Tag:  “EPC”  | (6) posts

Introduction of fee reductions for small entities before the EPO

Effective 1 April 2014 the Administrative Council (AC) of the EPO has changed the rules for obtaining reduction on certain fees charged in relation to the procedure before the EPO [1].

The requirement that the applicant must be a resident of or have principal place of business is in an EPC contracting state with an official language other than English, French or German or be a national of such a state who is resident abroad has not been changed.

However, the reduction obtainable has been increased from 20 % to 30 %. Now, who wouldn’t want to obtain such a reduction? Everybody, obviously! However, not everybody is eligible for fee reductions. Thus, to find out whether you are eligible for a fee reduction, read on.

According to the new Rule 6 EPC the applicant must also be a small and medium-sized enterprise (SMEs), a natural person or a non-profit organisation, university or public research organisation.

These types of applicant are defined in the EU Commission’s recommendation of 6 May 2003 [2], and outlined in a somewhat simplified manner in the Official Journal of the EPO [3].

As regards natural persons, non-profit organisations, universities and public research organisations, these types of entities are straight forward to identify.

Natural persons and non-profit organisations are considered self-explanatory. Universities are institutions of higher education and research under the relevant law. Public research organisations are institutes organized under public law with the primary purpose of conduction research and development and of disseminating the results by teaching, publication or technology transfer and which must reinvest all profits in carrying out such activities.

As regards SMEs to qualify as such three conditions must be fulfilled, namely:

a) employ fewer than 250 persons;

b) have an annual turnover not exceeding EUR 50 million and/or an annual balance sheet total not exceeding EUR 43 million; and

c) no more than 25% of the capital may be held directly or indirectly by another company that is not an SME.

When calculating these numbers for a given enterprise, any mother and daughter enterprises must be included subject to the somewhat complex rules of calculation given in [2].

If the applicant is an enterprise failing to fulfill just one of the above-mentioned criteria, no fee reductions are available any longer.

Furthermore, the new reduction of 30 % applies only to the filing fee and the fee for examination. Hence, fee reductions are no longer available for the fees for opposition, appeal, petition for review and limitation/revocation.

To obtain the reduction a declaration stating the applicant’s status must be filed with the EPO when paying the relevant fee. This may be done simply by ticking a box added to the relevant accompanying form.

And what if the applicant changes status during the pendency of an application, you may ask. Fortunately, changes in the status of the applicant occuring after the declaration is filed have no retroactive effect, and so the status of the applicant at the time the fee falls due applies.

It is also worth mentioning the EPO will perform random checks of the declarations filed. If a declaration is incorrect, the associated application will be deemed withdrawn. Fortunately, in this case further processing is available to reinstate the application.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

References:
[1] Decision of 13 December 2013 (CA/D 19/13) the Administrative Council of the European Patent Organisation: Link
[2] Recommendation of the EU Commission dated 6 May 2003: Link
[3] Official Journal of the EPO, 2/2014, A23: Link

Claiming a non-therapeutic use with inseparably associated therapeutic effect

A use of a substance or composition for the treatment of humans by therapy is excluded from patentability according to the EPC Article 53(c). However, claiming a non-therapeutic use of a substance or composition may still fall under this same exclusion if the non-therapeutic use is inseparably associated with a therapeutic use.

This was confirmed by the Technical Board of Appeal in a case against a decision from the Opposition Division (T1635/09). The case in suit related to the use of a contraceptive composition with reduced concentrations of the active substances, wherein the use had the further effect of preventing or reducing pathological side-effects (i.e. a therapeutic effect).

In the Board’s assessment of the subject-matter of the patent as a whole it was found that the reduced concentrations served solely to prevent or reduce the side-effects. Thus, the contraceptive effect was inseparably associated with the therapeutic effect.

Provisions in the EPC exist for claiming the substance or composition for use in the treatment; previously in the form of Swiss-type claims, i.e. a claim directed at the use of a substance or composition for the manufacture of a product for the treatment in question. However, the Board finds that the wording “manufacture of a product” according to the Swiss-type claim inherently provides an additional protection of the product per se. Hence, in T1635/09 it was further confirmed that a use claim (as excluded under EPC) cannot readily be converted into a corresponding Swiss-type claim (or the equivalent new format) without also extending the protection of the patent.

Consequently, owing to the facts of this case, applicants (in particular from the U.S., where the similar use claims are not excluded from patentability) should carefully consider the form and wording of use claims directed at protecting treatments by therapy as well as claims related to non-therapeutic uses, wherein the use may be associated with a therapeutic effect.

Jakob Leffland Reimers, Associate

A visit to the Copenhagen office

This week has so far been one of the most interesting weeks in the Specialist programme (soon to be renamed to the Trainee programme). Topics of the week include infringement, opposition and sales training, not to mention a trip to the Copenhagen office. The latter definitely being one of the highlights of the week.

The Copenhagen office is situated in the eastern part (Østerport) of the city in an old genuine building. The topic of the day was foreign filing which turned out to be a very interesting subject. Acceptance date, PPH (Patent Prosecution Highway), heavy prosecution countries and restriction requirements were all new expressions for the most of us. We found out that there is a lot more to know than EPC and Swedish patent law. Strategic decisions, for example using utility models instead of patents, were especially interesting. And although we didn’t get a hold of any Danish pastry, we had the pleasure to enjoy a Grøn Tuborg.

To analyze claims from another perspective – like when to file an opposition – was the topic of today. Arguing why a claim should not be valid instead of the opposite differed from what we are used to and resulted in many intriguing discussions. Hopefully, it will be more time to deal with oppositions in the upcoming practice period.

Soon, it’s time for sales training and I’m convinced that it will be as instructively as always.

Oskar Kronsell, Associate

Software inventions: The BGH confirms examination approach

Software inventions: The BGH confirms examination approach

 

By its judgment in X ZR 121/09 (Webseitenanzeige), the German Federal Court of Justice (BGH) recently nullified one of Siemens AG’s German patents (English-language version) for lacking technical character. The judgment can be said to belong to the same lineage as Xa ZB 20/08 (Dynamische Dokumentengenerierung), which was reported in AWA IP Review 2/2010, and X ZB 22/07 (Steurungseinrichtung für Untersuchungsmodalitäten), on which Xa ZB 20/08 relied heavily.

This new judgment once more demonstrates the German two-step approach to determining whether an invention has technical character. The two-step approach is in contrast to current practice under the EPC, which regards technical character as a monolithic – and usually rather easy – requirement to satisfy. The new judgment (see point 15) stresses that the invention both

(i) should possess technicality (“Technizität”, referring to the wording of § 1(1) PatG, “Erfindungen auf allen Gebieten der Technik”), and
(ii) has to provide instructions for solving a concrete technical problem.

An invention failing condition (ii) will not escape the exception in § 1(3), point 3 PatG (“Pläne, Regeln und Verfahren für gedankliche Tätigkeiten, für Spiele oder für geschäftliche Tätigkeiten sowie Programme für Datenverarbeitungsanlagen”).

It is intriguing to note that these provisions, which proved fatal to the patent-in-suit, are word by word identical to Art. 52(1) and Art. 52(2)(c) EPC. What makes such differing interpretations possible – and what their impact may be – is discussed in more detail in the article in AWA IP Review 2/2010.

Siemens’ patent was about a method for organizing browsing history. This is a computer-implemented invention fulfilling the “Technizität” requirement (see point 16) but does not, in the Court’s view, go beyond the normal interactions between hardware and software in a computer to such an extent that it fulfils condition (ii) (see points 22–27). Indirect advantages – e.g., that a server executing the claimed method can allow computers with simpler hardware to connect (point 25) or that the total load on the Internet may decrease a trifle (point 30) – are not accepted as evidence of a concrete technical problem being solved. Indeed, they relate to devices outside the claimed subject-matter and do not form part of its results from an objective point of view.

Between the lines, the BGH points out the weaknesses that made the Court pass this judgment. Apparently, the application leaves the skilled person with little more than conceptual ideas for carrying out the claimed steps (point 27). Also, the method relies on user data being entered by the user him- or herself and not on measured – hence potentially technical – environment variables (point 28).

Considering, as we do, someone else’s patent in retrospect, these points can certainly be seen as “room for improvement”. Done right, they would have offered fallback positions that might have saved the patent. These points also reminds us that Siemens’ application was drafted in 2001, in the days before a stable European software practice had emerged. Today, I believe few patent attorneys in this field would feel comfortable filing an application that discloses the invention only on a conceptual level.

Since the European application EP02006122 in the family is still pending, the judgment offers an interesting opportunity to compare European practice with the patenting standards of Europe’s largest economy. While the BGH judgment makes explicit reference to the German law, the EPO may reach a similar conclusion, be it by other arguments.

Anders Hansson, Patent Attorney, Awapatent

EPO’s fight against divisional applications

EPO is seeking to limit the submission of divisional applications, which would be a severe blow to small, newly started technical companies in particular. Although a stop was put to their latest proposal by the Committee on Patent Law, it is highly likely that despite this setback we will see a modified version put before the Administrative Council meeting in March.

EPO’s proposal
EPO has proposed limiting the option of submitting divisional applications to a period of 24 months following either a first order from the Examining Division or a first notification that the parent application lacks unity of invention. The proposal represents a significant limitation of the possibilities allowed to applicants under current rules, which enable divisional applications to be submitted for as long as the basic application remains valid.

The proposal is intended in part to limited alleged misuse of the submission of divisional applications. Based on the figures presented by EPO, it is estimated that alleged misuse occurs in fewer than one in a thousand applications.

However, the proposal is very far-reaching. If it is passed, it will no longer be possible to submit a divisional application in connection with oral proceedings. At present, this method can sometimes be the only way to ensure that an applicant has the possibility to obtain protection for patentable material contained in the submitted application. In cases where the patent application is rejected during the course of the proceedings, under current rules the applicant has the option of pursuing other lines of retreat through divisional applications, but under the proposed change in the rules divisional applications must be submitted at an early stage.

Small players hit hardest
EPO’s line will particularly hit small, newly started technical companies, which often lack both the economic resources and a precise knowledge of the position of the technology. At the same time, the innovation which forms the basis of such a newly started company often includes a number of inventions for which the company may be totally dependent on being granted strong protection.

Given that a company may often lack the resources to submit a large number of patent applications during the start-up phase, it has to rely on one or two broader-based applications. But due to a lack of the resources needed to fully protect the position of the technology beyond the basic idea behind the invention, as formulated in the applicant’s principal requirements, it often becomes necessary to utilise the option of divisional applications.

As the application is scrutinised, any changes to a principal requirement are defended in a rejoinder. Under EPO’s proposal, where the rejoinder does not have the desired effect, the time limit for submitting divisional applications would meantime have expired. Consequently the applicant must, at the time of submitting the rejoinder, already submit divisional applications for the set of inventions that can be identified by the applicant, in the event that an umbrella claim contained in the basic application is not approved. Given the fact that this entails a significant increase in procedural costs for a regular applicant, for a start-up company this option becomes prohibitively expensive. The proposal is therefore hostile to start-up companies of the type which EU common market policy otherwise claims to support.

The industry’s position
Against this background, Swedish and European industry together with representative associations are strongly opposed to EPO’s proposal, and a majority of the national delegates who spoke at the CPL meeting were also responsive to the concerns of the industry and the representative associations’ misgivings. The original proposal failed to muster support, subsequent to which a revised proposal was put forward whereby the option of submitting a divisional application would have to be justified and receive the approval of the Examining Division. This proposal also failed to gain sufficient support.

I would like to see a limitation introduced which would simply establish an exception in the case of divisional applications whose submission constitutes clear misuse of the regulatory system. The issue is whether EPO continues to pursue its hard line against divisional applications and whether this will gain resonance at the Administrative Council meeting in March.

Nils Ekström, European Patent Attorney

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What has happened since the introduction of EPC 2000?

EPC 2000 came into effect on 13 December 2007, as a result of the first major amendment of the European Patent Convention since its introduction in 1973. The most important reasons for the revision were adaptation to and harmonisation with international law (in particular TRIPS and PLT), modernisation and increased flexibility. A result of this was that the EPC became more user-friendly. EPC 2000 contains several provisions that did not exist before.

So what impact have these new provisions had on new European patents and applications? The EPO recently released new statistics on EP applications (covering the period from 13 December 2007 to 8 June 2008). These figures show, among other things, that:

  • Reference filing, which allows applicants to replace the description, any drawings and optionally also the claims by a reference to a previously filed application, has only been used in less then 0.5% of all new applications. However, it is interesting to note that most of the cases in which reference filing has been relied upon are divisional ap-plications. I believe this is a convenient way of making sure that you include everything from the parent application in your divisional application.
     
  • Central limitation have been requested for almost 50 European patents. That is quite a few in such a short time. Before the entry into force of EPC 2000 there were indications from the EPO that the central limitation proceedings should be fast, even in the range of two months. Of the 49 requests filed up until 8 June only one has been allowed. The allowed request was filed on 20 December, the EPO informed the patentee of the allowance on 16 May and the decision to allow the request was dated 2 July and published on 23 July (as the first B3 publication). Even though the proceedings in this case were a bit longer than two months, I believe that applicants will find this an easy and cost-effective way of customizing their patents after grant. Furthermore, the proceedings will hopefully become quicker, since the allowance in this case seems to have been delayed by a few months due to the fact that the EPO’s technical support for issuing this kind of allowances was not functioning from the start.
     
  • Central revocation has been requested for 13 patents, but of these 10 had the same applicant and the figures are therefore perhaps not fully illustrative.
     
  • Late filing of claims has not been used to a great extent by applicants. I hope that this means that applicants realise that they may run into major problems with support in the application as filed if claims are filed at a later stage.

Another new provision in EPC 2000 worth mentioning is the petition for review by the Enlarged Board of Appeal. So far, four petitions for review have been filed (two of these have been filed recently and are therefore not included in the statistics released by the EPO), and the first decision, in case R 1/08, was issued only a couple of weeks ago, on 15 July. The decision reads: “The petition for review is clearly not allowable”. From the reasoning presented by the Enlarged Board of Appeal it seems as if petition for review will be allowed only in exceptional cases, which was what most European patent attorneys anticipated from the start. For example, the Enlarged Board of Appeal states in R 1/08 that “[t]he extraordinary nature of this remedy [i.e. the petition for review] means that the provisions or Article 112a EPC are to be applied in a strictly-limited fashion”. It will be very interesting to follow the outcome of the other three pending cases and of any new petitions, to see what will be required to have a petition for review allowed.

Of course it’s too early for any deep analysis of the impact of EPC 2000, but I venture to argue that it seems that the new EPC provisions work as they were intended. And I also think that the users of the European patent system will benefit from the increased flexibility that the revised EPC affords.

Maria Stenbäck, European Patent Attorney

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