for compliance with:

• Article 123(2) – added matter

• Article 123(3) – added scope

• Article 84 – clarity

Amendment after grant• Main features of procedure:

• No time limit – life of patent.

• Not allowed if opposition exists – opposition always

dominates.

• Ordinary examiners handle it.

• No need to state reasons for wanting the amendment.

• National patent offices may require translations/fees (as

after an opposition), so cost will still be significant.

• Amendment is effective for all designated states.

Medical use claims• New claim format for second medical uses.

• EPC 1973: “Use of X in the manufacture of a

medicament for the treatment of disease Y”.

• EPC 2000: “X for use in the treatment of disease Y”

• Same format as 1st medical use claims, but limited

to a specific use, not use in methods of treatment or

diagnosis generally.

Medical use claims• Allows greater flexibility in claiming.

• More intelligible – some courts dislike existing

second medical use claims.

• Applies to applications still pending when EPC 2000

came into force.

• Should be applicable to any new “specific” use

(dosing, routes, patient subgroup, etc.)

Priority• New right to add or correct priority claim up to 16

months from priority date (previously this was done

as correction, with extra requirements).

• Re-establishment of rights available in respect of

12m priority period, for applications filed within 2m of

expiry of 12m period.

• High threshold

• Also newly possible to claim priority from application

in WTO but non-PC country (e.g. Taiwan).

Designations• At time of filing EP application, all contracting states

deemed to be designated.

• But, at present, designations still subject to payment

of designation fees.

• Coming soon (1 April 2009), a flat rate designation

fee.

Petition to Enlarged Board• But only in cases where:

• Fundamental violation of right to be heard or fundamental

procedural deficit, for example:

• Oral proceedings not appointed.

• Failing to decide on request.

• Non-member of Boards of Appeal or member with conflict of

interest takes part.

• Criminal act may have affected decision.

EPC 2000

Questions?

London Agreement

The London Agreement• Agreement to reduce translation requirements at

grant of EP patent

• Optional system; any EPC state can join

• Not all EPC states have joined the Agreement

Present EP grant procedure • The EPO issues the Communication under Rule

71(3) (previously Rule 51(4)) allowing an EP

application.

• When the application is in English, the applicant

must then:

• File translations of the claims into French and German

• Pay grant fees

• This is unchanged under the London Agreement

Present EP grant procedure • After grant, necessary to file translation of whole

patent specification into an official language of each

EPC state in which the patent is to take effect.

• Time limit is normally 3 months from grant date.

• This can be an expensive step, if many countries are

selected, due to the cost of translations.

EP grant procedure under the London Agreement

• The members of the Agreement agree not always to

require translation of a granted EP into their national

language.

• The procedure is unchanged in countries which have

not signed up to the Agreement.

EP grant procedure under the London Agreement

• If a member state has an EPO language (English,

French, German) as a national language, they will

never require translation of the Patent.

• For example, Germany would accept validations of

EPs in French or English.

EP grant procedure under the London Agreement

• If a member state (for example Denmark) does not

have an EPO language as a national language, they

will nominate at least one EPO language in which

they will accept validations of EPs.

• For example Denmark will accept validations in

English, but not in French or German.

• Translations of the claims in to the national language

may be required.

EP grant procedure under the London Agreement

• If all EPC states joined the agreement, translation

into French and German would be sufficient for

validation in all EPC territories.

• Not all states have yet joined.

Translation definitely not required in:• UK

• France

• Germany

• Malta

• Ireland

• Luxembourg

• Monaco

• Switzerland

• Lichtenstein

Translation of claims only into a national language required in:

• Sweden (English is nominated language)

• Denmark (English is nominated language)

• Iceland (probably English will be nominated language)

• Netherlands (probably English will be nominated language)

• Latvia (nominated language not known yet)

• Slovenia (nominated language not known yet)

Translation into a national language will be required in:

• Italy

• Spain

• These countries have not signed up to the London

Agreement, and are not likely to do so in the foreseeable

future

Translation into a national language may be required in:

• These countries have not yet signed up to the

London Agreement, and we do not know whether

they will do so

TurkeyLithuaniaEstoniaFinlandNorwayCyprusGreeceCroatia

AustriaHungaryCzech RepublicSlovak RepublicPolandRomaniaBulgariaBelgium

Entry into force• Exact date not yet known.

• Probably sometime in 2008.

• Any European patent that is granted after entry into

force of the Agreement will be affected.

EPC Member States

All of EU + Iceland, Norway

(from 01/01/08), Croatia (from

01/01/08), Switzerland,

Turkey

English Spec – no

translation currently needed:

UK, Ireland, Luxembourg,

Monaco, Malta

LA Members – no translation

will be needed:

UK, Ireland, Luxembourg,

Monaco, Malta, Germany, France, Switzerland, Lichtenstein

LA Members – claim

translations into national

language will be needed:

Sweden, Denmark,

Netherlands, Iceland, Latvia,

Slovenia

Likely LA Members:

Norway, Finland, Estonia,

Lithuania

Countries with French or

German as official language

that have not yet joined:

Belgium, Austria

Unlikely to Join:

Italy, Spain

Example - 1• UK, France, Germany only

• Big saving.

• Translations of the granted patent into French and German

will not be needed.

Example - 2• UK, France, Germany, Belgium, Austria

• No saving.

• BE and AT are unlikely to join at day one and will require

translations of the granted patent (into French and German,

respectively).

Example - 3• UK, France, Germany, Sweden, Denmark

• Big saving.

• Translations of the granted patent not required.

• Only translation of the claims is required, into Swedish and

Danish.

Example - 4• All countries

• Saving is substantial but perhaps not a large proportion of

the total.

• Saving is by reduction from translation of the granted patent

to translation of claims alone for SE, DK, IS, NL, LV and SI.

Possible action now• If the Rule 71(3)/ 51(4) communication has recently

been received, delaying grant might allow cost

saving, using the London Agreement.

• For example, use “further processing” of 71(3)/ 51(4) time

limit, for a small cost.

• And/or late pay renewal fee.

London Agreement

Questions?

EPO Fees

Changes in two tranches• 1 April 2008 (binding on fees paid on or after that date):

• Claims fees

• Designation fees

• Page fees

• Renewal fees

• 1 April 2009 (applies to applications and regional phase entries

filed on or after that date):

• Claims fees

• Designation fees

• Page fees

Claims fees• From 1 April 2008:

• 15 “free” claims instead of 10.

• Cost per claim over first 15 increasing from €45 to €200.

• From 1 April 2009:

• €500 per claim over first 50

Claims fees• Examples

• 17 claims

• At present: 10 (free) + 7 (€45) = €315

• 1 April 2008 and 1 April 2009: 15 (free) + 2 (€200) = €400

• 30 claims

• At present: 10 (free) + 20 (€45) = €900

• 1 April 2008 and 1 April 2009: 15 (free) + 15 (€200) = €3,000

• 60 claims

• At present: 10 (free) + 50 (€45) = €2,250

• 1 April 2008: 15 (free) + 45 (€200) = €9,000

• 1 April 2009: 15 (free) + 35 (€200) + 10 (€500) = €12,000

Designation fees• From 1 April 2008:

• Cost per designation increasing from €80 to €85.

• But still one fee per country up to seven.

• From 1 April 2009:

• Flat rate of €500 for designating “one or more” states

Designation fees• Examples

• All states

• At present: 7 x €80 = €560

• 1 April 2008: 7 x €85 = €595

• 1 April 2009: €500

• 2 states

• At present: 2 x €80 = €160

• 1 April 2008: 7 x €85 = €170

• 1 April 2009: €500

Renewal fees

Year at present from 1 April 2008 % increase

3 400 400 0

4 425 500 18

5 450 700 56

6 745 900 21

7 770 1000 30

8 800 1100 38

9 1010 1200 19

10+ 1065 1350 27

Renewal fees• … and late payment surcharge increasing from 10%

of relevant fee to 50% of fee

• So:

• Late payment can be costly

• Delay payment of renewal due in 2008 in hope of falling under

London Agreement?

• Renewal fees can be paid up to one year in advance, so

consider paying early to avoid 18-56% fee increase.

Page fees• From 1 April 2008:

• Cost per page of first 35 increasing from €11 to €12.

• From 1 April 2009:

• Page fees move:

• At present paid at allowance

• From 1 April 2009 paid on or shortly after filing

EPO Fees

Questions?

MORE QUESTIONS?

Stephen Gillstephen.gill@mewburn.com

Mewburn Ellis LLPYork House, 23 Kingsway,London WC2B 6HP, UKTel: +44 20 7240 4405Fax: +44 20 7240 9339