Our 2010 European news archive

The following are items which have been archived from our "European IP news" page during 2010.

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.

Getting your priority claims right

In order to claim priority from an earlier application, the rights in that earlier application must belong to the entity making the priority claim, at the time of filing the later application.  Since the rights in an invention often belong initially to individual inventors, each of those inventors' rights must have passed to the applicant before the later application is filed.  An "obligation to assign", for example in a contract of employment, is not sufficient to effect the transfer of rights in the invention: an actual assignment must have taken place.

Developments in case law in the UK courts, the European Patent Office and the US Federal Circuit suggest that the right to claim priority from an application filed in inventors' names may not be passed to a company until a specific assignment agreement has been completed, even if the company employs the inventors.  Such an agreement should identify the priority filing number, country and date, and specify that the right to claim priority is included in the transfer.  All parties to the agreement (inventors and assignee company) should sign.

We have provided a more detailed discussion of these issues and the surrounding case law, but please contact any of us at Greaves Brewster LLP if you have further questions.
(Item added 5/10; archived 9/10)

Fee increases for UK patent applications

The UK Intellectual Property Office (IPO) have increased many of their fees.

The changes came into force on 6 April 2010. As of that date:

• the fee for a novelty search on a new UK patent application increased from £100 to £150.
• the examination fee increased from £70 to £100.
• renewal fees (annuities), which previously ranged from £50 for the first renewal to £400 for the last, now range from £70 to £600.
• for PCT-derived UK patent applications, the search fee increased from £80 to £120.

The IPO have however increased the discounts they offer for online filings.  As of 6 April, the discount for filing a search or examination request online is £20, taking the real cost of a novelty search down to £130.  We will continue to file documents electronically at the IPO, so that our clients can take advantage of these discounts.
(Item updated 4/10; archived 7/10)

Fee increases for trade marks too

The fee changes introduced on 6 April 2010 included a new official fee for registering a licence against a UK trade mark.  The fee is £50, the same as that charged for registering a change of ownership.

If one of your clients is negotiating the grant of a licence under its trade mark, and wishes to register the licence, please contact Michael Elliott .
(Item updated 4/10; archived 7/10)

Are your protein claims plausible?

In a recently decided case, Eli Lilly & Co v Human Genome Sciences Ltd, the UK's Court of Appeal revoked a patent for lack of industrial applicability.  The patent related to a new protein, which was said to have a wide range of potential – though unproven – uses.  The patent had previously been approved by a European Patent Office (EPO) board of appeal.

Our analysis of the case explains why the patent failed, and discusses the implications for those who wish to patent biological inventions such as proteins and gene sequences.
(Item added 2/10; archived 7/10)

"Dosage regime" claims still patentable in Europe

Another recent decision from the European Patent Office has confirmed that claims to the use of a known drug in a new and inventive dosage regime can be allowed in a European patent.  The official reference for this decision – which also comments on the validity of so-called "Swiss" claims – is G2/08.

Again, you can find out more in our analysis of the case.
(Item added 2/10; archived 7/10)

Patentability of surgical methods in Europe

Methods of surgery are not patentable in Europe.  The European Patent Office have now issued a decision which clarifies what counts as a method of surgery, and the circumstances in which a patent claim that embraces such a method can be allowed.  The official reference for the decision is G1/07.

Find out more in our analysis of the case.
(Item added 2/10; archived 7/10)

Patentability of "selection" inventions in the UK

A "selection" invention arises when the prior art discloses a broad generic class (say, of chemical compounds) and an inventor chooses a smaller sub-class from within the generic one because the members of the sub-class have special properties.  An example would be a disclosure of a broad class of chemical compounds, defined using a "Markush" structure, and a selection invention covering just four of those compounds which had been found to have greater antimicrobial activity.

This type of invention has traditionally been patentable in the UK, and also under the European Patent Convention.  However, there are conditions.  Firstly, the selected items must not have been specifically mentioned in the earlier disclosure.  Secondly, based on a court case decided back 1930, UK law requires the selection to embody a "substantial advantage": this advantage has to be possessed by all of the items in the selected sub-class but not by the rest of the generic class.  The European Patent Office (EPO) apply slightly less stringent criteria, requiring only that the selection provides a "genuine technical advance", and that it does not represent a mere arbitrary choice from the possibilities disclosed in the prior art.

In a court case late last year, Dr Reddy's Laboratories (UK) Ltd v Eli Lilly & Co Ltd, the UK's Court of Appeal had to rule again on the patentability of selection inventions.  Surprisingly, instead of relying on the old 1930 case law, they said that selection inventions should now be judged here in the same way as they are by the EPO.

The court confirmed that a broad generic disclosure does not constitute a disclosure of each individual member of the generic class.  In the Dr Reddy's case, the prior art disclosed a large class of thienobenzodiazepine compounds having activity on the central nervous system.  Lilly had patented just one of those compounds, olanzapine, which could be used to treat schizophrenia.  The formula quoted in the prior art could theoretically have embraced over a thousand compounds, including olanzapine, but olanzapine was not specifically mentioned.  Thus, the judges held that the prior art did not disclose olanzapine.

Using the EPO approach, the judges then went on to consider whether the selection of olanzapine provided a technical advance.  They emphasised that for a selection invention to be patentable, there must be evidence of a technical improvement, and it must also be credible that substantially all the selected items share that improvement.  The judges held that Lilly's patent satisfied these criteria, and that the selection of olanzapine was both novel and inventive.

This case is interesting for two reasons.  Firstly, it may now be easier for patentees to protect selection inventions in the UK.  Secondly, the case continues a trend in the UK courts for dispensing with established UK patent law in favour of approaches adopted by the EPO.  In other recent cases, UK judges have followed the EPO on issues such as product-by-process claims and the patentability of new dosage regimes.

Also of interest is that the judges in the Dr Reddy's case took note of how other European countries dealt with selection inventions.  This may indicate a general trend towards harmonisation of patent laws across Europe, something which will be welcomed by patentees and their competitors alike.
(Item added 2/10; archived 6/10)

EPO express disapproval of "reach-through" claims

A "reach-through" claim attempts to cover all new chemicals which could be obtained using a particular research tool such as an assay or screening method.  Patent offices have typically been reluctant to grant such claims, even where the research tool itself is patentable.

A European Patent Office (EPO) appeal board last year refused reach-through claims in a patent application filed by Bayer Schering Pharma AG.  In Bayer's claims, chemical compounds were defined functionally, with reference to their ability to pass an enzymatic screening test.

The appeal board's view was that an applicant is entitled to claim patent protection only for his actual contribution to the art, ie for the factual results of his research and for the concrete technical results he has made available to the public.  The European patent system is not designed for reserving an unexplored field of research for a particular applicant, or for protecting potential future inventions.

The board also commented on functional definitions generally in claims to chemical compounds.  Functional claims often require the reader to resort to trial-and-error research to identify compounds that possess the relevant functionality; this was said to represent "an invitation to perform a research programme and thus an undue burden".  What this means is that claims which define chemical entities in functional terms – for instance with reference to their activity against a certain pathogen – are best written narrowly.  They should also be accompanied by clear guidance, in the description, as to how to select classes of compounds which are likely to fulfil the functional requirement(s).

The EPO reference for this case is T 1063/06.
(Item added 1/10; archived 5/10)

New rules for late payment of European extension fees

The European Patent Office (EPO) have introduced a new period of grace for late payment of "extension fees".  These are the fees which must be paid if an applicant wishes to extend his protection to certain states which are not yet full members of the European Patent Convention.

Previously, extension fees could only be paid late if it was still possible to pay the designation fees on an application.  As of 1 January 2010, however, extension fees can now be paid up to 2 months after expiry of the basic payment period, with a 50% surcharge.  The fees can also be paid, again with a 50% surcharge, within 2 months of an EPO notification that the designation fees are still unpaid on the application.

The basic period for paying extension fees is 6 months from the date that the European Patent Bulletin mentions publication of the European search report.  For a PCT-derived European application, the basic period expires 31 months from the earliest priority date or 6 months from publication of the international search report, whichever is later.
(Item added 1/10; archived 5/10)

SPCs for combination products

In the European Union, a "supplementary protection certificate" (SPC) can provide an extra period of protection for a patented pharmaceutical or plant protection product, after the basic patent for the product has expired.  However, to be eligible for an SPC, the product must have been granted a marketing authorisation somewhere in the EU.

But what happens when the "product" is itself a combination of two or more active ingredients?  Two recent legal decisions have helped to shed some light on this type of situation.

The first was a case before the UK Intellectual Property Office (IPO).  Medeva BV had a European patent on a combination of two active agents X and Y, which they used in several of their vaccine products.  They also had UK product licences for four of their vaccines, all of which contained X and Y but with other active agents as well.  The IPO allowed Medeva an SPC for the binary combination X + Y, because that was protected by the patent.  They refused however to grant SPCs for ternary combinations containing X and Y along with additional actives.

The second case (Generics (UK) Ltd v Daiichi Pharmaceutical Co Ltd) was in the UK Court of Appeal.  It related to an antimicrobial compound, ofloxacin, which is a racemic mixture of two isomers.  Daiichi had a patent to oflaxacin itself, but later discovered that one of the two isomers – which they called levofloxacin – was more active and less toxic than the other.  They therefore obtained a separate patent for levofloxacin.  They also obtained marketing authorisations firstly for the original product ofloxacin, and later for the isolated isomer levofloxacin.

In an argument about the validity of Daiichi's SPC for levofloxacin, the appeal court judges held that the marketing authorisation for ofloxacin (the racemic mixture) was not equivalent to a marketing authorisation for levofloxacin alone.  In other words, a marketing authorisation which covers a combination of active ingredients (in this case the two isomers) is not the same as an authorisation for either of the ingredients individually.  The combination is, in effect, an active agent in its own right.

Daiichi's SPC for levofloxacin had therefore been correctly based on the later marketing authorisation for levofloxacin alone.

For advice on SPCs, please contact either Carol Greaves or Jacqui Evans .
(Item added 1/10; archived 5/10)

EPO to adopt "information disclosure" requirements

The European Patent Office (EPO), like the US one, will soon start putting more of an onus on applicants to provide relevant prior art.

A first rule change provides that, where a European patent application claims priority, the applicant will have to submit to the EPO the results of any earlier searches carried out on the priority application(s).  For a direct European application, this will have to be done at the time the application is filed, or "without delay" after the search results become available.  For a Euro-PCT application, it will have to be done at the time of entering the European regional phase.  In both cases the EPO will issue a reminder if the search results have not been submitted.  Failure to respond to the reminder within two months will result in the application being deemed withdrawn.

A second rule change will allow the EPO to ask the applicant, at any time during the examination process, to submit details of prior art which he is aware of from corresponding patent applications in other countries.  Again, failure to respond to this request (within two months) will result in the application being deemed withdrawn.

Unlike in the US system, there is not yet any sanction for omitting a relevant document from a list of prior art submitted to the EPO.  However, in theory the more prior art that is put on record during examination, the stronger the resultant patent.  Also, during subsequent litigation, a court might look more favourably on a patentee who has acted in good faith before the EPO, and this could affect the remedies available against infringers or the patentee's freedom to make voluntary claim amendments.

The rule changes will apply to all European and PCT applications filed on or after 1 January 2011.
(Item added 1/10; archived 5/10)

Overlap between divisional & parent claims - potential problems

In proceedings before the European Patent Office (EPO), a legal point that has already been decided by an appeal board – based on the same facts, in the context of the same patent or patent application and between the same parties – cannot be considered again.  The point is said to be "res judicata".

The EPO recently applied this principle in a hearing on a divisional application.  The divisional claims had been present in a claim set which had been rejected in an earlier appeal on the parent application.  The later appeal board refused to consider the divisional claims, holding that those claims were effectively res judicata.

This decision could have serious implications.  Many European applicants file a divisional application in order to pursue broader claims which they were unable to get granted in the parent.  If the principle of res judicata is to be applied broadly, such tactics may no longer be available: claims which have been considered during an appeal on the parent application will not be considered in a subsequent divisional either.

It remains to be seen whether other EPO appeal boards will take the same approach.  The case concerned was T51/08.

Meanwhile, be aware that the EPO will not allow "double patenting" of subject matter in both a divisional application and its parent.  Care needs to be taken to avoid overlap in claim scope between claims already granted on a parent case and those of a later divisional.
(Item added 12/09; archived 4/10)

Clarification on new EP divisional filing deadlines

During 2009, we announced some changes to the rules on European divisional applications (see our 2009 news archive).  The new rules, which will come into force on 1 April 2010, require divisional applications to be filed no later than 24 months from the date of the "Examining Division's first communication in respect of the earliest application for which a communication has been issued".  However, there have been some queries as to the exact meaning of this wording.

The European Patent Office (EPO) have now confirmed that the "Examining Division's first communication" is not the European search report or its accompanying written opinion.  The 24 month divisional filing period does not begin until the first substantive examination report – marked as being from the Examining Division – is issued.  The only exception to this is if the applicant, on entering the European regional phase after the PCT procedure, waives the right to be invited to confirm whether or not examination should proceed.  Here at Greaves Brewster LLP, we do not waive this right unless you specifically instruct us to do so.

The EPO have also clarified that the term "earliest application" means the first application in a patent family.  That is, if a first divisional application is filed, derived from an initial non-divisional or "parent" application, the deadline for filing a second divisional application is 24 months from the date of the first examination report on the initial parent case, as opposed to 24 months from the first examination report on the divisional.

The exception to the 24 month divisional filing deadline is where a new lack of unity objection is raised (whether on the parent or on a subsequent divisional) after the first examination report on the parent.  The divisional filing deadline is then 24 months from the communication which raised the new unity objection.  Thus, if a particular lack of unity objection is not raised on the parent application, but is first raised in a divisional derived from that parent, the 24 month period is then calculated from the date of the objection on the divisional.  This applies even though an earlier 24 month divisional deadline would have been created by the first examination report on the parent case.

Therefore, in the situation where a new lack of unity objection is raised on a case which is not the first in a series of divisionals, the period for filing subsequent divisionals will in effect be extended.

Importantly, a new 24 month period may be triggered if a unity objection is first raised verbally, for instance in an interview with an examiner or at a hearing.  It may be triggered if a unity objection is raised for the first time in a summons to a hearing.  We will all need to be on the alert for such new objections, in whatever form the EPO communicates them.

Regardless of the 24 month time period, a divisional application can of course only be filed based on a pending European patent application.  This may in practice shorten the 24 month period.

Finally, there are transitional provisions in place for applications which are already pending on 1 April 2010 and for which the first examination report has already been issued.  Your attorney will have notified you of the divisional filing deadlines in these cases.

If you have any queries concerning the rule changes in Europe, please contact any of us at Greaves Brewster LLP.
(Item added 11/09; archived 3/10)

More on divisional deadlines

After a European patent application has been refused, the applicant has two months in which to appeal.  If he appeals, the application remains pending until the appeal has been resolved.  During the appeal proceedings, the applicant can if he wishes file a divisional application based on the "parent" application that's under appeal.

But what if no appeal is filed?  The application is then deemed to have ceased on the date it was refused.  Since a divisional application can only be filed whilst its parent application is still pending, does a divisional filed during the two month appeal period then become invalid?

The question has been referred to the European Patent Office's "Enlarged Board of Appeal".  The case number for the referral is G 1/09.
(Item added 9/09; archived 3/10)

The "Right Start" for a UK trade mark

The UK Intellectual Property Office began its "Right Start" scheme for trade mark applications on 1 October 2009.

The new scheme allows applicants to "test the water" by paying only half of the official application fee initially.  After receipt of the first examination report, they can decide whether or not to proceed with the application.  The rest of the official fee then has to be paid within 14 days if the application is to be maintained.

To take part in the new scheme, the trade mark application must be filed online and the fees must be paid online.  We can do this.  However, a "Right Start" application unfortunately does not qualify for the new £30 online filing discount.

If your clients would like to take advantage of the new scheme, please remember to tell us when you instruct a new trade mark application.

Please contact Michael Elliott for more details.
(Item updated 10/09; archived 2/10)

Problems for series marks

The UK's Intellectual Property Office (IPO) have made unwelcome changes to their rules on so-called "series marks".

Previously, a UK trade mark application could cover an unlimited number of closely related marks, allowing the applicant to protect not just his primary trade mark but also similar variants that competitors might want to take advantage of.

As of 1 October 2009, the number of trade marks which can be applied for as a series has been limited to six, and an extra £50 fee now has to be paid for each mark after the second.  Also, if the IPO decide that the marks in an application are not a true series, it is no longer possible to file divisional applications so as to protect the individual marks separately whilst keeping the original filing date.  Instead, marks which are not allowable as a series will have to be deleted from the application, and if necessary new applications will have to be filed to protect the deleted marks.

Series marks provided a useful tactic for keeping options open.  They allowed an applicant to find out what the IPO examiner thought about different versions of a trade mark, but for the cost of only a single initial application.  Unfortunately, such tactics are no longer available.

If you would like to find out more about the changes, and how they affect your clients' trade mark options, please contact our trade mark attorney Michael Elliott .
(Item updated 10/09; archived 2/10)

Claiming priority - get it right!

A recent decision in the UK courts has underlined the need for a clear chain of title between the applicant in a priority application and the person who later wishes to claim priority from that application.  Either the two entities must be the same, or the second person must have acquired the right to claim priority, from the original applicant.  Importantly, the right to claim priority must be owned by the correct entity at the time the priority claim is made.  It is not sufficient to acquire the right afterwards.

In the case concerned, Edwards Lifesciences v Cook, Cook had failed to establish this crucial chain of title before he filed his PCT application.  The UK patent which resulted from the PCT application was therefore held not to be entitled to its claimed priority date.  As a result, it faced highly damaging prior art, and was ultimately revoked for lack of inventive step.

We advise all our clients, both in the UK and overseas, to ensure that for an application filed at the twelve-month stage, the applicant is properly entitled to claim priority from all the intended priority applications.
(Item added 9/09; archived 1/10)

Internet prior art - the EPO view

The European Patent Office (EPO) have set out their practice on internet citations.  As a general principle, they will regard disclosures on the internet as full prior art, which are available to the public as of the date they are posted on a website.  Even if a disclosure can only be accessed by a limited number of people (for example because it is password-protected), or if there is a charge for accessing it, it is still regarded as available to the public.

The date of posting of a disclosure will be assessed on the "balance of probabilities".  The burden of proof lies initially with the person citing the disclosure – an EPO examiner, for example, or an opponent.  If that person provides reasonable evidence, the burden of proof then shifts to any party who disputes the alleged date.

If an internet disclosure contains an explicit publication date, that will usually be deemed to be reliable.  The EPO accept that some sources are more reliable than others, but in general online technical journals will be considered to be reliable, as will disclosures by newspapers and periodicals, television stations, academic institutions, international organisations and public bodies.  Computer-generated time stamps, as seen for instance on blogs and "wiki" pages, will also be accepted at face value.  Where a posting date is not indicated, the EPO will attempt to find one for instance using an internet archiving service such as the "Wayback Machine".

If a posting date cannot be established, then an internet disclosure cannot be cited as prior art.  It may however be mentioned in an EPO search report, as a category "L" document.  The disclosure will thus be flagged to third parties, who may of course look into it further as a basis for a future attack.

The EPO's practice guidelines apply to all their search and examination procedures, on both European and PCT applications.  EPO examiners will now routinely search the internet for relevant prior art, especially in online technical journals and databases.
(Item added 9/09; archived 1/10)

Helpdesk for Chinese IP

The UK's Intellectual Property Office provides a helpdesk for European SMEs who deal with business partners in China.  Amongst the advice on offer is guidance on registering IP rights in China, enforcing IP rights there if you've detected infringements, and developing a successful business plan – including IP strategies – for use in China.

The service is free of charge, and you can access the helpdesk advisors by email or phone or even by visiting their offices in Beijing.  Online business tools and e-learning modules are also available, and the helpdesk also arranges regular workshops in both Europe and China.
(Item added 9/09; archived 1/10)

High burden of proof for European opponents

A European Patent Office (EPO) appeal board has made clear that if opponents wish to raise new prior art, they must be able to prove that the art was publicly available at the relevant time.  The standard of proof is high.  A mere "balance of probabilities" is not enough; "absolute conviction" is needed.

The appeal board made its comments in case T 0738/04.  It dismissed two of the prior art documents cited by the opponents because it was not convinced that the documents had been publicly available.  One in particular was clearly a draft, which made the board doubt that it had ever been circulated as the opponents contended.  As a result, the opponents' inventive step attack failed.
(Item added 9/09; archived 1/10)