Tag:  “EPO”  | (18) posts

An unknown exception error at the EPO

We recently blogged about how the EPO has introduced the concept of small entities for obtaining fee reductions in procedures before the EPO. The new procedure can create a peculiar error that at least I did not foresee. The EPO Form 1001E for request for grant of a European patent contains a field, Item 5, where typically Danish, Swedish and Dutch applicants would request examination in their own languages. Before the new Rule 6(4) EPC this would give the applicant a 20% reduction of the examination fee. Now, however, the request form also contains an Item 14.1, “The/Each applicant hereby declares that he is an entity or a natural person under Rule 6(4) EPC”, that must also be checked in order to obtain the current 30% fee reduction.

If Item 14.1 is not checked when the examination is requested in an admissible non-EPO language the EPO cannot process the application any further. The same is likely also relevant if Item 14.1 is checked but examination not requested in the admissible non-EPO language. Such exception errors seem not defined in the Guidelines and will currently result in a phone call from a friendly (but probably somewhat annoyed) formalities officer suggesting how to rectify the error so that the EPO can start the search of the invention. The solution to the error can be to submit a statement to the EPO that either the request in the admissible non-EPO language is withdrawn or that the applicant is a small entity. A statement withdrawing the request for examination in the admissible non-EPO language will be registered as a request pursuant to Rule 139 EPC that the EPO can decide to allow.

Even though payment of the examination fee can be postponed to about two years after filing the application and that examination is requested after a search report has been issued, the request for examination made in an admissible non-EPO language on filing the application must be made together with checking Item 14.1.

It is not clear what will happen if no statement is sent to the EPO. Maybe this can be used as a simple and low risk way to postpone prosecution?

Anders Heebøll-Nielsen, European Patent Attorney & Certified Danish Patent Agent

Adopting a stricter view on ethics?

The everyday work of an IP attorney may seem to amount largely to pencil pushing, but it does in fact involve a surprisingly large number of decisions, where moral issues have to be considered. For instance, can I take on this new client without risking to step on existing clients’ toes?

Events of the last weeks testify that such issues affect everybody in the IP business, also those at the very top.

First, we heard that the renowned Judge Randall Rader from the US Court of Appeals for the Federal Circuit (CAFC) had left his post as head of the CAFC. According to his own words the reason was that he had “crossed lines established for the purpose of maintaining a judicial process whose integrity must remain beyond question”. It appears that Judge Rader’s communication with attorneys appearing before his court had been a bit too friendly.

A few days later it came out that the Chairman of the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) had taken the consequence of the decision in case R19/12. A series of tasks previously handled by the Chairman in his capacity as Vice-President of Directorate General 3 will be taken over by the President of the EPO and the Chairman will no longer be part of the President’s Management Committee.

The question at hand in R19/12 was whether the Chairman could reasonably be suspected of partiality due to his position on the Management Committee, where he could influence the work of the EPO divisions, whose decisions could later be appealed to the EBA. In a configuration without the Chairman the EBA decided that the suspicion of partiality was in fact legitimate.

Is it merely a coincidence that these stories turn up so soon after each other? Or is this a new wave of Puritanism sweeping over the IP community?

Vibeke Warberg Rohde, European Patent Attorney

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

Wider scope of protection for Swedish patents?

Last week the Swedish government referred an amendment of the Swedish patent law to the Council on Legislation for reconsideration. According to the suggested amendment, patent applications filed in English need not be translated into Swedish. Instead, they can be granted in English.

For applicants filing a Swedish patent application in English and wishing to obtain a Swedish patent, this ought to be a major cost saver. However, many of my clients use the Swedish patent system for receiving a quick and not so expensive search and examination and then, after receiving the first Office Action, they abandon the patent application. The patent protection in Sweden is instead obtained by validating a European patent in Sweden. With the new legislation though, there can be benefits in keeping the Swedish application alive.

There will be occasions when the applicant might have to file a translation of the claims, e.g., when publishing the patent application in order to obtain provisional protection and upon receiving an intention to grant. Further, during opposition or litigation, the patentee can be requested to file a translation of the description and the abstract. It is however the claims in English that determine the scope of the patent.

When validating a European patent in Sweden, the scope is instead determined by what is present in both the claims of the European patent and the claims of the Swedish translation. This can be a problem if the translator chooses a narrower wording than the wording in the original application. Hence, one advantage with letting the Swedish patent application become a patent might be a wider scope of protection.

To sum up, the suggested amendment provides both cost savings and supposedly a wider scope of protection. Whether it will lead to an increase in filing rates, we can only guess.

If the amendment is passed, it will become effective 1 July 2014.

Update: The Council on Legislation have now reviewed the amendment and have no objections. The next step is that the Swedish government presents a parliamentary bill to the Riksdag. (25 Nov 2013)

Julia Mannesson, European Patent Attorney 

Link to more information (in Swedish)

Russian documents unveiled

Russian is the 22nd available language in Patent Translate, a machine translation tool specially tuned – by Google and the EPO – to patent documents and patent lingo. In the particular case of Russian, I expect Patent Translate will be saying “claims” rather than “invention’s formula” and similar nonsense. The public can use Patent Translate to translate any patent document on Espacenet.

In a recent press release, the EPO says the new technology will have an impact also on the searches its examiners perform. Certainly, all important patent literature in Russian (1.5 million documents) was already searchable and indexed, often with English abstracts too, but the Office believes that access to full-text translations will increase the chances that relevant prior art is discovered and considered during examination. On top of this, the Russian Patent Office will be adopting the CPC classification system shortly (commented here).

At least in theory, patentees should feel less worried about Russian “submarines” that their competitors might fish up after grant.

What technical fields will benefit the most? As a first guess, I’ve compared the top ten IPC classes in the 5,000 most recent EP, RU and Soviet publications.

  European Patent Office (EP) Russian Federation (RU) Soviet Union (SU)
1 A61 Medical devices; hygiene A61 Medical devices; hygiene C07 Organic chemistry
2 H04 Electric communication C07 Organic chemistry A61 Medical devices; hygiene
3 G06 Computing G01 Measuring; testing B01 Phys./chem. apparatus
4 G01 Measuring; testing H04 Electric communication H01 Basic electric elements
5 C07 Organic chemistry G06 Computing A01 Agriculture; forestry
6 H01 Basic electric elements C12 Biochemistry; beer; wine G01 Measuring; testing
7 C12 Biochemistry; beer; wine A01 Agriculture; forestry C08 Polymers
8 B01 Phys./chem. apparatus B01 Phys./chem. apparatus B29 Working of plastics
9 C08 Polymers H01 Basic electric elements F16 Engineering elements
10 A01 Agriculture; forestry C08 Polymers C12 Biochemistry; beer; wine

Based on this rather unsophisticated analysis, there are just moderate differences between SU and EP patenting. Contemporary EP and RU documents are distributed in a very similar way in terms of IPC classes, meaning that the Russian material is likely to be relevant for a large percentage of the European patent applications. I’m curious to see if the EPO examiners will actually cite more Russian language documents in the next years.

Anders Hansson, European Patent Attorney and member of Awapatent’s Specialist Team for IP in Asia and Russia

Cooperative Patent Classification – Time to prepare for the launch

Almost a year ago I wrote on the Awapatent IP Blog about the efforts of the EPO and USPTO to harmonize their patent classification systems to form the Cooperative Patent Classification (in short CPC). The work is progressing, and it has now become time for an update.

The CPC is now taking shape, and it has become possible for users to familiarize themselves with the new classification scheme as the results this far have been made available by the EPO and the USPTO in what they have named a “CPC launch package”. The launch package includes the complete CPC scheme, the presently finalised CPC definitions and an ECLA-to-CPC-to-IPC concordance table. The launch package is available here.

The EPO and the USPTO explain that the CPC scheme for classifying patent documents according to the technological field of the invention is based on the latest version of the International Patent Classification (IPC) system. The CPC scheme will have sections A through H similar to the IPC as well as an additional brand new section Y including new technological developments and cross-sectional technologies.

There will be CPC definitions available for every CPC subclass and each definition will contain a description of the technical subject-matter covered in the subclass. The CPC definitions will be continuously maintained. Also, a CPC-to-IPC concordance table has been published to help users find the relevant part of the IPC on which the CPC is based.

The CPC is scheduled to be launched on 1 January 2013, and the Awapatent IP Blog will continue to monitor the development with interest to keep our readers updated.

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

The Patent Prosecution Highway expands

I have previously written about the PPH MOTTAINAI agreement, which aims at easing the requirements for requesting patent examinations. The latest news is that the EPO (European Patent Office) entered the PPH MOTTAINAI agreement at the beginning of the year (29 January) and thus the PPH MOTTAINAI agreement has now been signed by a total of nine countries.

With the PPH MOTTAINAI program, two previously strict requirements have been removed: Firstly, the original priority application, from which a patent family stems, may now originate from any country. Secondly, within one patent family, it is now possible to use a decision to grant originating from any of the participating offices to request prosecution under the PPH at any other of the participating offices, provided a mutual PPH-agreement actually exists and remaining requirements are met.

The Intellectual Property Office of the Philippines entering the PPH-network
Furthermore, a number of new PPH agreements with the JPO as one participant have been launched, namely with the Intellectual Property Offices of Taiwan, Portugal and the Philippines; the latter two relating both to the use of national and PCT work products for requesting accelerated prosecution under the PPH.

With these agreements, the PPH-system can be said to have reached a small landmark, as the Intellectual Property Office of the Philippines is the 25th office to join the PPH-system.

Read more about the Patent Prosecution Highway.

Troels Peter Rørdam, European Patent Attorney

EPO Enlarged Board of Appeal repeats obligation to raise objections in time

Last week, the European Patent Office released two new decisions by the Enlarged Board of Appeal on petitions for review, R 2/11 and R 10/11. Both the underlying petitions were based on what the petitioners regarded as fundamental procedural defects before respective Boards of Appeal 3.2.04 and 3.2.03.

Both cases are appeals from opposition proceedings. In R 10/11, the Board had refused to discuss late-filed requests for claim amendments. In R 2/11, an Opponent had been allowed to make an oral presentation of the technical background. The Proprietor was taken by surprise by the Opponent’s presentation; he had not prepared his counterarguments, he could hear at least one half-truth in the presentation – and to his great horror, the presentation had a very convincing effect on the Board!                          

However, the Enlarged Board did not go into the details of neither case, but noted only that neither of the petitioners had raised an objection in respect of the procedural defect in due time. Indeed, as provided by Rule 106 EPC, the Enlarged Board shall not deal with a purported procedural defect unless the Board of Appeal has been made aware of it during the appeal proceedings.

Looking at the decisions on petitions handed down by the Enlarged Board in 2010 and 2011, we see that a breach of Rule 106 EPC was a sufficient ground for rejection in 7 out of 34 non-withdrawn petitions (R 3/11, R 7/11, R 17/10, R 1/10, R 6/10, R 7/10, R 9/09). In other words, appeal proceedings are no place for silent suffering; if you are unhappy with the way the proceedings are conducted, you should voice your concern and make sure it gets written down in the minutes.

Anders Hansson, European Patent Attorney

Patentability of inventions relating to human embryonic stem cells

The Court of Justice of the EU (CJEU) has recently issued a decision clarifying the situation on patentability, in Europe, of inventions relating to human embryonic stem cells. In the decision it is declared that the concept of a “human embryo”, the exploitation of which is excluded from patentability according to the EU Biotechnology Directive 98/44/EC, should be understood in a wide sense. This implies that patents relating to human embryonic stem cells will likely be more difficult to obtain, or at least enforce, also in more embryonic stem cell friendly states of the EU.

The case (C-34/10) pertains to a method and cells invented and patented by Oliver Brüstle, Professor of Reconstructive Neurobiology at the University of Bonn. Professor Brüstle invented a method for converting human embryonic stem cells into neural precursor cells, which can be used for the treatment of a range of neurological disorders, such as Parkinson’s disease. The embryonic stem cells used in the method of Professor Brüstle were cells isolated at the blastocyst stage. Thus, they were pluripotent but not totipotent, i.e. they had the ability to develop into all cell types of a human, but were not able to develop into a human being since they could not form extra-embryonic tissue, such as the placenta.

The patent was opposed by Greenpeace in Germany, and the case was subsequently referred by the German Federal Court to the CJEU. In its decision, the CJEU provides an interpretation of Article 6 of the European Biotechnology Directive (98/44/EC), which states that inventions related to ”use of human embryos for industrial and commercial purposes” shall be considered unpatentable.

Three main points are made:

1. The term “human embryo” should be understood in a broad sense.
According to the Court, the purpose of Article 6 of the European Biotechnology Directive was to ensure exclusion from patentability where respect for human dignity could be affected. Thus, any cell or organism that is capable of commencing the process of developing into a human being must be considered a “human embryo” within the context of the Directive.

The Court explicitly mentions that a fertilised ovum, a non-fertilised ovum into which the cell nucleus from a mature human cell has been transplanted and a non-fertilised human ovum whose division is stimulated by parthenogenesis all must be considered “human embryos”.

Regarding the pluripotent cells of Professor Brüstle’s invention, the Court notably held that it is for the referring court to decide whether a stem cell obtained from a blastocyst is capable of commencing the process of developing into a human being and therefore would fall within the definition of a “human embryo”. It is thus left to the national courts to decide on the patentability of blastocyst-derived, pluripotent stem cells, as long as the capability of the cells to develop into a human being is considered. The evaluation of patentability should also be made “in light of scientific development” and may therefore vary over time. This might have the rather interesting effect that the more technology in this field progresses, the less of the same technology constitutes patentable subject-matter.

2. The use of human embryos in scientific research is excluded from patentability.
The Court states that the use of human embryos for purposes of scientific research cannot in this context be distinguished from industrial and commercial use. Consequently, the Court concludes that scientific research entailing the use of human embryos cannot access the protection of patent law.

3. Inventions that require the destruction of human embryos are excluded from patentability.
In the case of Professor Brüstle, the patent specification does not mention the use or destruction of human embryos or blastocysts to obtain pluripotent stem cells. The Court, however, holds that an invention is excluded from patentability where its implementation requires either destruction or prior use of human embryos, even if the patent application does not explicitly refer to this use. Also, the Court states that the fact that destruction may occur at a stage long before the implementation of the invention, e.g. as is the case with embryonic stem cell lines, is irrelevant.

In conclusion, the CJEU interprets the term “human embryo” broadly, such that all cells that are capable of developing into a human being are excluded from patentability. Whether pluripotent human stem cells fall within this definition or not is left for the national courts to decide and may vary from case to case. In addition, only embryonic stem cells that are obtainable by methods that do not involve use or destruction of human embryos can be patentable. As is pointed out in the decision, inventions that are for therapeutic or diagnostic purposes which are applied to the embryo and are useful to it remain patentable.

Although the decision is not binding on the European Patent Office (EPO), it is binding on the EU member states, and will consequently most likely be followed by the EPO examiners in the grant procedure of European patent applications. Of note, the Enlarged Board of Appeal of the EPO has also, in decision G 2/06, reached the same conclusions as above with regard to points 2 and 3.

So what are the implications of this decision? On the one hand it might be sound that the economic incentives for developing therapies involving the destruction of embryos are reduced, and that the funding of such research will be more dependent on sources under public control. On the other hand, such research, which has the potential to be of immense benefit for patients with various serious diseases, might be more efficient when carried out with private funding. How this decision will affect the development of therapeutic methods based on embryonic stem cells thus remains to be seen.

Maria Malmqvist, Associate, Awapatent

The EPO starts cooperation with Google to provide machine translation of patents

The EPO starts cooperation with Google to provide machine translation of patents

On 24 March, the EPO and Google signed an agreement to collaborate on machine translation of patents. Using Google Translate technology, the EPO will offer translations into 28 European languages, and into Chinese, Japanese, Korean and Russian. In order to be able to adapt the machine translation to the specific language used in patents, Google will get access to the accumulated mass of translated patents that is available at the EPO. At first, machine translations between the three official languages of the EPO, English, French and German, will be available. Later, the other languages will be added.

There have been prophecies that machine translations will break down all language barriers. In patent databases, machine translations into English of at least the abstracts of the patent applications are often available, but the quality of these translations is questionable. Trying to sort out the interesting documents using badly translated abstracts is tedious at best, and sometimes errors in the translations even make it impossible to recognize documents that are really important. With a basic knowledge of the original language of the abstract, the researcher may spot some of the errors and still find the relevant documents, but if the original language is completely foreign, the researcher is lost. Anyone who has tried the experiment of translating back and forth between a few languages using machine translation knows that the original meaning is quickly distorted, making the translation process an advanced version of the children’s whispering game.

The ambitions of the EPO and Google in their quest to provide machine translations are commendable. There is most definitely a need for quick access also to patent documents in languages other than English, or whatever the language skills of the person searching the patent literature. Actually translating, manually, all patents of the world from other languages into English would of course be a help, but it would not be feasible. Then, think of translating between all the official languages of the EU, not to mention Chinese, Japanese, Korean and Russian, and the task becomes insurmountable. Therefore, machine translation is necessary. If training of the Google Translate tool on patent texts improves the quality of the machine translations and reduces the risk of completely misleading machine translations, this will be a valuable service to anyone searching the patent literature. However, once an interesting document has been found and a more complete understanding of it is sought, manual translation will most likely still be necessary. The day is not yet here, if ever it will come, when real, live, human translators will be redundant as a profession. And then, interpreting the scope of protection of the patent is a whole other story.

Nina Milanov, European Patent Attorney and Partner