Ryuka

Changes to

20 November 2007 Changes to European Patent Law

• EPC 2000 – Comes into force 13 December 2007 – FR, IT, PT, TR not yet ratified • – Comes into force 1 April 2008? EPC 2000 - Summary

•Aims • Patentability • Interpretation • Filing requirements • Unity of Invention – Euro-PCT • Further processing • Re-establishment of rights • Limitation & revocation • Petition for review Aims

•TRIPS • Modernisation • Flexibility •BEST Patentability

• List of exceptions generally unchanged – Programs for computers – Business methods – Methods of treatment etc Intermediate Documents

• Destroy only • Old: only relevant for designated states in common • New: relevant for all designated states • Euro-PCT: national fee paid, translation filed • Applications filed/divisionals received after 13.12.07 2nd Medical Indications

• Product X for use as a medicament • Product X for the treatment of A • Product X for the treatment of B • Swiss claims OK – NOT use of product X for treatment of A – ONLY substances or compositions Protocol on Interpretation of Article 69 EPC

• Article 69 – extent of protection determined by the claims • “For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims” • Any practical change? Filing Requirements

• Any language – File translation in 2 months • Reference filing • Claims not necessary – Beware added subject matter – File in 2 months of invitation Priority

• Re-establishment of rights for priority period – File within two months of priority period • Make declaration up to 16 months after earliest priority date • Translation of priority documents only needed for assessing patentability Lack of Unity – Euro-PCT

• International Phase – One step protest procedure (EPO=ISA) • European Regional Phase – No invitation to pay additional search fees – Only first invention is searched & examined – Amend on entry to regional phase? Further Processing

• In general, available for any missed time limit

• Now available for eg: – filing fee –search fee – designation fee – examination fee – designating inventors – responding to Office Actions Further Processing

• Not available for eg: – Priority period - Deposit of biological material – Filing appeal - Entitlement action – Review by Enlarged BoA - Correcting deficiencies for date – Further processing of filing – Re-establishment - Filing missing parts eg claims – Translation of application - Correcting deficiencies in – Copy of referenced application formal requirements – Renewal fees - Opposition time limits – Priority declaration and correction – Additional search fees Re-establishment of Rights

• Less widely available • Back-up to further processing – Not available directly where further processing is available – Further processing (12 months) – Priority period (2 months) – Renewal fees – Filing appeal – NOT time limit for re-establishment itself Limitation & Revocation

• Revocation – All proprietors must agree: evidence – File written request – Pay revocation fee - €450 – Decision taken by Examining Division – Effect: ab initio/ex tunc – Opposition proceedings take precedence if currently pending Limitation

– Limit patent: • As granted • As limited in opposition • As limited in previous limitation proceedings – No added subject matter – Must limit claims: cannot extend scope of protection – Must be clear Limitation

– All proprietors must agree: evidence – File written request – Supporting statement optional: provide basis? – Pay limitation fee - €1000 – Decision taken by Examining Division – Effect: ab initio/ex tunc Limitation

– Opposition proceedings take precedence – Patentability not examined – One opportunity to correct deficiencies • 2 months in practice • Extendible under exceptional circumstances • Decision to refuse is appealable: cheaper to re-file limitation request? Limitation

– Within 3 months • Pay prescribed printing fee • File translation of amended claims in DE and FR • 2 month grace period with surcharge – Failure → rejection of request – Validate in contracting states •Failure → void ab initio Petition for Review

• Grounds – Fundamental procedural defect • Wrong composition of Board • Wrong claims examined • Not given oral proceedings – Criminal act: must already be established in court • If possible, must have raised ground at Appeal • Unlikely to be used Attorney Evidentiary Privilege

• Gives EPA privilege in proceedings before the EPO • UK privilege already exists and is stronger London Agreement

• Change in translation requirements • Comes into force 1st day of fourth month after ratification – 1 March 2008 or 1 April 2008? • Only affects countries that ratify it Affected Countries

• • • (approved, expected to ratify soon) • (approved, expected to ratify soon) • • • • • & • the • (approved, expected to ratify soon) Effects (1)

• Still need to file translation of claims into French & German for Rule 51(4) EPC (intention to grant) Effects (2)

• Countries with English, French or German as national language require no translation

• United Kingdom • Germany • France (approved, expected to ratify soon) • Monaco • Switzerland & Liechtenstein Effects (3)

• Other countries – Can require translation of claims into national language – Select English, French or German for translation of description & drawings Effects (4)

• So far all other countries select English

• Denmark • Iceland • Latvia • Slovenia • the Netherlands • Sweden Overall Effect

• If language of proceedings is English, only translation of claims is required for countries party to London Agreement • Save approx 90% in translation costs Disputes

• Countries may require that a proprietor provides a full translation into national language to alleged infringer and competent court Important Exceptions

• • Summary

• easier filing requirements • unity of invention – Euro-PCT • limitation & revocation • reduced translation costs End

• Any questions? 9 John Street London WC1N 2ES Tel: +44 20 7242 5974 Fax: +44 20 7430 0275 [email protected] [email protected]