EPC 2000 The London Agreement New Matter Objections & Cost Saving Ideas for US Practitioners

1. EPC 2000 The London Agreement New Matter Objections & Cost Saving Ideas for US Practitioners Robin Browne

2. Summary • European Patent Convention 2000 • Substantive changes • Procedural changes • Upcoming fee increases • Opportunities to save costs • London Agreement • Added subject matter under the EPC

3. Substantive changes No major changes in substantive patent law – with a few exceptions. Structure of the patent, opposition and appeal procedure is unchanged.

4. Substantive Changes • Second Medical Use Claims –Art.54(5)EPC. • Swiss type claims are no longer necessary, • Now can claim: “Product X for use for treatment of disease Y.” • Doctrine of Equivalents • New Protocol, no change. • Prior filed but unpublished EP or EP(PCT) applications. • Previously only cited against overlapping designated states. • Now cited against all designated states. • Attorney-Client privilege – New for EPO proceedings • Central limitation and revocation – Art 105 EPC • Petition for review by Enlarged Board of Appeal - very limited grounds

5. Substantive Changes • Novelty – Art. 54(3) EPC - Prior filed but unpublished EP or EP(PCT) applications. - Now cited against all designated states. • Attorney-Client privilege • Central limitation and revocation • Petition for review by Enlarged Board of Appeal.

6. Further processing • Further processing – Article 121 EPC - standard remedy for missed time limits; - communication from EPO; - two month time limit; - request further processing, pay fee (Euros 210) & complete the omitted act.

7. Further processing • Not possible for time limits for: - further processing & restoration; - priority year, priority declaration; - request for appealable decision, appeal, petition for review; - renewal fees.

8. Re-establishment of rights • Restoration – Art. 122 EPC: - generally available when further processing not available; • Available for time limits for: - further processing; - priority year (2 month deadline). • Similar to US standard of “due care”, e.g. isolated incident in otherwise reliable system (with back up).

9. Procedural changes • The filing procedure has been greatly relaxed. • Most missed deadlines can be recovered.

10. Filing procedure Filing by reference – Rule 40 EPC: - can file by reference to a previously filed application stating; - filing date; - application number; - the Office in which it was filed; i.e. without a specification - certified copy due in two months; - translation, if necessary, due in two months.

11. Filing procedure • Remedies for deficiencies, e.g. no certified copy of translation: - EPO sends invitation; - non-extendible period of two months for response; - no further processing.

12. Priority • Can claim priority from WTO members (e.g. Taiwan); • Can add or correct priority claims - within 16 months from priority date; • Can restore the priority period; • No need to file a translation of priority document unless it is relevant to patentability.

13. Examination procedure International Phase • Can use EPO as ISA/IPEA - nil search fee and a better quality search; - combined search report and written opinion on patentability; - usually same examiner in regional phase; - same examination report.

14. EPO Regional Phase • Do not pay claims fees on filing (or request refund of excess claims fees later); • EPO issues Rule 58 EPC invitation to amend claims and pay excess fees within one month for 11th (16th after April 1st 2008) and subsequent claims; • If fees not paid, EPO gives a non-extendible one month grace period.

15. Preliminary claims amendment • Put the most important independent claim first; - the EPO will only search the first invention; - can no longer pay extra search fees; - divisionals are now required.

16. Preliminary claims amendment • EP cases can have independent method and product claims without a restriction requirement, • provided that the claims have the same characteristic technical feature. • Remove any clearly unpatentable independent claims, e.g. as per PCT search report; • the EPO may disregard such claims and then declare the remaining claims lack unity.

17. EPO Fee increases General 5% increase from April 1st 2008 • Some Significant Increases • Claims Fees - Currently €45 for 11th and subsequent claims; - Not affected by dependencies; - After April 1st 2008, €200 for 16th+ claims; - After April 1st 2009, €500 for 51st+ claims.

18. EPO Fee increases • Preliminary amendment even more important now. • Consider multiple dependencies. - e.g. “A method or product as claimed in any preceding claim, wherein …” • Omit claims which have no independent validity. - make sure there is support in the specification.

19. Annuities • Renewal fees will increase by up to 56%. • Surcharge for late renewal goes up from 10% to 50%. • Incentive to quicker prosecution? • But fees then due to national Offices. Designation fee - Single designation fee of €500 from April 1st 2009. Covers all states.

20. Combined Search Report and Written Opinion on Patentability • EPO now uses same examiner for search and examination • Search report - Unduly broad or speculative claims may not be searched. - If claims lack unity, examiner will only search first claimed invention.

21. Combined Search Report and Written Opinion on Patentability • Previously the EPO would invite payment of additional search fees. • It is no longer possible to pay further search fees without filing a divisional application. • Divisionals can be delayed until prior to grant of parent – but not later!!! • Preliminary amendment will save costs.

22. Substantive examination • Examination report may simply refer to the objections in the Written Opinion. • Must now limit to a single invention. i.e. the first searched claims.

23. Grant procedure Procedure the same as under EPC 1973. • Notice of allowance is now under Rule 71(3) EPC (formerly Rule 51(4) EPC). • Four months to pay grant fee and file French and German claims translations. • Further processing available.

24. Annuities prior to grant • We recommend that you consider delaying response to the Rule 73(3) letter so that the next annuity falls due prior to the date of grant. This results in a single fee being due to the EPO and may avoid the need to pay separate annuities in each designated state.

25. The London Agreement • The London agreement was established in 2000 with the aim of reducing the need for translations of granted European patents. • The Agreement will come into force on May 1st 2008 following ratification by the last key country, France. • Translations can add 40% to the cost of European patents.

26. Validation Costs: Before The London Agreement • EPO provides centralised granting system for European Patents • EPO: 32 member states, 23 languages • Validation costs : • 10 member states ~ $24k • 20 member states ~ $48k • All member states ~ $73k

27. The cost of a European Patent Cost in Dollars year Based upon EP patent specification in English containing 22 pages; 20 claims; and validated in 10 member states

28. The London Agreement • Translations into national languages are hardly ever consulted. If there is a Court action the authentic text is the language in which it was granted. • The original purpose was to provide information in each country’s official language, but the national patent is validated years after the A publication.

29. The London Agreement • European patents are granted in one of three languages: English, French or German. • Under the London Agreement no country having English, French or German as an official language can require a further translation.

30. The London Agreement • Other member countries - no translation of the description may be required provided that it is in a preferred language. • English is likely to be the preferred language for most countries. • Translations of the claims into each official language is likely to be required. • Enabling legislation is yet to be passed in most countries.

31. The London Agreement • When the Agreement comes into force for those countries which have enacted the legislation, there will be no requirement for translation of a patent granted in English. • A claims translation, local representative and a possible official fee will be needed.

32. The London Agreement • A full translation will be required in other countries where the law has not been passed or if the language of the specification is not an official language. • It is hoped that all major countries will eventually join the Agreement.

33. The London Agreement • The Agreement will only apply to EPs granted after it comes into force on May 1st 2008. • All EPs which have not been allowed and many which have been allowed should be able to benefit from the significant cost savings available. • An address for service is advisable even if a translation is not required.

34. The London Agreement • The deadline for response to the Rule 71(3)EPC communication can be missed. • Further processing (additional period 4-6 months) will be required but substantial translation costs may be avoided especially for long specifications. • National phases can be entered in more countries within existing budgets. • Competitors may ratify EPs more widely.

35. Cost of a European Patent: After

36. Added (New) Subject Matter

37. Art 123 EPC (1) The European patent application or European patent may be amended in proceedings before the European Patent Office, in accordance with the Implementing Regulations. In any event, the applicant shall be given at least one opportunity to amend the application of his own volitation.

38. Art 123 EPC (2) The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. (3) The European patent may not be amended in such a way as to extend the protection it confers.

39. Added (New) Subject Matter • EPO practice is very different from US practice. • A consistent source of difficulties for US applicants. • Applied increasingly strictly by the EPO. • These difficulties can be reduced easily.

40. Added (New) Subject Matter • Basic idea: An applicant shall not be allowed to improve his position by adding subject matter not disclosed in the application as filed; • which would give him an unwarranted advantage or • could damage legal certainty of third parties relying on the content of the original application. (G1/93).

41. Content of the application as filed • The content of the application as filed does not include: • the abstract; • the priority documents, even if filed with the application. • The content of a divisional application is limited by the specification as filed, not the parent case. (T 441/92).

42. Article 123(2) – specific issues • If a genus is disclosed, a species is part of the content of the application as filed if a skilled reader would seriously contemplate the species as a practical embodiment of the invention (T187/91). • A cross referenced document is not part of the application. • A limitation can constitute added matter (G1/93). • eg A [helical] spring ...

43. Article 123(2) – specific issues • It is not normally permitted to restrict a claim to isolated features from a preferred embodiment. • Such an amendment is allowed if there is no clearly recognisable functional or structural relationship between the features (T1067/97).

44. Test for new matter • Is the amendment directly orunambiguously derivable from the application as filed? • This is the same test as for novelty or priority entitlement.

45. Test for new matter • An amendment that relates to a feature providing a technical contribution to the invention must comply with the disclosure test. • An amendment not providing a technical contribution need not comply with the disclosure test but must not give the applicant an unwarranted advantage (G1/93).

46. An example preferred by the EPO • An application as filed contained only product claims relating to “A double heterojunction p-i-n photovoltaic cell having at least three different semiconductor compound layers composed of at least four elements, comprising .... ...first or second ohmic contacts ...” • During the examination the applicant also claimed a method of making such a photovoltaic cell. • The method claim did not include the feature of the first or second ohmic contacts.

47. An example preferred by the EPO • The board allowed deletion of this feature from the method claims. • The board explained that the aim of the invention was to make photovoltaic cells with certain abilities. This was achieved by use of three different semiconductor layers formed of at least four elements. • The presence of ohmic contacts “did not provide a technical contribution to the subject matter of the claimed invention”. • Therefore the presence or absence of such contacts did not affect the carrying out of the invention since they were not an essential part of it. • Act 123(2) was not contravened. (T 802/92)

48. Practical considerations • Most EP cases for US applicants are ex-PCT. • The PCT specification is the EP specification. • It is too late at 31 months to broaden the claims.

49. Practical considerations • US-style claim dependencies with all claims dependent on claim 1, are limiting under EPO practise. • Suppose we want to limit a case to claims 1+3+5. • US-style dependencies will support 1+3 and 1+5 but not 1+3+5 unless the description gives support. • Often claims are drawn from different embodiments or examples.

50. Art 123(3) EPC • A limitation which adds new matter invalidates a patent during opposition proceedings. • Amendment to delete the limiting matter would extend the protection conferred. This is prohibited by Art 123(3) EPC. • This creates an inescapable trap. • It does not matter if the examiner approved the amendment. • The responsibility remains with the applicant.