European IP news

From time to time we will update this page with news of developments in European IP law.  This may include changes to the law or Intellectual Property Office procedures, new opportunities or risks for your clients or important decisions handed down by the intellectual property courts.

Please note that whilst we do our best to ensure that this information is accurate, it does not constitute legal advice.  We cannot accept liability for any consequence of your relying on it.  Instead, if you have a specific query about your clients' European intellectual property rights, please contact us directly for advice.

EPO fee increases

On 1 April 2008, the European Patent Office (EPO) increased many of its official fees.  The most significant changes were to excess claims fees and to renewal fees.

Before 1 April, excess claims fees of €45 were payable, on filing a European patent application, for the 11th and each subsequent claim.  Now, the first 15 claims are free but the fee payable for the 16th and each subsequent claim is €200.  Clearly this could substantially increase the cost of filing an application which contains a medium or high number of claims.  For example, an application containing 30 claims previously attracted an excess claims fee of €900 (10 free claims + 20 at €45).  The same application now attracts an excess claims fee of €3,000 (15 free claims + 15 at €200).

We recommend that applicants review their claims with their European patent attorney before filing a new European application or entering the European regional phase with a PCT application.  Wherever possible, less important sub-claims should be removed at this stage in order to reduce the official fees payable.  Such sub-claims can be reinstated during the examination procedure, once the scope of the main claims has been approved.

Renewal fees for a European application have also increased, by up to 55 % depending on the age of the application.  Perhaps more importantly, the surcharge for paying a renewal fee late, during the six month grace period, has increased to 50 % of the overdue renewal fee.  It used to be only 10 % of the overdue fee.

Applicants may wish to take greater care from now on to ensure that renewal fees are paid on time, to avoid the high penalties which late payment attracts.

Other official EPO fees also increased on 1 April, but to a lesser extent than the excess claims fees and renewal fees.  Further changes will be introduced on 1 April 2009, including a flat rate designation fee of €500 to cover all European Patent Convention states; a new excess claims fee of €500 for the 51st and each subsequent claim; and a further fee for each page of the application over 35, payable on filing the application instead of at grant as under the current rules.
(Item updated 4/08)

New dosage regimes – UK comes into line with EPO

In a European patent, claims can be allowed for the use of a substance to manufacture a pharmaceutical, even where the only thing that's new about that use is that the drug is intended to be administered using a different regime – for example, with a different frequency, or in different sized doses – to that used in the past.  In other words, a new "dosage regime" can be patented, even for a known drug being used for a known pharmaceutical indication.

In the past, however, the UK courts have ruled that such claims are not valid in this country.  The UK courts thus took a different approach to that of the European Patent Office (EPO), which was happy to grant the claims, and to the courts of several other European countries.

A recent Court of Appeal case has changed all this.  In Actavis v Merck, the UK court decided that it should be consistent with the EPO, and upheld a claim which was directed to a new dosage regime for a known drug.  This modified approach will be good news for pharmaceutical developers wishing to patent new uses for their existing drug products, but will clearly not bode so well for generic drug companies.
(Item added 5/08)

Better news for product claims in the UK

The UK Court of Appeal has made clear that if a patentee can show just one way of making a new product, he is entitled to a patent for that product.  His patent will then cover the product itself, whether made by the process he used or by any other process.

There had been some doubt on this issue when an earlier court decision (Biogen v Medeva) had held that a patentee must demonstrate production of his claimed product by every single method embraced by his claims.  If he could not, his claims could be invalid for "insufficiency of disclosure".  The court has now made clear however that in most cases, a new product can be claimed even if the patent only shows one way of making it.  An exception to this might be where the patentee is trying to define his product by the method used to make it, as in the earlier Biogen case.

The more recent decision was handed down in a pharmaceutical case involving H. Lundbeck, Generics (UK) Ltd, Arrow Generics Ltd and Teva Pharmaceuticals.  It represents good news for the owners of UK and EP(UK) patents.
(Item added 5/08)

New opposition grounds during appeal

In the recent European Patent Office (EPO) appeal T 0352/04, the Appeal Board confirmed that an opponent may raise a new opposition ground during appeal proceedings, but only with the patentee's consent.  If the patentee does not consent to the new ground being raised, the Appeal Board cannot consider it.
(Item added 5/08)

Slide shows in oral proceedings

The European Patent Office (EPO) allows parties to use computer-generated slide shows (for instance Powerpoint™ presentations) to put forward their arguments during oral proceedings.  However, presentations need to be supplied in advance, to allow the EPO and the other parties to examine their contents and raise any necessary objections.  In the recent case T0555/06, the opponents failed to supply their presentation in advance of a hearing, and were therefore refused leave to use it on the day.
(Item added 5/08)

Expert opinions - what not to include

If there is doubt over the meaning of a claim in a UK patent, it is for the court to decide how the claim should be interpreted.  Technical "experts" should not give their opinions on the meaning of claims when they submit their reports for the court to use during litigation.  This was the view of Mr Justice Floyd in a recent case between Qualcomm and Nokia.

Litigants wishing to make use of expert evidence should take care about the type of information, and in particular the opinions, which it is appropriate for their expert witnesses to include.  UK judges have been unimpressed in the past by attempts to do their jobs for them!
(Item added 5/08)

At last - reduced translation costs for European patents!

The long-awaited "London Agreement" on European patent translation requirements will come into force on 1 May 2008.  It should greatly reduce the costs of "validating" a granted European patent.

At present, once a European patent has been granted it has to be validated in each of the countries where the patentee wishes it to take effect.  This process can be extremely costly, since the validation process involves preparing a full translation of the patent for each of the chosen countries.  Often this discourages patentees from keeping their patent in force in any but a few key European territories.

The London Agreement will remove the need for a full translation in the countries which are party to it.  These currently include the UK, France, Germany, Croatia, Denmark, Latvia, Liechtenstein, Luxembourg, Monaco, the Netherlands, Slovenia, Sweden and Switzerland.  In order to validate a European patent in these countries, a patentee will only need to supply a translation of its claims, and not of the whole document, in the relevant language.

London Agreement countries can still require the full text of the patent to be translated into one of the three official languages of the European Patent Office – English, French and German – but not into any other language.  Thus a patentee will need to obtain at most two translations (for instance into French and German, if he has filed his original patent application in English) in order for his granted patent to have effect in all of the London Agreement countries.

It is important to note that because the London Agreement comes into force on 1 May 2008, for a European patent granted on or after 1 February 2008 the necessary translations could be filed under the new regime (since they are required within three months of the grant date).  Patentees will therefore be able to take advantage of the less stringent translation requirements in such cases by delaying submitting translations until after 1 May.

Even after 1 May, there will still be many European Patent Convention countries which have not yet ratified the London Agreement, and for which full translations will therefore still be necessary.  However, the new system should mean significantly lower costs for obtaining patent protection across Europe, and as more countries sign up to the Agreement, translation costs will be yet further reduced.  This can only be a good thing for small and medium sized businesses who make use of the European patent system.
(Item updated 2/08)