Tag:  “EPO”  | (26) posts

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.

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.

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.

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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.


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

European patent validation in Morocco and Tunisia

Recently, the EPO has initiated work on a new interesting possibility for European patent applicants.

Namely, the EPO has reported having signed an agreement with the Tunisian government on the validation of European patents for Tunisia. A similar agreement has previously, in 2013, been signed with the Moroccan government.

According to the agreements, European patents validated in these countries will have the same legal effect as Moroccan and Tunisian national patents, even if neither Morocco nor Tunisia is an EPC contracting state. Also, European patents validated in these countries will be subject to Moroccan and Tunisian patent legislation. Morocco and Tunisia will thus become States recognizing European patents upon request or, in terms of the EPC, Extension States.

However, the Moroccan and Tunisian governments will first have to ratify the agreements before they enter into force. To do so it is also possible that the Tunisian and Moroccan legislation must first be amended.

Furthermore, it is not yet established what documents will be required for validation, what the official fees applicable will be and what the translation requirements will be.

Until, and by all likelihood also after, ratification of these agreements patent protection in Morocco and Tunisia may be obtained by filing national patent applications and/or PCT national phase applications.

Furthermore, in light of the above, it is worth noting that patent protection in Morocco extends to Tangier and Western Sahara.

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

Link to the EPO press release

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