Posts by: Maria Stenbäck | (6) posts

The 5th China IP Counsel Congress 2013

Recently  almost two hundred people, mostly IP in-house counsels, but also IP attorneys, met in Shanghai for the 5th China IP Counsel Congress 2013. I participated in this conference for the second year, this time together with my colleague Lars Nilsson.

The conference included several very interesting presentations. Most of the speakers were from the Chinese IP community, such as Chinese companies already working actively with IP protection, but a few of us were from abroad. The topics varied; from IP development trends to local policies in Shanghai supporting companies that protect innovations through IP and the way Chinese companies may act to prevent and solve patent disputes. I contributed by introducing the Chinese participants to some important aspects that should be taken into consideration when filing and prosecuting patent applications in Europe.

It is clear that the interest in intellectual property is growing in China – both for foreign companies that are active in China but also very much so for domestic Chinese companies. This was demonstrated by the many questions that were asked during the presentations, and also by the discussions going on during the breaks.

As was repeated several times during the conference, it is no doubt that the previous saying “Made in China” has been replaced by “Invented in China”.

The conference also provided many good opportunities for networking with new and old contacts.

Lars and I spend a few additional days in Shanghai, meeting with people from the local IP community. From these meetings it is clear that the importance of intellectual property – in China and abroad – is increasing for Chinese companies.

Maria Stenbäck, Partner and European Patent Attorney

Awapatent attended SIPPS 2012 in Shanghai

A couple of weeks ago we participated in the Second Session of Shanghai Intellectual Property Practice Summit. The summit aimed at providing Chinese companies input on how to protect and utilize their IP in the best possible way outside China. It was supported by Shanghai Pudong Intellectual Property Bureau and Shanghai Pudong Science & Technology Association, hosted by Shanghai Pudong Intellectual Property Protection Association and organized by Shanghai Shenxin Law Firm.

There were several very interesting presentations covering different juridistictions all over the world. Our contribution was made by Maria Stenbäck who gave a presentation on European patent prosecution, including the Unitary patent and the Unified patent court .

The conference confirmed our earlier experiences that there is a huge interest in IP matters in China and that all people involved – from companies, universities and the government – are very interested in learning more about all advantages IP protection can bring and how they can use them to their benefit. The Chinese patent law has existed in less than 30 years, but in these quite few years China has come a very long way in providing possibilities to protect intellectual property and to defend intellectual property rights, and further progress is being made at an impressive speed. It is also very fascinating to see how important promotion of inventions are regarded from different parts of the society – from the “Beijing spirit” characterized by the four words patriotism, innovation, inclusiveness and virtue, which can be found around the capital, to the current five year plan.

We are looking forward to our next visit to this interesting region, to continue following the developments in this area.

Maria Stenbäck, European Patent Attorney and Jessica Höeg Hassing, Patent attorney

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The language of proceedings used before the EPO can never be changed

The language of proceedings used before the EPO can never be changed – this includes the language used before the international receiving office if that language is English, French or German

The Enlarged Board of Appeal of the European Patent Office (EPO) has for the second time this week issued a decision. This latest decision, G 4/08 of 16 February 2010, relates to the language of proceedings, and it clarifies that it is never possible to change the language of the proceedings. According to Article 14(3) of the European Patent Convention, the official language of the EPO in which the European patent application is filed or into which it is translated shall be used as the language of the proceedings in all proceedings before the EPO, unless the Implementing Regulations provide otherwise. The three official languages of the EPO are English, French and German.

The European patent application in question, EP 02759818.4, relates to a vaccine against the Nile Fever virus. It is the European regional phase application of an International application, which was filed and published in French. When the regional stage before the EPO was entered in November 2003 it was requested that the language of the proceedings should be English, and an English translation of the application was filed at the same time. If the EPO would not allow the language to be English, an appealable decision on this was also requested. The applicant further made two auxiliary requests in case the EPO would not allow the change of language. Thus they requested that if English was not allowed as language of the proceedings, the EPO should use English in all written proceedings and decisions, and finally, if this was not allowed, the prosecution of the application should proceed in French. In December 2006, the EPO issued a decision to reject the request for a change of the language and also the first auxiliary request. This decision was appealed by the applicant, and after oral proceedings held in April 2008, the following three questions were referred to the Enlarged Board of Appeal in December 2008:

Question 1
If an international patent application has been filed and published under the Patent Cooperation Treaty (PCT) in an official language of the European Patent Office (EPO), can the applicant, on entry into the regional phase before the EPO, file a translation of the application into one of the other EPO official languages with the effect that the language of this translation must then be considered as language of the proceedings to be used in all proceedings before the EPO?

Question 2
If the answer to that question is no, can EPO departments use, in written proceedings on a European patent application (or an international application in the regional phase), an EPO official language other than the language of proceedings used for the application?

Question 3
If the answer to question 2 is yes, what are the criteria to be applied in determining the official language to be used? In particular, must EPO departments accede to such a request from a party or parties?

In its decision the Enlarged Board of Appeal explains that the EPC (neither in the form of the current EPC, EPC 2000 or the earlier EPC 1973) does not allow replacement of a euro-PCT application published in an official language with a translation into another official language. Thus the response to Question 1 is that when an international patent application has been filed and published under PCT in an official language of the EPO, it is not possible, on entry into the European regional phase, to file a translation of the application into one of the two other languages with the effect that the language of this translation is considered as language of the proceedings to be used in all proceedings before the EPO. In this context the Enlarged Board of Appeal refers both to Article 14(3) EPC, discussed above, and to Article 158 EPC 1973 corresponding essentially to parts of Article 153 of the current EPC, respectively. The Enlarged Board of Appeal in particular refers to Article 158(2) EPC 1973. The same Article is not explicitly found in the current EPC, however, it has become part of Article 153(4). The latter in combination with Rule 159(1)a) specify that a translation of an international application shall be supplied upon entry into the European phase if the Euro-PCT application is published in another language than English, French or German, and that this translation shall be published. Article 153(3) further specifies that the international publication of a Euro-PCT application in an official language of the EPO shall take the place of the publication of the European patent application. The term Euro-PCT is explained in Article 153(2) as an international application for which the EPO is a designated or elected office, and it is further stated that if an international date of filing has been accorded, it shall be equivalent to a regular European application. They further conclude that there is no conflict between these regulations and the regulations of the PCT.

The Enlarged Board of Appeals goes on to clarify that the only applicable law to Question 2 is the current EPC, and that it does not allow the EPO departments to use, in written proceedings on a European patent application or an international application in the regional phase, an EPO official language other than the language of proceedings used for the application in accordance with Article 14(3). The decision is thus stricter than similar decisions issued prior to EPC2000, including J 18/90.

Since the response to Question 2 thus is no, the Enlarged Board of Appeal does not respond to Question 3.

The complete text of the decision can be here. It is only available in French – the language of proceedings.

Maria Stenbäck, European Patent Attorney

New EPO fees from 1 April 2009

On 1 April the EPO will introduce a new fee structure. In recent years the EPO has noticed a significant increase in the length and complexity of applications. The new fee structure is the EPO’s strategy for dealing with the problems that this raises. As part of its efforts to give applicants an incentive to reduce the length of applications and the number of claims, the EPO will therefore increase the claims fees for applications with more than fifty claims and introduce an additional fee at filing for applications of more than thirty-five pages. At the same time, a flat designation fee and a flat fee for grant and publication will be introduced.

The new fees apply to European patent applications, including European divisional applications, filed on or after 1 April 2009 and to international applications entering the regional phase before the EPO on or after that date. In some cases it may be possible to escape the fee increases by filing your European patent application or regional stage application before 1 April 2009, even if the time limit for doing so expires later.

The new fees may make it even more interesting than it was previously to review international applications before entering the European stage: by making amendments before that stage, it may be possible to reduce the costs.

Below are a few comments about the various new fees, but please do not hesitate to contact us if you wish to discuss in more detail what can be done in individual cases.

Increased claims fees for applications with more than 50 claims
Last April the EPO increased fees for applications comprising more than 15 claims. Since then a claims fee of EUR 200 has been payable for the sixteenth and each subsequent claim. For applications filed on or after 1 April 2009 this fee will continue to apply for each claim from the 16th to the 50th. For the 51st and each subsequent claim, however, the claims fee will be EUR 500.

For an international application with more than 50 claims, I recommend that you consider making claim amendments before filing in order to limit the number of claims. For example, simply by introducing multi-dependent claims, you can reduce the number of claims to a level which costs considerably less.

Additional fee at filing for applications of more than 35 pages
Under the new fee structure, the filing fee is composed of a basic fee and an additional fee of EUR 12 per page for the 36th and each subsequent page of the application.

For an international application of more than 35 pages, I suggest that you review the text before filing to consider whether there is any way in which you can limit the number of pages. It is often possible to do this, at least in part, by amending the claims as described above.

Flat designation fee
Under EPC 2000, the designation system has been simplified so that all contracting states are deemed to be designated at the time of filing the European patent application. From 1 April, in line with this, a single flat-rate designation fee of EUR 500 will cover the designation of all contracting states, unless individual designations are expressly withdrawn.

For applications subject to the old system, in order to prevent any loss of rights, you must ensure that you pay the correct amount to cover the individual designation fees, and, most important of all, the maximum amount of seven times the fee if you wish to cover all contracting states.

Extension fees will still have to be paid for each state.

Fee for grant
At present a fee for each additional page after the first 35 is payable at the grant stage, but from 1 April, as this fee will now be introduced at the filing stage, there will be a flat fee for grant and publication. The old fee for grant, with a page fee for applications comprising more than 35 pages, will continue to apply for European patent applications that are filed and for international applications that enter the regional phase before 1 April 2009.

Maria Stenbäck, European Patent Attorney

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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IPR2 to strengthen the Europe-China IPR relationship

Last month, the EU-China IPR2 Project, focused on enhancing the enforcement of IP rights in China, was introduced to representatives of European industry, the national patent offices and European intellectual property experts by the European Commission and the European Patent Office (EPO). Few would question the importance of their agenda, but I would like to acknowledge the progress that Chinese IPR has already made in recent years.

Actually, of the IPR cases settled in Chinese court during 2007, no less than 3/4 had an outcome in favour of the IP owner, regardless of the nationality of the plaintiff. Implemented as late as 1985, patent law is still young in China but I think we should have faith in the country’s remarkable ability for change and development. Just consider the numbers: it took 15 years for SIPO to receive its first million patent applications but when they passed the four-million-mark late last year, the last million had been filed in just 18 months*.

The EU-China IPR2 Project is in itself quite interesting. In many aspects, Chinese IPR law is already shaped with Europe as a model. Now, for four years and with an investment of more than EUR 16 million, enforcement of IP rights in China will be improved through a project partly managed by EPO. The project does not address legislative changes but will provide technical support to, and building the capacity of, the different levels of the Chinese legislative, judicial and administrative authorities to help improve their effec-tiveness; as well as improving access to information for users and officials and reinforcing support to right holders. This all is very welcome and for us European-based IP Attorneys with an interest in China it is of extra interest to know that much of the expertise in this development is drawn from our region.

Of course, when it comes to China, changes are many and often dramatic and even more will happen during 2008, at least judging from China’s IPR Strategy Action Plan for IPR Protection for 2008 which was announced at the end of March. This plan contains 10 aspects including 280 concrete meas-ures relating i.a. to legislation, law enforcement, training and public awareness-raising activities. So keep your eyes open and stay updated.

* This number includes all three types of Chinese patent rights: inventions-creations (protecting any new technical solution relating to a product, a process or improvement), utility models (protecting any new technical solution relating to the shape, the structure or their combination of a product, which is suitable for practical use) and designs (protecting any new design of the shape, the pattern or their combination, or the combination of the colour with shape or pattern, of a product, which creates an aesthetic feeling and is suitable for industrial application).

Maria Stenbäck, European Patent Attorney