Tag:  “EPO”  | (29) posts

Amended rules relating to the refund of the examination fee

Today the rules relating to fees[1] stipulates that the examination fee will be refunded in full if the European patent application is withdrawn, refused or deemed to be withdrawn before the Examination Division (ED) has assumed responsibility of the application. The examination fee can also be refunded at a rate of 75% if the European patent application is withdrawn, refused or deemed to be withdrawn after the ED has assumed responsibility, but before the substantive examination has begun. Exactly when the Examination Division assumes the responsibility really depends on when the request for examination has been filed, which is practically determined by when the Examination fee has been paid. The substantive examination begins on the date when the examiners starts identifying European prior rights not available when the search was carried out, and this date is recorded in the Register.

This rule will now change, and the examination fee will hereafter be refunded as follows:

R Fees 11 (a)  in full if the European patent application is withdrawn, refused or deemed to be withdrawn before substantive examination has begun; and

R Fees 11 (b) at a rate of 50% if the European patent application is withdrawn after substantive examination has begun and before expiry of the time limit for replying to the first invitation under Article 94 (3) EPC issued by the Examining Division proper or, if no such invitation has been issued by the Examining Division, before the date of the communication under Rule 71(3) EPC.

A full refund will thus be obtainable if the substantive examination has not begun. For certain files and if operationally possible the EPO will inform the applicant, at least two months beforehand, of the date on which it intends to start substantive examination, and they will commit to not starting substantive examination before the date indicated.

The 50% refund will be applied after the issuance of a first office action, and an applicant will only get this refund if they actively withdraw their application. Communications addressing purely formal deficiencies in the application documents and issued by formalities officers will not be considered an Art 94(3) EPC communication issued by the “Examining Division proper”.

In the situation of a direct grant after search, the 50% refund is only possible to obtain the day before the date printed on the Rule 71(3) EPC communication, meaning that the withdrawal should be done as soon as possible after the positive search opinion has been received.

A withdrawal made conditional on the 50% refund will generally be possible.

RFees 11 (a) a as amended applies to all European patent applications which are withdrawn, refused or deemed to be withdrawn on or after 1 July 2016. Article 11(b) RFees as amended applies to all European patent applications for which substantive examination starts on or after 1 November 2016.

Sofia Willquist, European Patent Attorney

[1] RFees 11 Refund of examination fee

Prepare your strategy for the Unitary Patent and the UPC – (Part III)

Strategies for pending patent applications and important aspects of the opt out procedure

When preparing for the entry into force of the new Patent system in Europe, also patent application which are now currently pending before the European Patent Organization (EPO) must be considered. A decision must be made whether to try to delay the proceedings to be able to request a European Patent with Unitary effect or to proceed to a granted European patent before this date. Of course, a pending patent application which is not foreseen to be granted before the entry into force, and which is not meant to be within the competence of the Unified Patent Court (UPC), may also be opted out, starting during the sunrise period.

Delaying the proceedings with the EPO can be done by requesting extensions of time limits, or if that’s no longer an option, by filing divisional applications. The filing of divisional applications, having slightly different scope of protection, could also be an important strategy for those applicants who wish to have it both ways, i.e. request Unitary Patent and have the patent validated nationally as today.

This means that both applicants and proprietors will have to consider the possibility of requesting opt out from the UPC, even before the Court opens. A strategy should be developed for the patent portfolio, at the latest during the fall of 2016, to be able to quickly file any such requests when the Registry of the UPC opens up. The request for opt out can be withdrawn, at any time unless national litigation proceedings have begun, but you may only request opt out and withdraw the request one time.

Requesting opt out might seem as an easy administrative task, especially since it is done online in the Case Management System of the UPC, and is not envisaged to incur any fees. However, the proprietor must keep in mind that it is only the entitled proprietor and all entitled proprietors that may file the request. Keeping track of who is the entitled proprietor in different states, is therefore essential, especially if you have multiple or different proprietors for your patents.

Sofia Willquist, European Patent Attorney

Prepare your strategy for the Unitary Patent and the UPC – (Part II)

The language regime for the Unitary Patent and the divisions of the UPC

As we have written before the creation and start of the Unified Patent Court will change the mindset of patent litigation in Europe fundamentally. However, Europe is a diverse continent, not the least when it comes to languages. With the European Patent Office (EPO), French, German and English have since long been established as language of proceedings, i.e. the language which the patent will be granted in. The language regime for the Unitary Patent should now also be considered. Within 1 month of the publication of the mention of grant the request for the Patent with Unitary effect must be filed.

If your patent is granted in English, a translation of the entire specification into any of the languages of the Contracting member states must also be filed at this time. If the patent is granted in French or German the translation must instead be filed in English. This translation should be man-made during a transitional period of 7 years, after which period this translation requirement will probably be abolished. The cost of preparing a translation should therefore be considered. As general advice, if the patent was originally filed in e.g. Danish, this text could be used for the translation. Otherwise if the text is only in English, a translation into German or French is probably the best alternative, as the patent claims will still have to be translated for the purpose of grant.

The language regime of the Unified Patent Court is also an important aspect, as for instance any actions for revocation must be filed in the language in which the patent was granted, and the claim must be filed with the central division of the Court. This means that if the patent was granted in German, a revocation action must be filed in German, even though it is filed with the Central Division in Paris or London. Infringement actions may be filed in the language of the specific division where the claim is filed. Hence, an infringement action filed with the Nordic Baltic regional division in Stockholm must be filed in English. Setting a strategy for the language of proceedings with the EPO (i.e. English, German or French) must be thus be done now, before filing any new patent applications.

Sofia Willquist, European Patent Attorney

Third strike hits the European Patent Office

Last month, 91% (3,701) of 4062 of European Patent Office (EPO) employees voted for a one day strike to be held on April 7 at the EPO’s offices in Munich, The Hague, Berlin and Vienna. It thus adds to a number of strikes that has hit EPO since former Chairman of the Administrative Council of the EPO, Benoît Battistelli, acceded as President of the EPO in 2010.

During the recent years, tension and discontent has build up internally at the EPO due to Battistelli’s attempt to reform working practices at the EPO. Even worse, mistrust seems to thrive at the EPO and the latest restrictions of the strike regulation is not helping. Furthermore, Battistelli’s management methods have been strongly criticized and culminated in 2014 with the highly controversial suspension of a member of the office’s boards of appeal.

Last month’s thousands of votes in favour of a strike, however, may be a direct result of the disciplinary hearing decided by Battistelli against three representatives of the “Staff Union of the European Patent Office” (SUEPO). The recent decision to let off two and degrade one member of the trade union is based on supposition of leakage of confidential information. The leak was confirmed by an “investigative unit” set up by Battistelli, which included hidden cameras and key-logging software.

Certainly, the strike will cause disruption and delays in various services of the EPO including prosecution of patent applications but it is unlikely that Examiners will disrupt public functions such as Oral Proceedings during the strike. It has been debated whether the internal dispute has a negative effect on the quality of the work as a result of demotivated employees. External user survey and the extended ISO 9001 certification, however, indicate that the quality of services provided by EPO continues to be high.

Helle Friis Svenstrup, Patent Attorney

Revised PACE programme from 1 January 2016

The programme for accelerated prosecution of European Patent Applications (PACE) allows applicants to request that the European Patent Office (EPO) processes their application rapidly. The request must be filed in writing, but will be excluded from file inspection.

In certain technical fields there has been constraints on how fast the EPO has been able to process the applications, due to the number of incoming PACE applications. Therefore, as a general recommendation, a PACE request should only be filed for some selected applications of a portfolio.

On January 1, 2016 a revised programme was initiated, in order to help applicants make better use of the programme and enable the EPO to process applications for which accelerated prosecution has been requested as soon as possible (OJ EPO 2015, A93).

Applicants will, from now on, be required to use the dedicated request form and file the request online. Informally filed requests, i.e. without using the form, or on paper, will not be processed.

Further, a request for participation in the PACE programme may be filed only once during each stage of the procedure, i.e. search and examination, and for one application at a time. A PACE request filed during search will not trigger accelerated examination, and the PACE request during examination may only be filed once the Examining division (ED) has taken over responsibility for the application.

An application will be removed from the PACE programme if the PACE request is withdrawn, if the applicant requests extension of time limits, if the application has been refused, withdrawn or deemed withdrawn. It will under those circumstances not be possible to restore the PACE application.

Further, the failure to pay renewal fees will cause the accelerated prosecution to be suspended.

For European patent applications filed on or after July 1, 2014 (including the Patent Cooperation Treaty (PCT) applications entering the European phase where the EPO did not act as the International Searching Authority (ISA)), no PACE request is needed, as the EPO will issue the European search report (EESR) within 6 months under the Early Certainty from Search (ECfS) programme.

For European patent applications filed before July 1, 2014 (including PCT applications entering the European phase where the EPO did not act as ISA) the EPO will make every effort to issue the EESR within 6 months of receipt of the PACE request. Further if the application is a PCT application and the EPO did not act as ISA, the supplementary European search will only be issued faster if the applicant also waives the right to communications pursuant to Rule 161(2) and 162(2) EPC and pays all relevant claims fees due.

During the examination stage the request for PACE can be filed at any stage once the ED has taken over responsibility. For PCT applications where EPO acted as ISA, PACE can be requested at any stage, for instance on entry into the European phase or together with the response to the WO-ISA, required under Rule 161(1) EPC.

Upon receipt of a PACE request the Examining division will make every effort to issue its next action, and any further actions, provided that the application is still within the PACE programme, within three months.

Sofia Willquist, European Patent Attorney

Potential market size for Unitary Patents is 25% larger than for US patents and 90% larger than for traditional European patents

As you might already know, a European patent application is examined by the European Patent Office (EPO). If a patent is granted, it does not result in a patent that is valid in the whole of Europe. Instead, the patentee needs to validate the patent in each state where protection is to be obtained, resulting in a bundle of national patents. This of course means several fees to be paid to the national patent offices, costs for translations of the patent text, and in some cases a need to use different national agents. In addition to this, each national patent has to be renewed annually.

      JVM_IPBlogg1
(EPO=European Patent Office, NPO=National Patent Office)

Due to the costs involved, many patentees choose to protect their innovation in just a few countries, maybe four or five, leaving their innovation completely unprotected in the rest of Europe and available for exploitation by their competitors.

In the Unitary Patent system, which will hopefully be up and running at the beginning of 2017, the patent application is still examined by the EPO. If a patent is granted and unitary effect is requested, the patent becomes a true European patent. The term unitary effect means that the patent is valid in all participating member states. Presently, approximately 25 states have undertaken to join the Unitary Patent.

JVM_IPBlogg2

Looking at the potential market sizes for a US patent, a traditional European patent and a Unitary Patent, it is interesting to compare populations. The three most common states in which a traditional European patent is validated are France, Germany, and United Kingdom, which in total have a population of about 210 million (1). The US has about 320 million inhabitants, while the member states of the Unitary Patent have a total population of 400 million. In other words, a Unitary Patent may provide an exclusive right to an innovation on a 25% larger market than a US patent and a 90% larger market than a traditional European patent.

Julia Mannesson, European Patent Attorney and Swedish Authorized Patent Attorney


1 International Monetary Fund, 2014

The Unitary Patent takes an (inventive) step towards grant

The Unitary Patent provides a new way for innovators and companies to protect their intellectual property in the EU. Currently, European patents are granted centrally by the European Patent Office (EPO), but result in a bundle of national patents which must be enforced on a country-by-country basis. In contrast, the Unitary Patent means that a granted patent can be activated in all participating EU member states by a simple and speedy procedure.

Last week, the Select Committee responsible for supervising the EPO’s activities with regard to the Unitary Patent came to an agreement on the distribution of the uniform renewal fees to be paid by the Unitary Patent proprietors. According to the agreement 50% of the fees will be retained by the EPO while the remainder (minus an administrative charge) will be distributed among the participating countries according to a formula that takes account of the GDP and the number of applications filed from that country.

According to the Unitary Patent fee model which was agreed upon on 24 June 2015 by the Select Committee, the annual renewal fees will correspond to the combined renewal fees of Germany, the UK, France and the Netherlands, being the four EU countries in which “classical” European patents are most frequently validated by European patent applicants. The renewal fees, based on the so called “True Top 4 proposal”, start at €35 in the 2nd year to reach €4,855 in the 20th year. Hence, the costs of renewing a Unitary Patent will be €4,685 in total for the first ten years, while maintaining it over the full 20-year term will amount to €35,555.

Considering that the renewal fee issue has been one of the major hurdles for the implementation of the Unitary Patent in Europe, this agreement is an important step to making the Unitary Patent a reality as soon as possible. The Unitary Patent advances the common interest in having an effective and attractive patent system, and shows a clear determination to move forward its implementation.

Love Koci, MSc, PhD, European Patent Attorney

Will there be any difference in the oral hearings between the EPO and the UPC?

Anyone who has been attending an oral proceeding at the EPO, either as an observer or as an active party knows what it’s like. You need to think fast and stay on your toes, and watch your language because every issue, often starting with added subject matter, is taken to a decision immediately. The proceedings may thus end much quicker than what you have prepared for. In any case the opposition division or the Board of Appeal, will usually have pointed out at least their preliminary opinion in a written statement some time before the hearing, but this is an opinion with emphasis on preliminary.

Before the Swedish Court of Patent appeals the proceedings are very different. The parties are asked to present their whole case, mainly focusing on maybe a few aspects that the court sometimes presents at the beginning of the hearing. The decision is then delivered sometime around four weeks after the hearing. This means that the hearing itself may be more comfortable, but you are never sure if you have made your point across to the Court.

A while ago, I participated in a mock trial before a Unified Patent Court, during a course in patent litigation at the CEIPI in Strasbourg. The mock trial was led by a very well respected and experienced German judge. The oral hearing was very interactive, the panel of judges expressed the main issues that they wanted the parties to focus their pleadings on at the beginning of the hearing. The Court also asked the parties questions throughout the hearing. Being a European patent attorney before that panel of judges thus meant that the capabilities of thinking fast and adjusting to the situation came well into play. At the closing of the hearing the Court deliberated and they then gave their decision orally. The written decision will take another few weeks to deliver.

If this is the way that the UPC will work when it is up and running, nobody really knows. It may be that this will be up to the different divisions, and how the panel of judges at that particular Court is used to working and performing their hearings.

One thing that is certain is that the whole procedure before the UPC is supposed to be as efficient and quick as possible, including the oral hearings, which are meant to last not more than one day. I think we can expect that the judges therefore will be more interactive, more open with the main issues, but that the parties probably will be given an opportunity to present their whole case before a decision is taken.

Sofia Willquist, European Patent Attorney

Spain’s actions against unitary patent protection dismissed

On May 5, a potential legal obstacle against the Unitary Patent and Unified Patent Court was removed when the Court of Justice of the European Union (CJEU) dismissed two Spanish actions against the regulation of the unitary patent protection. These actions, which were brought before the Court in March 2013, question two aspects of the regulation; 1) that the regulation is not in line with EU law, in particular with respect to the distribution of renewal fees, and 2) that the proposed translation regime is discriminatory (to Spain and others).

Regarding the issue of conformity with EU law, the Court finds that the EU legislature did not delegate any powers which are exclusively its own under EU law. The Court also notes that the Member States must be responsible for all implementing measures, especially as the EU is not a party to the EPC. Regarding the issue of translation regime, the Court admits that the regulation differentiates between languages, but considers this differentiation to be motivated by the purpose to make patent protection more accessible.

Personally, I am not surprised by the decision. The political will to put a “Community Patent” in place is strong, and it appears no legal principles will be allowed to stand in its way. Regarding the translations regime, I think the Court has got it quite right. On the one hand, it is certainly true that the system could be seen as unfair to Spain (just as it is to Sweden, Denmark, and any other country not having English, French or German as one of their official languages). On the other hand, it is just as certain that Europe can never grow economically strong while it is fragmented by language. If Europe is to maintain its position as one of the 4-5 most important markets, Europe must be perceived as one market. The European patent system is of course not the only relevant factor in this context, but it can be an important part of the puzzle.

The winding road of the Unitary Patent and Unified Patent Court now continues. For the system to enter into force, it must be ratified by 13 states, including France, Germany and Great Britain. So far, six states have ratified the agreement (France, Sweden, Denmark, Austria, Belgium and Malta), and at least the Netherlands are on their way.

The level and distribution of renewal fees remains as one of the major hurdles, not only because these issues are difficult to agree upon, but also because they will most likely determine the impact and speed of propagation of the new system. Currently, two different proposals have been presented, referred to as TOP4 and TOP5. Essentially, the proposals set the renewal fee level equal to the sum of the national renewal fees of the four or five most popular countries to validate European patents in. The TOP5 proposal has the extra twist of a 25% discount for SMEs (and some other applicants).

In my personal opinion, the cheaper TOP4 alternative is the better one, in order to make the system as attractive as possible. The idea of an SME discount of course sounds attractive, but I find the discount too small to have any significant effect. With renewal fees according to TOP4, I think the Unitary Patent will be quite attractive, at least from a renewal fee point of view.

Fabian Edlund, European Patent Attorney

First non-European country begins validating European patents

As earlier announced on the Awapatent IP Blog here, Tunisia and Morocco has signed an agreement with the EPO on the validation of European patents in the respective countries.

Effective 1 March 2015 the agreement with Morocco entered in to force, thus enabling applicants with a European patent application filed on or after this date to validate their granted patent in Morocco – and thereby to obtain patent protection in Morocco in a significantly cheaper way than hitherto.

Thereby Morocco has become the first ever non-European country to begin validation European patents.

Morocco is automatically designated for all European patent applications filed on or after 1 March 2015.

Validation in Morocco costs a flat rate fee of EUR 240. The fee is payable at the same time as the ordinary designation fees, namely 6 months calculated from publication of the European application.

Late payment within 2 months is possible subject to a surcharge of 50 % of the above-mentioned fee.

Upon grant of the European patent, a translation will have to be filed. At the time of writing this the translation requirements are not completely clear. Indications, however, are that only a translation of the granted claims into Arabic or French must be submitted to the Moroccan IPO. An exception may be for European patents granted in German, in which case a translation of the description into Arabic, French or English will also have to be filed.

In any case the time limit for filing the validation will, as in all other cases, be three months from the publication of the decision to grant.

In other words it seems that it will in most cases not be necessary to file a full translation of the application, which is otherwise required for a direct national application in Morocco. Moreover, as a French translation of the claims will already be on file due to the EPO requirements relating to the grant of the European patent, validation in Morocco will in most cases incur no additional translation costs.

As such, for applicants interested in obtaining protection in Morocco this new procedure should prove significantly cheaper and more streamlined than applying for a direct national patent in Morocco.

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