Our European news archive

The following are items which have appeared on our "European IP news" page in the past.

Please note that whilst we do our best to ensure that the information in these news items 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.

Remember in particular that the information in some of these archived items may no longer be up to date.

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; archived 8/08)

European Union joins the Hague system

The European Union (via OHIM) is now linked to the Hague Agreement system for obtaining international designs. As of 1 January 2008, it has been possible to designate the EU in an international design application, and as a result to obtain a registered European Community design via the Hague system. Nationals and residents of the EU can also now file international design applications, and thereby obtain design protection in other countries which are party to the Hague system.

At present there are relatively few non-EU countries in the Hague system, but as more countries join in the future, international design applications are likely to become increasingly popular. Applicants need to take care, however, as the Hague system does not harmonise design laws, and a design which meets the requirements of the Hague Agreement, or of one of the countries which is party to the Agreement, may nevertheless be invalid in another member country. Local advice will still need to be sought regarding the best way of protecting a design in any given country.
(Item updated 2/08; archived 5/08)

Norway & Croatia now in the EPC

As of 1 January 2008, both Norway and Croatia are now full members of the European Patent Convention.

A European patent application can now include up to 34 European countries. It can thus provide a highly efficient route to pan-European patent protection, a route which, in view of the translation changes highlighted above, will soon become extremely cost effective.

It is worth noting that the countries included in the European patent system are not exactly the same as those which belong to the European Union. A European patent can, for example, include Switzerland.
(Item updated 2/08; archived 5/08)

UK IP Office opinions

The UK Intellectual Property Office (IPO) continues to offer its "opinions" service, providing relatively quick and low cost – although non-binding – decisions on infringement and validity of UK patents.

In a recent request for an opinion on the validity of a European (UK) patent, however, an IPO hearing officer has made clear that if the only prior art raised in the request has already been considered in depth during the pre-grant examination of the patent, this is unlikely to be sufficient to constitute a "new question or argument" and the request is likely to be refused. In the case in question, the prior art documents referred to in the request had already been listed as particularly relevant in the official search report for the original patent application.

Thus, in order to question the validity of a UK patent using an IPO "opinion", it will typically be necessary to find some new prior art, or at least a very new take on the previously considered prior art, for the attack to be deemed worthy of consideration.
(Item added 2/08; archived 5/08)

"Novelty of purpose" claims in Europe

In a recent decision T0684/02, a European Patent Office (EPO) Board of Appeal expressed the view that a claim to the use of a known process for a new purpose was not patentable.

It has long been established (by the Enlarged Board of Appeal case G2/88) that in a European patent, a claim can validly be directed to the use of a known product for a new purpose, so long as the new purpose involves some new and previously unrecognised technical effect. In this more recent case, however, the Appeal Board seemed reluctant to extend that principle to process- as opposed to product-based claims.

It is likely that others in the future will attempt to have similar types of claim considered by EPO Appeal Boards, in the hope of achieving a different outcome. Each EPO appeal is decided on its own merits and individual appeal boards need not necessarily heed the earlier decisions of other boards; a more lenient decision could therefore result from a future case on similar issues.

Meanwhile the UK IP Office will still reject all claims based purely on novelty of purpose, except those directed to new medical uses.
(Item added 2/08; archived 5/08)

Entitlement to UK patents

A decision handed down in mid-2007 by the UK Court of Appeal threw considerable doubt over the laws governing entitlement to UK patents.

The case concerned, Markem v Zipher, related to the treatment of cancer, and an invention which had been developed following the exchange of information between research institutions in the USA and Israel. It determined that in order for a first party A to prove his entitlement to a patent granted to another party B, A must not only prove that he has derived title from the relevant inventor or inventors, but also be able to invoke some other rule of law (for example, breach of confidence) to establish that B should not have been granted the patent. This did not sit easily with the provisions of the UK Patents Act, and concerned many UK practitioners.

The House of Lords, fortunately, overturned the Court of Appeal's decision in late 2007. They confirmed that entitlement to a UK patent is governed only by the terms of the UK Patents Act 1977 and thus requires only that title be derived from each of the inventors, for instance via a contract of employment or a legally binding agreement.

In the same case, the Lords also confirmed that the UK Intellectual Property Office (IPO) has wide discretionary powers when handling entitlement disputes. The IPO has considerable experience in deciding the ownership of UK patents and patent applications, and is regarded by many in the UK as the forum of choice in which to debate such issues. The House of Lords appeared happy to endorse that view.
(Item added 2/08; archived 5/08)

"Fast-track" UK trade mark procedures

The UK's Intellectual Property Office is to introduce a new procedure for "fast-tracking" UK trade mark applications through the examination process.

Fast-track examination will be available for new applications filed electronically on or after 7 April 2008. It will cost an additional £300 and will have to be specifically requested at the time of filing; it will not therefore be available for already filed applications. Nor will it be an option for applications containing series of trade marks.

A fast-tracked trade mark application will be examined within 11 business days (Mondays to Fridays, excluding public holidays) of filing. The examination report will usually be sent by fax or e-mail during this period. If the IP Office fails to meet this target, the fast-track fee will be refunded. The Office will also do its best to process any correspondence on the application (for instance, responses to objections raised in the examination report) as quickly as possible.

A regular trade mark application is usually examined about 4 to 6 weeks after its filing date. For applicants wishing to achieve trade mark protection more quickly, for instance to protect an imminent product launch, the new fast-track system may therefore provide a useful head-start to the process.

It must be borne in mind, however, that even a fast-tracked application will still need to be published in the Trade Marks Journal and subjected to a three month wait, before registration, to allow third parties to oppose the mark if they wish.

For more information, please contact our trade mark attorney Michael Elliott .
(Item added 2/08; archived 5/08)

New "supplementary" international searches

The PCT system will soon be able to offer "supplementary" international searches if requested by PCT patent applicants. The supplementary searches can be carried out by an International Searching Authority (ISA) other than the one which carried out the "main" international search on the original PCT application. Thus, an applicant should be able to obtain a more thorough overview of the prior art by seeking input from searching authorities in a number of different countries.

The changes which allow these new searches will come into force on 1 January 2009, but in practice the searches will only be available once one or more ISAs have indicated that they are able to offer them.
(Item added 12/07; archived 4/08)

Parallel UK & European patent litigation

A question often before the UK patent courts is whether, if a European patent is under opposition before the European Patent Office (EPO), the UK court should "stay" (i.e. temporarily suspend) litigation under the UK part of that patent, for instance in an action to revoke the patent or to enforce it against an infringer. If the UK litigation were to be stayed until the EPO opposition had been decided, this might involve a delay of several months or even years before the situation in the UK could be resolved.

In recent cases, the UK courts have made it clear that they are reluctant to slow down litigation under European patents in this way. The most recent example of this was a case involving Research in Motion and the well-known Blackberry® device. Here the validity of a European patent was in dispute in the UK, but the patent was also the subject of an EPO opposition. The UK litigation was fairly well advanced, with expert witnesses instructed and a trial date set for only a few months ahead. The opposition, in contrast, was expected to take four to five years to resolve.

In this case, the judge refused a stay of the UK proceedings. He believed there would be advantages to having the UK legal position resolved, and that a UK court decision might even be of use to the EPO in handling the co-pending opposition. He did however emphasise that in situations like this, each case will need to be decided on its own merits, the key aim being to achieve a fair resolution of the dispute between the parties.
(Item added 12/07; archived 4/08)

Changes to UK patent rules

The UK Intellectual Property Office (IPO) introduced new Patents Rules on 17 December 2007. The previous rules have been rewritten to increase their clarity and consolidate previous changes, and a number of procedures have been simplified, such as those to do with filing sequence listings, requesting corrections, seeking extensions of time, complying with formal requirements on divisional applications and bringing litigation proceedings (for example revocation actions) before the IPO.

Other important changes include:

a six-month extension of patent term for medicinal products intended for paediatric use, similar to the current "supplementary protection certificates" which are available for pharmaceutical and plant protection products; and
compulsory licensing of patented pharmaceuticals for export to under-developed countries.

The new rules also enable the IPO to accept patent applications and other documents filed in Welsh rather than English.
(Item updated 12/07; archived 4/08)

Serbia & Montenegro via European patents

Please note that the legal effects of European patents and patent applications which extend to Serbia and Montenegro are still not entirely clear.

On 3 June 2006 Montenegro declared its independence from Serbia, and as a result Serbia has become the official legal successor to the former State Union of the two countries. The Republic of Serbia has since confirmed its continued membership of the PCT, and its commitment to the "Co-operation and Extension Agreement" which allows European patents to be "extended" to cover Serbia.

The new Republic of Montenegro has also confirmed that the PCT continues to apply there. It has not yet, however, made any announcement regarding the Co-operation and Extension Agreement with the European Patent Organisation.

As a result, European patents and applications which were in existence on 3 June 2006 can be validly extended to cover the Republic of Serbia, but it is not yet clear whether they can also be extended to Montenegro. European patent applications filed after 3 June 2006 can only, as things currently stand, be extended to Serbia and not to Montenegro.

We will provide more information once it becomes available from the European Patent Office.
(Item added 7/07; archived 3/08)

EPO to cut its search services

The European Patent Office (EPO) has announced that as of 1 September 2007, it will no longer perform the "standard" and "special" patent searches which it used to undertake. Such searches will now need to be obtained from national patent offices such as the Austrian or Swedish Patent Offices or the UK Intellectual Property Office.
(Item added 12/07; archived 4/08)

Decisions on European divisional applications

The European Patent Office's Enlarged Board of Appeal has recently issued important decisions (G1/05 and G1/06) which clarify several issues to do with European divisional applications.

The key points of their decisions are:

if a divisional application, as filed, contains subject matter which extends beyond that contained in its parent application as filed, this does not make the divisional invalid. The problem can be put right by amending the divisional during examination. By the time the divisional is granted, however, it must not contain any such additional subject matter.
a divisional application progresses to grant entirely separately from its parent. Even if the parent is no longer pending, the divisional application can still be amended, for example to remove additional subject matter.
there are no special limitations on the amendments which can be made to a divisional application during its prosecution. In particular, as with any other application, an amendment can be based on any of the subject matter which was present in the divisional application as filed, whether or not that subject matter was embraced by the claims of the divisional as filed.
a divisional application may be filed from an application which is itself a divisional. There is no theoretical limit to the number of times that this can be done, provided that each of the divisionals does not, at grant, contain subject matter extending beyond that contained in the application from which it directly derives. Each of the divisional applications in the sequence will have as its filing date the date of the "root" application in which the invention in question was first disclosed.
subject matter which is omitted from a divisional application on filing cannot subsequently be re-introduced into that application, or into any later divisional derived either directly or indirectly from it. In other words, in the case of a divisional which forms part of a sequence of divisionals, anything disclosed in it must be "directly and unambiguously derivable" from what is disclosed in each of the preceding applications as filed.
it is perfectly acceptable for a divisional application to be, at least on filing, identical in content to its parent. Indeed we would recommend that this be done to avoid the loss of potentially important subject matter. The claims of the divisional must, however, be amended subsequently to ensure that they do not cover the same invention as is claimed in the parent.

Much of the above confirms the existing views of European patent attorneys, and validates practices which have long been applied, without problem, in proceedings before the European Patent Office. It is however reassuring to have clarification at last on the divisional-related questions which were referred to the Enlarged Board last year.
(Item added 7/07; archived 3/08)

Important change in UK Trade Marks Registry practice

As of 1 October 2007, the UK Trade Marks Registry has now stopped refusing trade mark applications on the basis of earlier trade marks, no matter how similar, unless the owners of the earlier marks successfully oppose the applications.

This change has important implications for trade mark owners, who will no longer be able to rely on the Trade Marks Registry to "police" the UK Register. Instead, trade mark owners will have to play an active role if they wish to prevent other people from registering trade marks which conflict with their own.

The Registry will still carry out a search against each new trade mark application, as part of the examination procedure. The owners of trade marks cited in that search will then be notified when the application is published, so that they can oppose registration of the later mark if appropriate. The Registry's new approach is therefore similar to that of OHIM (OAMI).

It is important to note that these notifications of later marks will only be issued automatically to the owners of UK national trade marks and International trade marks designating the UK. The owners of European Community trade marks, and of International trade marks designating the European Community, need to "opt in" to the system - for which there is a £50 official fee - if they wish to receive the notifications.

You should also be aware that although the Registry will notify those whose trade marks are cited against a later application, we do not yet know how reliable the notifications will be or how quickly they will be issued. We therefore recommend that your clients set up their own watches, to warn them if a trade mark which resembles theirs is published for opposition purposes. A trade mark watch is something we can organise and manage for you.

By way of reminder, the period for opposing a UK trade mark application is only three months from its publication.

Please contact Michael Elliott for more information about trade mark watches.
(Item updated 10/07; archived 3/08)

Norway to join the European patent system

As of 1 January 2008, Norway will become a party to the European Patent Convention (EPC). As of that date, it will be possible to include Norway in all European patent applications.

Where a European patent application derives from an earlier PCT application, it will only be possible to include Norway in the European application if the PCT one was itself filed on or after 1 January 2008.
(Item added 6/07; archived 12/07)

UK-to-Japan patent express

The UK Intellectual Property Office and the Japanese Patent Office have together launched a pilot scheme aimed at improving the quality and efficiency with which patent applications are processed in the two countries.

An applicant will be able to request accelerated examination of his UK patent application if he is able to submit copies of search and examination reports issued on a corresponding Japanese patent application. Japanese applications can similarly be accelerated by submitting copies of reports issued on corresponding UK ones. Each office should then be able to benefit from work already done by the other, to avoid duplication of effort and reduce delays.

It remains to be seen whether the outcome will be a greater convergence of the patentability criteria applied by the two offices, which should in theory be similar but often, in practice, result in very different claims being granted in the two jurisdictions.

The pilot scheme will initially run for a year, from July 2007.
(Item added 7/07; archived 12/07)

Patentability of stem cell cultures

The use of human embryos for industrial or commercial purposes is specifically excluded from patent protection in Europe, under Rule 23(d) of the European Patent Convention (EPC).

The Wisconsin Alumni Research Foundation filed a European patent application which claimed a stem cell culture. At the time of filing, the only way that the culture could be prepared necessarily involved the destruction of human embryos, and the application stated as much. However, more recently it has become possible to obtain the claimed product without necessarily having to destroy embryos, by making use instead of already available human embryonic cell lines.

The European Patent Office's Examining Division rejected Wisconsin’s claims under Rule 23(d) and Wisconsin then appealed against the rejection. As a result, the Appeal Board has referred a number of questions to the Enlarged Board of Appeal, including:

whether or not Rule 23(d) invalidates a patent claim to a product which can only be made by destroying human embryos, even if (as in Wisconsin's case) the method of production is not actually part of the claim; and
whether it is relevant that a production method which does not require embryo destruction subsequently becomes available.

The Enlarged Board's opinion has also been sought as to whether Rule 23(d) EPC, which first came into force on 1 September 1999, should apply retroactively to European patent applications filed before that date. Another question posed was whether, even if Rule 23(d) does not prevent the patenting of the Wisconsin product, would it nevertheless be excluded from patent protection by the more broadly worded Article 53(a) EPC, which states that patents must not be granted for inventions "the commercial exploitation of which would be contrary to 'ordre public' or morality".
(Item added 7/07; archived 12/07)

Prior art process invalidates a claim to its inevitable product

A recent UK High Court decision, Servier v Apotex, concerned a patent which claimed a particular polymorph of a perindopril salt. The claim was held to lack novelty over a prior art disclosure of a process which was shown inevitably to result in the claimed polymorph. Thus, even if a compound is not specifically disclosed in the prior art, it may still be held to lack novelty if a prior art process can be shown to lead directly and inevitably to the same compound.
(Item added 7/07; archived 12/07)

Synthetic bacterium enters the patent system

Craig Venter, the man who claims to have been first to sequence the genome of a living organism, has applied to patent a synthetic bacterium which he has been developing with his colleagues. The main claim of his patent application lists 381 genes which Venter considers to be essential to keep an organism alive, his so-called "minimal bacterial genome". These genes were identified from the organism which Venter first sequenced, Mycoplasma genitalium, by taking out each of its 470 genes in turn to see which it could survive without.

Venter's eventual aim, apparently, is to synthesise a DNA sequence containing these 381 genes, and by inserting this into a suitable "ghost cell" to create an artificial organism. He had not achieved this goal, however, at the time he applied to patent his minimal bacterial genome. Nevertheless his original claims were broad, including some directed to the potential uses of artificial organisms, for example in the synthesis of biofuels.

Inevitably, the recently published patent application has caused controversy. A Canadian based bioethics organisation, the ETC Group, has already asked Venter to withdraw the application, and asked the US Patent and Trademark Office to reject it as unethical. Doubtless many other objections, in various countries, will follow in due course.

Venter's patent application refers to the new genome as Mycoplasma laboratorium, but ETC have suggested it be nicknamed "Synthia", rather as the first cloned sheep had her own nickname "Dolly". Synthia is likely to become something of a celebrity over the next few years, and it will be interesting to chart the progress of her patent applications through the various patent offices of the world.
(Item added 8/07; archived 12/07)

Selective cross-breeding: potentially patentable?

"Essentially biological processes" for the production of plants or animals, for example selective cross-breeding, are excluded from patentability in Europe under Article 53 of the European Patent Convention (EPC). However if such a method also involves a technical step, requiring human intervention rather than purely natural, biological effects (for example an element of genetic engineering), can it then be patentable? To what extent does this depend on the nature of the technical step, when in the process it occurs and what it contributes to the end result?

These questions have been referred to the European Patent Office's Enlarged Board of Appeal. The case concerned related to a method for increasing levels of anti-carcinogenic glucosinolates in Brassica plants such as broccoli. The referral is now pending under the number G2/07. The Enlarged Board is unlikely to issue a decision, however, until some time in 2008.

In the meantime, note that the exclusion from patentability does not apply to microbiological processes and their products; this is very clearly set out in Article 53 of the EPC.
(Item added 8/07; archived 12/07)

Location of EPO hearings

A recent European Patent Office (EPO) appeal concerned a case where an applicant had been summoned by the Examining Division to a hearing (oral proceedings) in The Hague. The applicant was a South African company represented by a Munich attorney, and so requested that the hearing take place at the Munich branch of the EPO instead. The Examining Division refused this request.

The Appeal Board decided that the Examining Division had every right to refuse the request and to insist that the hearing take place in The Hague.
(Item added 8/07; archived 12/07)

Validity of "dosage regime" claims

In Europe, a method of medical treatment cannot be patented. However, specific forms of claim wording may be used to obtain what is in effect a very similar scope of protection. In particular, when a drug is already known for use in one type of therapy, its use for a further medical indication can be claimed using a so-called "second medical use" or "Swiss" form of claim, which reads "Use of [compound X] in the manufacture of a medicament for the treatment of [new condition Y]". Such a claim focuses on the industrial manufacture of the drug rather than its use to treat patients.

Such claims have also been used to attempt protection for a known drug, for use to treat a known condition, where the only novelty is in the dosage regime, that is to say, the level or frequency of the dose administered. They have been deemed acceptable by the European Patent Office (EPO) and have been included in granted European patents.

The UK courts, however, have made it clear that this form of claim is not valid in the UK. Germany's highest court, the Bundesgerichtshof, may now be taking a similar line. It ruled in the Carvedilol II case that in a claim containing instructions regarding the pattern of administration of a drug, the instructions could not contribute anything in the way of novelty or inventive step to the claim as a whole as they constituted an unpatentable method of medical treatment.

In a more recent UK case, Actavis v Merck, the Patents Court has again concluded that a novel dosage regime cannot be patented if the drug and its medical indication are already known. This decision was reached despite the divergence from EPO practice.
(Item updated 6/07; archived 9/07)

UK Patent Office name change

Please note that the UK Patent Office is now known as the UK Intellectual Property Office. Its new web site address is www.ipo.gov.uk.
(Item added 5/07; archived 9/07)

Patentability of diagnostic imaging methods

A European Patent Office Board of Appeal has referred three questions to the Enlarged Board of Appeal, to do with the patentability of diagnostic methods which involve surgical intervention. Specifically, the questions concern a diagnostic imaging method which can involve injecting a contrast agent into the heart in order to assist both diagnosis and a subsequent related surgical operation. The Board of Appeal has asked whether such an imaging method must be excluded from patentability as a method of surgical treatment, and if so, how a claim to the method might be framed so as to avoid the exclusion. The Enlarged Board is likely to take several months to reach a decision.
(Item added 5/07; archived 8/07)

Trends in biotech patenting

A recent study by a UK-based intellectual property firm, Marks & Clerk, has revealed some interesting statistics to do with the ownership and content of biotech patents between 2002 and 2006. The study found that, contrary to popular belief, the majority of biotech patents are owned not by large corporations but by universities and public research institutes.

It was also found that far more of these patents originate in Japan and the USA than in Europe. Within the EU, Denmark emerged as the country showing the largest growth in biotech patenting activity, whilst England's Oxford University was the best performing European university, although it still holds far fewer biotech patents than the major academic centres in the USA.

As to the content and scope of these patents, Marks & Clerk observed a trend towards a less speculative approach by patent applicants. In 2002 a significant number of patent applications included relatively speculative, sequence-based claims relating to genetic engineering. By 2006 these types of application had apparently declined in favour of more focused applications directed towards specific, and at least partially proven, medical applications. The topics featured most often in today's biotech patents are gene therapy, stem cells and antibodies.

Overall, the authors of the study concluded that there has been a decline in biotech patenting since 2002. Meanwhile another study, conducted in 2006 by David E Adelman of the James E Rogers College of Law and Kathryn L Deanglis of the US law firm Piper Marbury Rudnick & Wolfe LLP, found little evidence to support the popular myth that biotech patents are stifling innovation. Adelman and Deanglis reported a continuing influx of new entrants engaged in patentable biotech research and development.
(Item added 5/07; archived 8/07)

The EPO's influence on UK patent litigation

The UK Court of Appeal has recently ruled that where a European patent is found to be valid and infringed in the UK, and damages are therefore payable to the patentee, this will not be affected by a subsequent European Patent Office (EPO) decision – in opposition proceedings – that the patent is invalid. In the case in question, the Court also refused a request to "stay" the UK court proceedings pending the EPO's decision on a parallel opposition against the same patent.

Overall, this bodes well for UK patentees, who can now expect greater certainty when they litigate under a European-derived UK patent. Even if the patent has been opposed at the EPO, the UK court proceedings are likely to press ahead regardless, and their outcome to be unaffected by that of the European opposition.
(Item added 5/07; archived 8/07)

File wrapper estoppel in Europe?

In late 2006, the Supreme Court of the Netherlands ruled, in the case Dijkstra v Saier, that the prosecution history may be used to help determine the scope of the claims of a Dutch patent. Thus, scope which the patentee was forced to abandon in order to get the patent granted cannot subsequently be "reclaimed" during infringement proceedings. This ruling confirms a number of earlier decisions by the Dutch Supreme Court.

Such "file wrapper estoppel" will not necessarily be approved by other European courts. If the issue is likely to be important to the outcome of a patent infringement or revocation action, this is therefore yet another incentive for careful selection of the jurisdiction in which to litigate.
(Item added 5/07; archived 8/07)

European divisional applications

As you are probably aware, the European Patent Office's Boards of Appeal have referred a number of questions regarding the validity of divisional applications to the Enlarged Board of Appeal.

The EPO has now made clear that in any case where the outcome of an examination or opposition depends on the Enlarged Board's decisions, the proceedings can be stayed at the request of at least one of the parties involved.

However in a further, and more encouraging, development, one of the EPO's Appeal Boards has recently ruled that, whatever the Enlarged Board's eventual verdict, the owner of an existing European patent application should still be entitled to rely on the rules which applied before. For example, if his divisional application contains unallowable subject matter, which was not present in the parent application as filed, he should be allowed to correct that by removing the offending parts from the divisional application.

The case concerned was T739/05. It will not necessarily be followed by other EPO Boards of Appeal, but it does provide some comfort that if the Enlarged Board eventually overturn the EPO's previous, long-standing practices on divisionals, there will be at least a transitional period during which pending applications can still be treated under the old rules.

Meanwhile the Enlarged Board responsible for these cases has had to consider issues to do with the partiality of some of its members. These have now been resolved, so it is to be hoped that the Board will soon be able to turn to the substantive issues before it.
(Item updated 3/07; archived 7/07)

EU to join the Hague Agreement

The European Union is shortly to join the Geneva Act of the Hague Agreement, which governs the so-called "international" design registration system. It will then be possible to obtain a Community design registration via an international design application. This also means that, although the UK itself has not yet ratified the Hague Agreement, UK applicants will nevertheless be able to use the international system via the Community design system.

An international design application can cover up to 100 different designs, and provides a route to design protection in over 40 different countries, including many European, Eastern European and African nations.
(Item added 3/07; archived 7/07)

Deadline for intervening in EPO oppositions

A third party is allowed to "intervene" in existing opposition proceedings against a European patent, within three months of infringement proceedings under the patent having been instituted against him.

A European Patent Office Board of Appeal has recently decided that, in a case where a party has been served with an ex parte interim injunction, the three month deadline runs from the date that the injunction is served on the intervening party. Neither the date that the patentee commenced the infringement proceedings, nor the date that it was granted the ex parte injunction, is relevant to deciding the start of the three month period. The case concerned was T0452/05.
(Item added 3/07; archived 6/07)

New measures to accelerate EPO processing

There have been backlogs at the European Patent Office (EPO) for some time now, resulting in substantial delays in the processing of new European patent applications.

However, as of 1 April 2007, a new pilot project should make accelerated processing possible in certain cases. This so-called "Utilization Pilot Project" (UPP) aims to assess whether there is any benefit in the EPO making use of search reports produced by national patent offices on applications from which subsequent European applications claim priority.

During the next 12 months, any European patent application which claims priority from an already searched Austrian, Danish, German or UK application will be eligible, at the applicant's request, for accelerated processing. The EPO will then issue its "Extended European Search Report" (which provides an opinion on patentability in addition to the novelty search results) within 3 to 6 months of the request.

If even faster processing is needed, applicants will still be able to follow the EPO's existing "PACE" procedures during the subsequent examination phase.

If the pilot project is deemed successful, it could potentially be extended to European applications which claim priority from searched applications in other countries.
(Item added 3/07; archived 6/07)

Priority documents at the EPO

In certain cases, the European Patent Office (EPO) will now include a copy of the priority application, free of charge, in the file of a European patent application. This will happen if the European application claims priority from another European patent application, a US patent or utility model application, a Japanese patent or utility model application or a PCT application filed at either the EPO or the Japanese Patent Office. The new procedures apply to all European patent applications filed on or after 16 January 2007 and to PCT applications which enter the European regional phase as from that date.
(Item added 3/07; archived 6/07)

Gene patents under attack

Michael Crichton's latest science fiction book "Next" focuses on the genetic engineering business, which the author clearly regards as unethical. At the end of the book, he calls for an end to the patenting of human genes.

Hot on the heels of this, US Democrat House Representative Xavier Becerra has introduced a bill calling for the banning of gene patents in the US, not just for naturally occurring genes but also for modified versions. Becerra says, of America's current gene patenting practice: "We have overstepped our bounds. We have made a regulatory mistake. We have allowed the patenting of a product of nature." His bill was introduced on 9 February; its progress will no doubt be monitored with interest.

Meanwhile a study into the patenting of gene sequences, conducted by the University of Sussex in the UK, has concluded that the rush to patent genes in the 1990s has actually produced relatively few granted patents. The University's findings might suggest, contrary to Crichton's fears, that gene patents are not set hugely to inhibit the development of new drugs. Nevertheless it is still the US Patent Office, according to the University's study, which is granting the most gene patents, compared for instance to the European and Japanese Patent Offices.
(Item added 3/07; archived 5/07)

Bogus patent & trade mark registers

Beware – UK, EPC, PCT and CTM applicants are being sent bogus invitations to have their patent or trade mark applications entered onto an unofficial register. The invitations can easily be mistaken for official communications, and include an invoice for several hundreds of pounds or the Euro equivalent. They tend to be sent out shortly after a patent or trade mark application has been officially published.

Entry onto the unofficial register, if it takes place at all, does not give the applicant any legal rights.

Please therefore advise your clients not to respond to any such invitations without first checking with their UK or European patent or trade mark attorney. Patent offices and trade marks registries will usually only communicate with applicants via the local attorney and will not send invoices to applicants directly.
(Item added 1/07; archived 4/07)

Technical advantage as evidence of inventive step

An objection of lack of inventive step can often be overcome, in a European patent application, by showing a technical improvement in the claimed invention as compared to the closest prior art.

This approach was used by the applicant in a recent EPO appeal, T 0234/03. As is often the case, the improvement in question had to be determined by an experimental procedure. The Appeal Board rejected the application on the ground that the procedure was difficult to reproduce and its results too vague and non-quantitative to support a clear technical improvement over the prior art.

European applicants should take care, where an invention is distinguished over the prior art by some technical property, that the property can be reproducibly and clearly (ideally quantitatively) measured. This applies even if the property is necessary for establishing inventive step rather than as a defining feature in a claim. If the experimental test needed to measure the property is not already well known, then clear and precise instructions should be included in the patent application, including any relevant operating conditions.
(Item added 1/07; archived 4/07)

London 2012 - Trade mark issues

Billed as "The world's biggest peacetime project", preparations are already well under way for the 2012 Olympic Games in London.

One of the less well known aspects of these preparations is a new trade mark law introduced to control use of the Olympic logo and preserve the exclusivity of a bona fide association with London 2012.

The new law, which is part of the London Olympic Games and Paralympic Games Act 2006, prevents anyone who is not genuinely licensed to do so from using certain logos, words and combinations of words in a way that might suggest an association with London 2012. For example, the number 2012 cannot be used in conjunction with the word London, or with any of the words gold, silver or bronze, in a way that could imply a commercial link with the genuine Games.

It may be worth warning your clients, especially those who are active in the UK, to take care when selecting new trade marks that they do not accidentally fall foul of this new legislation.

For more information please contact Michael Elliott .
(Item added 11/06; archived 3/07)

Convergence of European, US & Japanese patents?

In an exciting new development, the European, US and Japanese Patent Offices are to begin talks in March 2007 aimed at establishing a system for mutual recognition of one another's patents. Under the proposed system, a patent granted in any one of the three countries could then be automatically granted by the other two. As a result, a single patent application could effectively give rise to patents in all three jurisdictions, saving the applicant a significant amount of time and money.

The implementation process is likely to begin with the introduction of a standardised application form, recognised by all three Patent Offices.
(Item added 11/06; archived 3/07)

European patent court postponed

European Commissioner Charlie McCreevy has announced a delay before publishing the Commission's proposals for a pan-European patent court. He has indicated that more time is needed for consultations and to "explore all options". The single European court was eagerly awaited by those who hold European patents, who currently need to litigate separately in each country of commercial interest. This further delay is likely to cause widespread disappointment.
(Item added 1/07; archived 3/07)

Computer programs & business methods - UK news

The UK's Court of Appeal has recently issued two decisions which clarify the position as regards patentability of computer programs and business methods in this country.

In the Aerotel and Macrossan cases, the Court of Appeal laid down a 4-step approach to determining whether such inventions are patentable. The approach involves (i) properly construing the relevant claim, (ii) identifying the actual contribution that the claimed invention makes to the relevant art, (iii) determining whether that contribution involves only subject matter which is excluded from patentability (for instance, a business method and/or a computer program) and (iv) checking whether the contribution is actually technical in nature.

Using this test, the Aerotel patent was upheld, whereas Macrossan's pending application was refused for being directed to nothing more than a business method and a computer program.

These decisions clarify somewhat the UK position on patentability of such inventions. As a result, the UK Patent Office has issued an updated "practice notice" for the guidance of its employees and customers. The notice indicates that the patentability exclusions may in future be interpreted more broadly than before.

Of particular interest is that the Court of Appeal has also referred certain questions to the European Patent Office's Enlarged Board of Appeal (EBA). These questions relate to the correct approach for determining whether an invention constitutes excluded subject matter, and for assessing inventions which involve both excluded and non-excluded elements. Although the EBA will not be obliged to answer the Court of Appeal's questions, it is noteworthy that the UK courts are making an effort to increase legal consistency throughout the EC and may be prepared to defer to the EPO's views on software and business method patents.
(Item added 11/06; archived 2/07)

Amazon's "one-click" divisional

An EPO examining division has summoned Amazon.com to oral proceedings on their application relating to "One-click" online shopping. This divisional application is identical in content to a now-withdrawn parent application. The EPO examiners believe that Amazon's attempt to force them to examine the same application over again constitutes an "abuse of the patent procedure", and have indicated their intention to refuse it.

This, combined with the US Patent and Trade Mark Office's intentions to cut down on the number of divisional and continuation applications allowed, may herald an end to the use of divisionals and continuations to keep ailing applications alive and prolong uncertainty for third parties.

The outcome of the Amazon hearing, scheduled for mid-November, is awaited with interest. Needless to say, the company will be strongly refuting the EPO's authority to refuse a divisional application on such grounds.
(Item added 11/06; archived 2/07)

Electronic priority document exchange

The European Patent Office (EPO) and the US Patent and Trademark Office (USPTO) are preparing to launch a new system which will allow the electronic exchange of priority documents between the two offices. The service will be free of charge for patent applicants, and should improve processing efficiency for those who file patent applications in both countries.

The new service is currently completing its testing stage, and should be brought into use in January 2007.
(Item added 11/06; archived 2/07)

Beware threats!

When approaching a potential infringer, the owner of a UK intellectual property right (IPR) must always take care not to fall foul of the "threats" provisions of UK patent, trade mark and designs laws. These provide that in certain circumstances, a person threatened with IPR infringement litigation can himself sue the IPR owner for issuing "unjustified threats", thus effectively turning the proceedings back against the person who instigated them.

For this reason it is advisable, if one of your clients wishes to approach someone he believes to be infringing his IPRs, to do so through a qualified UK patent or trade mark attorney or IP solicitor.

In a recent court case concerning design rights, a UK judge decided that even eBay's "Verified Rights Owner" (VeRO) procedures could in some cases fall foul of the threats provisions. By asking eBay to remove products from their listings because you believe that those products infringe your IPRs, you could be seen to be threatening the product vendor, or indeed eBay themselves, with infringement litigation.

This latest case takes an extremely broad view of what constitutes a threat of litigation, and may not be followed in other situations. Nevertheless it is unfortunate because the eBay VeRO system was implemented in order to protect IPR owners rather than to impede enforcement of their rights. And it underlines the need for caution when contemplating IP litigation (whether for patent, trade mark or design right infringement) in the UK, and the importance of seeking specialist advice before taking any action.
(Item added 11/06; archived 2/07)

Changes to UK design law

Some important changes to UK design law came into force on 1 October 2006, with the introduction of the new Registered Designs Rules 2006. Their purpose is to harmonise UK design protection more closely with systems in the rest of the EU, and to simplify – and hence encourage – the protection of designs here in the UK.

The changes include the following.

The UK Designs Registry will no longer conduct any novelty search or examination prior to granting a design registration.
"Multiple" design applications are now possible, allowing two or more (not necessarily related) designs to be protected at the same time.
All applicants can now request that their new design registration remains unpublished for up to 12 months from its filing date. This allows a design to be brought to market at its owner's convenience, without the risk of competitors finding out about it – and potentially copying it – in advance.
It has become easier to restore a design registration which has lapsed due to failure to pay a renewal fee. Previously, restoration required evidence that reasonable care was taken to keep the registration alive. Now that the new Designs Rules have come into effect, such evidence will no longer be called for so long as the proprietor can state that his failure to pay the fee was "unintentional".

(Item updated 10/06; archived 1/07)

Industrial applicability of genes & proteins

The European Patent Convention requires that inventions for which patent protection are sought be capable of being exploited in industry. A Board of Appeal at the European Patent Office has recently ruled in Decision T898/05 that this requirement could be met if an applicant has correctly speculated in a patent application the biological function and hence medico-pharmaceutical application of an isolated gene or its putative protein product, based on credible evidence derived from computer-assisted methods. This evidence may, for example, be information obtained from a sequence alignment with other genes or proteins of known function.

What this decision means is that the pharmaceutical utility of a gene or gene product does not necessarily have to be proven at the date of filing a European patent application, in order for its industrial applicability to be acknowledged.
(Item added 10/06; archived 1/07)

EPC 2000 - changes due in 2007

In December 2005, Greece ratified "EPC 2000", an act which revises the European Patent Convention (EPC) in several key respects. Greece being the 15th state to ratify, this means that the revised EPC will enter into force on 13 December 2007 at the latest. Any countries which have not ratified EPC 2000 by the time it enters into force will be excluded from the European patent system.

Turn to our special page on EPC 2000 for more details of the changes that are on their way.
(Item updated 4/06; archived 12/06)

New life sciences search tool

A recently introduced patent search tool may be of considerable interest to those searching for information in the life sciences sector. The new database can be accessed at www.bios.net/patentlens/simple.cgi, and provides free access to pdf copies of patent publications. Usefully, the full text of the patent specification appears to be searchable. The database currently covers US, European, PCT and Australian patent publications.
(Item added 9/06; archived 12/06)

Online file inspections - UK patents

The UK Patent Office has recently launched a new electronic document handling system. All new patent applications, even if filed in paper form, will be scanned into the new database for electronic processing. Existing paper files will also, eventually, be converted into electronic form.

This means that the official files of UK patents and patent applications should become much more readily accessible. Online file inspections will be possible for new applications and in time also for existing applications and patents.
(Item added 9/06; archived 12/06)