Survey of Recent Developments at the EPO and in Europe Sylvie A. Strobel, Lawyer, International Legal Affairs European Patent Office AIPLA Visit - Munich,

Survey of Recent Developments at the EPO and in Europe

Sylvie A. Strobel, Lawyer, International Legal Affairs

European Patent Office

AIPLA Visit - Munich, 3 March 2011 (Rev. 25.3.11)

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Introduction / Outline

I. Recent Developments at the EPO

A. The European Patent Organisation

B. The European Patent Office

C. Raising the Bar / Amendments to EPC Rules

D. Recent Enlarged Board of Appeal decisions

II. European Legislative Initiatives

A. Unitary Patent

B. EEUPC

III. International Developments

A. Substantive Patent Law Harmonization

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I. Recent developments at the EPO

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A. European Patent Organisation

• The European Patent Organisation: 38 member states: 27 EU + Albania, Croatia, Iceland, Liechtenstein, FYROM, Monaco, Norway, San Marino, Serbia, Switzerland and Turkey

• Extension of effect

of granted European patents

upon request to

Bosnia-Herzegovina

and Montenegro

• Extension Agreement

concluded with Morocco

(not yet in force)

Status: March 2011

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Filings in 2010 (Preliminary)

• In 2010: 235 000 applications filed (+ 11%)• 71 400 Euro-direct (+28 %) • 163 600 Euro-PCT in the international phase (+5%)

Performance indicators in 2010 (Preliminary)

58 100 patents granted / grant rate: 43%– 22% applications abandoned after search report– 35% withdrawn/rejected during examination

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Performance Indicators in 2010 (Preliminary)

• Average procedural duration: 43.5 months

• OFF searches produced on average w/i 5 months

• Accelerated processing: requested in 5.6 % of files

• Opposition rate: 5.2 %

• 2 545 appeals filed at the EPO BoA, up 2.5%

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Top Management Personnel Changes:

• President: Benoît Battistelli (as of 1.07.2010)• VP Legal and International Affairs (DG 5): Mr. Raimund Lutz (as

of 1.01.2011)• VP Operations (DG 1) : Mr. Guillaume Minnoye (as of 1.01.2011)

External Studies:

• Independent IT Study• Independent Study of the Budget and Financial Strategy of the

European Patent Organisation

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Current Projects:• Increased transparency

– EPO policy: increase transparency of legislative process– Proposed: CA/PL and AC Documents related to proposed

rule amendments to be accessible to public on EPO website / MICADO-P

• Improvements in User Consultation– Proposed: envisaged rule amendments to be posted on

website prior to consideration by SACEPO WP Rules; CA/PL and Administrative Council

– Informal open consultation - intention to provide possibility for users and public to file observations online

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C. Raising the Bar / General

Raising the Bar

• First Basket: Evaluation of recent changes– Interaction of Rules 36, 62a, 63 and 137(5)

• Moratorium on changes for the time being

• Brainstorming exercise in SACEPO WP Rules– Current: identification of practice and rule

changes which could be implemented easily

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Amendments to Rules 161 and 162 EPC

• In 2009, R. 161 EPC amended to align EPO PCT with EP granting procedure, requiring mandatory response from applicant upon receipt of the EESR pursuant to new R.70a EPC

• Under new R. 161(1) and (2), applicant obliged to react to a negative WO-ISA, IPER or SISR.

• Protests that current one month period too short: period amended to six months.

• Period for payment of claims fees under R. 162(2) EPC also extended to six months

• Entry into force: 1 May 2011

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Amendment to Rule 71 EPC - new Rule 71a EPC• No change where applicant approves text intended for grant

communicated under R. 71(3) EPC, files translations, pays fees

• New R. 71(6) EPC: if applicant – requests reasoned amendments or corrections to

communicated text; or– replies to proposed changes by the Exam Div. by

maintaining text as on file

Then: Examining division either:– Issues new R. 71(3) EPC communication– Resumes examination proceedings

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Amended Rule 71 and new Rule 71a EPC• Return to pre-2002 practice re: amendments in R. 71(3) EPC

communication: greater latitude for useful suggestions of examiners

• Bibliographical data: New R. 71(3) EPC:

– Applicant informed, expected to verify

– Remedies under Rules 139 and 140 EPC remain applicable

• R. 71 EPC split into R. 71 (Examination) and new R. 71a (Formalities) for greater clarity

– R.71a(2) EPC: Examination may be resumed any time prior to grant

– R. 71a(6) EPC: no refund of claims fees paid if amendments of applicant not accepted by Exam. Div.

• Entry into force: 1 April 2012

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C. Raising the Bar / Second Basket

"Raising the Bar - Basket 1"- Extension to PCT

• Amendment of Rules 46.5 and 66.8 PCT: Indication and basis of amendments filed in the international phase– Equivalent of Rule 137(4) EPC for EP applications– Entered into force: 1.07.2010

• On basis of PCT Guidelines 9.34 and 9.35 : Invitation to clarify what should be searched– Preparation of EPO Practice Note allowing similar practice

re PCT files to that of Rules 62a and 63 EPC for EP applications

– Informal process– Entry into force at a date TBA

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Rule 36(1)(a) EPC implementation

• Time limit for filing voluntary divisionals: 24 months calculated from Examining Division's first communication issued in respect of earliest application for which a communication issued– Complaints of legal uncertainty for applicants

• Operational Improvement: Information on cover sheet of Examiner's relevant first communication, indicating time limit for filing voluntary divisional applications pursuant to R. 36(1)(a) EPC

• Effective: 1.4.2011

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Third Party Observations• Long-standing fixture of the EPC - Art. 115 EPC

• Criticism that third parties not informed of the fate of their observations

• Measures to promote 3PO:– Web-based tool for online filing of 3PO, incl. on-line

template providing guidance– Instructions to examiners to assess 3PO relevance in next

communication

• Prioritisation of files receiving 3POs

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Decision G 1/08 + G 2/07 "Essentially biological processes"• Non-microbiological process for production of plants consisting

in sexual crossing of whole plant genomes + subsequent plant selection, is excluded from patentability as "essentially biological" within meaning of Art. 53(b) EPC.

• A further step of a technical nature enabling or assisting performance of these steps does not remove process from ambit of Art. 53(b) EPC

• If sexual crossing or selection involves an additional step of a technical nature which introduces or modifies a trait in the genome of the plant produced, so that such trait is not the result of the mixing of the genes of the plants crossed, not excluded under Art. 53(b) EPC.

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Decision G 1/08 + G 2/07 "Essentially biological processes"

• To determine whether process is "essentially biological" under Art. 53(b) EPC, not relevant whether the step of a technical nature:

– is a new or known measure,

– is trivial or a fundamental alteration of a known process

– does or could occur in nature; or

– whether the essence of the invention lies in it.

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Opinion G 3/08: Patentability of programs for computers

• Background:

– Perceived need for harmonized approach throughout Europe

– Specific suggestion from UK CA in Aerotel v. Macrossan

– Approx. 100 Amicus Curiae Briefs received

• Referral of 4 questions of law by EPO President pursuant to Art. 112(1)(b) EPC

• Admissible where two BoA handed down different decisions

• EBoA concluded that Referral was inadmissible.

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Opinion G 3/08: Patentability of programs for computers

• T 424/03 "Microsoft" - held that a claim to a program on a computer-readable medium necessarily avoids exclusion from patentability under Article 52(2) EPC

• Deviated from obiter in T 1173/97, "IBM" whereby considered irrelevant whether computer program claimed by itself or on a carrier

– BUT: legitimate development over 7 years, not divergence

– Does not form basis for a Referral under Art. 112(1)(b) EPC

• Single board in different compositions can be basis of an admissible Referral under Art. 112(1)(b)

• Notion of “different decisions” understood restrictively: must be “conflicting decisions” - Obiter dicta relevant to this inquiry

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Decision G 1/09: Pending application

• Issue: is a refused application still pending within the meaning of R. 36(1) EPC until expiry of time limit for appeal when no appeal filed ?

• EBoA held that a refused application is pending until the time limit for appeal has expired, whether or not appeal has been filed.

• Consequences: – Legal certainty: applies in all cases– Date can always be determined from the notification of the first-

instance written decision. – No need to file an appeal to ensure that application still pending

• Obiter: in case of decision to grant: application is pending until the day before the mention of grant is published.

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II. European legislative developments

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A. Unitary patent

• Dec. 2010: No unanimity in EU Council of Ministers on translation arrangements (ES opposed)

• Last resort: Enhanced Cooperation Mechanism ("EC")– Where after reasonable time, unanimity cannot be achieved– Minimum of 9 EU member states - other may join later– Subject to formal authorisation procedure

• State of Play:– 25 EU member states have requested "EC" (except IT + ES)– 14 Dec. 2010: Commission Proposal for Council of

Competitiveness Ministers Decision to authorise "EC" on Unitary Patent

– 15 Feb. 2011: Consent of European Parliament– 9-10 Mar. 2011: Council expected to formally adopt decision

(Qualified majority)

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A. Unitary patent

Commission Proposal for authorising Enhanced Cooperation COM(2010) 790 final– Substance based on general approach of 2009 + Draft

political orientation proposed by BE presidency

• Proposal for a Regulation of European Parliament and Council (TBD)– Co-existence of national, European and Unitary patents– Single EPC procedure for European and Unitary patents -

determination by applicant at the granting stage– Granting of Unitary patents by EPO– "Special Agreement" w/i meaning of Part IX of EPC

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A. Unitary patent

• Proposal for a Council Regulation on Translation Arrangements (TBD)– EPO language regime

• Granted EU Patent published in language of proceedings (authentic text): D,E,F

• Translation of claims in other two EPO official languages– No translations post-grant unless legal dispute– [Mutualisation of costs scheme]– Reliance on high quality machine translations (MT) - to be

available free in all EU official languages - info only• Transitional period: additional translation requirements

possible • If proportionate and temporary• No legal effect• Only until MT becomes available

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A. Unitary patent

• Other issues to be resolved: – Level and distribution key of renewal fees - 2 tiered

• Art. 39: 50% EPO - 50% member states• Of the 50% going to member states, further distribution

key to be agreed– Enhanced cooperation NPOs/EPO– Implementation of Unitary patent within EPOrg

• Jurisdictional issues: post-grant litigation solution for the Unitary patent needed...

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B. European and European Union Patent Court

• "Separate project" from EU patent / Unitary patent

• Efforts to create a centralised specialised Patent Court in Europe– for both European and EU or Unitary patents – Exclusive jurisdiction: infringement + validity post-grant– Powers to order damages, compensation, provisional and

protective measures

• Draft EEUPC Agreement: 8 March 2011: proposed EEUPC Agreement held incompatible with EU law by CJEU

• Situation currently under review: difficulties, but political will + optimism

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III. International Developments

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A. Substantive Patent Law Harmonization

• Sept. 2010: Group B+ Plenary meeting: – Commitment to SPLH reaffirmed– Chair calls for proposals from members and willingness to

lead initiatives for priority work in SCP: no proposals going to SPLH per se.

• 7-8 March 2011 - APEC Meeting - Washington, DC– Kick-starting the harmonization process– Paper containing recommendations – EPO granted observer status– Outcome: general statement of intent

• In US, concrete moves: – Senate Bill S. 23 passed by Senate - awaiting action from HR

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Thank you for your attention...

Me Sylvie A. Strobel Lawyer, International Legal AffairsEuropean Patent Office, Munich

Tel: +49 89 2399 5258E-mail: [email protected]