European Patent Law Update

1. European Patent Law Update Presentation to the Houston Intellectual Property Law Association Stephen Gill 24 January 2008

2. Agenda • EPC 2000 • The London Agreement • EPO fees

3. EPC 2000

4. The EPC 2000 • Major EPC revision, completed in 2000. • Very many changes, major and minor. • Came into force on 13 December 2007. • Some of the interesting changes …

5. Unity – PCT regional phase • Under EPC 1973 - where EPO found European regional phase application lacked unity, the applicant could request searches in respect of any of the inventions identified. • Irrelevant who was ISA.

6. Unity – PCT regional phase • Under EPC 2000 and EPO = ISA: • No chance now to search unsearched non-unified subject matter in EPO regional phase – can only elect subject matter of PCT search. • If EP/ISA raises unity objection, consider further searches in reply – otherwise EP divisional will be needed.

7. Unity – PCT regional phase • Under EPC 2000 and USPTO (or KPO etc.) = ISA • Only the invention appearing first in the claims at the time of the supplementary European search can proceed. • If EPO finds lack of unity, irrelevant that US/ISA did not, and no warning. • Think about reordering the claims when entering the EP regional phase or in response to Communication under Rule 161.

8. Amendment after grant • Under old system, after grant you could amend at the EPO only in opposition proceedings. • Self-opposition was forbidden by EPO. • So, voluntary amendment not possible at EPO – must be at national patent offices. • National amendments are often impossible or difficult (different laws), and expensive to carry out in multiple countries.

9. Amendment after grant • New procedure in EPC 2000 – limitation or revocation of a granted EP patent at the EPO is. • Proprietor can apply to EPO to: • Amend the claims, or • Revoke the patent. • Examined only for compliance with: • Article 123(2) – added matter • Article 123(3) – added scope • Article 84 – clarity

10. Amendment after grant • Main features of procedure: • No time limit – life of patent. • Not allowed if opposition exists – opposition always dominates. • Ordinary examiners handle it. • No need to state reasons for wanting the amendment. • National patent offices may require translations/fees (as after an opposition), so cost will still be significant. • Amendment is effective for all designated states.

11. Medical use claims • New claim format for second medical uses. • EPC 1973: “Use of X in the manufacture of a medicament for the treatment of disease Y”. • EPC 2000: “X for use in the treatment of disease Y” • Same format as 1st medical use claims, but limited to a specific use, not use in methods of treatment or diagnosis generally.

12. Medical use claims • Allows greater flexibility in claiming. • More intelligible – some courts dislike existing second medical use claims. • Applies to applications still pending when EPC 2000 came into force. • Should be applicable to any new “specific” use (dosing, routes, patient subgroup, etc.)

13. Priority • New right to add or correct priority claim up to 16 months from priority date (previously this was done as correction, with extra requirements). • Re-establishment of rights available in respect of 12m priority period, for applications filed within 2m of expiry of 12m period. • High threshold • Also newly possible to claim priority from application in WTO but non-PC country (e.g. Taiwan).

14. Designations • At time of filing EP application, all contracting states deemed to be designated. • But, at present, designations still subject to payment of designation fees. • Coming soon (1 April 2009), a flat rate designation fee.

15. Petition to Enlarged Board • But only in cases where: • Fundamental violation of right to be heard or fundamental procedural deficit, for example: • Oral proceedings not appointed. • Failing to decide on request. • Non-member of Boards of Appeal or member with conflict of interest takes part. • Criminal act may have affected decision.

16. EPC 2000 Questions?

17. London Agreement

18. The London Agreement • Agreement to reduce translation requirements at grant of EP patent • Optional system; any EPC state can join • Not all EPC states have joined the Agreement

19. Present EP grant procedure • The EPO issues the Communication under Rule 71(3) (previously Rule 51(4)) allowing an EP application. • When the application is in English, the applicant must then: • File translations of the claims into French and German • Pay grant fees • This is unchanged under the London Agreement

20. Present EP grant procedure • After grant, necessary to file translation of whole patent specification into an official language of each EPC state in which the patent is to take effect. • Time limit is normally 3 months from grant date. • This can be an expensive step, if many countries are selected, due to the cost of translations.

21. EP grant procedure under the London Agreement • The members of the Agreement agree not always to require translation of a granted EP into their national language. • The procedure is unchanged in countries which have not signed up to the Agreement.

22. EP grant procedure under the London Agreement • If a member state has an EPO language (English, French, German) as a national language, they will never require translation of the Patent. • For example, Germany would accept validations of EPs in French or English.

23. EP grant procedure under the London Agreement • If a member state (for example Denmark) does not have an EPO language as a national language, they will nominate at least one EPO language in which they will accept validations of EPs. • For example Denmark will accept validations in English, but not in French or German. • Translations of the claims in to the national language may be required.

24. EP grant procedure under the London Agreement • If all EPC states joined the agreement, translation into French and German would be sufficient for validation in all EPC territories. • Not all states have yet joined.

25. Translation definitely not required in: • UK • France • Germany • Malta • Ireland • Luxembourg • Monaco • Switzerland • Lichtenstein

26. Translation of claims only into a national language required in: • Sweden (English is nominated language) • Denmark (English is nominated language) • Iceland (probably English will be nominated language) • Netherlands (probably English will be nominated language) • Latvia (nominated language not known yet) • Slovenia(nominated language not known yet)

27. Translation into a national language will be required in: • Italy • Spain • These countries have not signed up to the London Agreement, and are not likely to do so in the foreseeable future

28. Translation into a national language may be required in: • These countries have not yet signed up to the London Agreement, and we do not know whether they will do so Austria Hungary Czech Republic Slovak Republic Poland Romania Bulgaria Belgium Turkey Lithuania Estonia Finland Norway Cyprus Greece Croatia

29. Entry into force • Exact date not yet known. • Probably sometime in 2008. • Any European patent that is granted after entry into force of the Agreement will be affected.

37. Example - 1 • UK, France, Germany only • Big saving. • Translations of the granted patent into French and German will not be needed.

38. Example - 2 • UK, France, Germany, Belgium, Austria • No saving. • BE and AT are unlikely to join at day one and will require translations of the granted patent (into French and German, respectively).

39. Example - 3 • UK, France, Germany, Sweden, Denmark • Big saving. • Translations of the granted patent not required. • Only translation of the claims is required, into Swedish and Danish.

40. Example - 4 • All countries • Saving is substantial but perhaps not a large proportion of the total. • Saving is by reduction from translation of the granted patent to translation of claims alone for SE, DK, IS, NL, LV and SI.

41. Possible action now • If the Rule 71(3)/ 51(4) communication has recently been received, delaying grant might allow cost saving, using the London Agreement. • For example, use “further processing” of 71(3)/ 51(4) time limit, for a small cost. • And/or late pay renewal fee.

42. London Agreement Questions?

43. EPO Fees

44. Changes in two tranches • 1 April 2008 (binding on fees paid on or after that date): • Claims fees • Designation fees • Page fees • Renewal fees • 1 April 2009 (applies to applications and regional phase entries filed on or after that date): • Claims fees • Designation fees • Page fees

45. Claims fees • From 1 April 2008: • 15 “free” claims instead of 10. • Cost per claim over first 15 increasing from €45 to €200. • From 1 April 2009: • €500 per claim over first 50

46. Claims fees • Examples • 17 claims • At present: 10 (free) + 7 (€45) = €315 • 1 April 2008 and 1 April 2009: 15 (free) + 2 (€200) = €400 • 30 claims • At present: 10 (free) + 20 (€45) = €900 • 1 April 2008 and 1 April 2009: 15 (free) + 15 (€200) = €3,000 • 60 claims • At present: 10 (free) + 50 (€45) = €2,250 • 1 April 2008: 15 (free) + 45 (€200) = €9,000 • 1 April 2009: 15 (free) + 35 (€200) + 10 (€500) = €12,000

47. Designation fees • From 1 April 2008: • Cost per designation increasing from €80 to €85. • But still one fee per country up to seven. • From 1 April 2009: • Flat rate of €500 for designating “one or more” states

48. Designation fees • Examples • All states • At present: 7 x €80 = €560 • 1 April 2008: 7 x €85 = €595 • 1 April 2009: €500 • 2 states • At present: 2 x €80 = €160 • 1 April 2008: 7 x €85 = €170 • 1 April 2009: €500

49. Renewal fees

50. Renewal fees • … and late payment surcharge increasing from 10% of relevant fee to 50% of fee • So: • Late payment can be costly • Delay payment of renewal due in 2008 in hope of falling under London Agreement? • Renewal fees can be paid up to one year in advance, so consider paying early to avoid 18-56% fee increase.