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In decision G 1/151, the EPO’s Enlarged Board of Appeal ruled that an entitlement to partial priority arises for a generic claim in a European patent application in respect of subject-matter, disclosed in the priority filing, that is encompassed by the generic claim.
The Enlarged Board's conclusions prevent so-called "poisonous divisional" attacks, as well as the possibility of "self-collision" with the priority application, provided that the claims of the priority-claiming European application contain exclusively broadening amendments compared with the disclosure in the priority filing. However, the wider reasoning in the decision emphasises the continuing importance of carefully drafting both priority applications and subsequent priority-claiming applications.
The legal issue explored in G 1/15 is the extent to which a narrow disclosure in a priority document may give rise to a right to partial priority, in the priority-claiming application, for a broader claim that encompasses that narrow disclosure. Divergent case law on this point had developed from the EPO’s Technical Boards of Appeal. Furthermore, in some cases where priority entitlement was denied, this had led to findings that claims in a European filing lacked novelty based on the disclosure in another European family member sharing a priority claim with the case under attack. In at least one decision, T 1496/112, an objection of lack of novelty was upheld when the other European family member in question was a European divisional application and the claim under attack was in the European parent patent.
In more detail, Boards of Appeal refusing to acknowledge partial priority3 had often cited an earlier Enlarged Board decision, G 2/984, as legal basis. In G 2/98, the Enlarged Board confirmed that a generally worded claim can be entitled to multiple priority dates, provided that it “gives rise to the claiming of a limited number of clearly defined alternative subject-matters”. Some Appeal Boards had concluded that this condition is not met when the number of embodiments encompassed by a generally worded claim was large (as is common, for example, in a claim to a general chemical formula) or even infinite (as, for example, in a continuous numerical range). Thus, even if the priority application disclosed one or more of the encompassed embodiments — either individually or in a generally worded form — then no partial priority was to be acknowledged.
Such a finding can have negative consequences for the validity of the claim at issue. Most obviously, full loss of priority renders such a claim vulnerable to a disclosure, between the priority date and the filing date of the case at issue, of any subject-matter within the scope of the claim. Such a disclosure might originate from a third party, but it could also correspond, for example, to a non-patent publication from the applicant after the priority date or to another of its own European filings having a common priority claim with that of the case at issue (including the priority filing itself). Such filings may typically contain a disclosure of one or more embodiments falling within the scope of the generally worded claim of the case at issue, but with the disclosed embodiment, unlike the generally worded claim, being deemed to be entitled to priority. In a still more extreme example, the case at issue and the other European filing would have a parent application-divisional application relationship or vice versa, giving rise to a so-called "poisonous divisional" attack of lack of novelty5.
In contrast, the Boards of Appeal in decisions T 1222/116 and T 571/107 considered that the reference in G 2/98 to "the claiming of a limited number of clearly defined alternative subject-matters" did not refer to the total number of embodiments within the generally worded claim, but rather to the ability conceptually to distinguish (a limited number of) sub-groups within the generally worded claim to which priority would or would not apply. For example, in a claim to a general chemical formula wherein the priority document discloses a single chemical compound, there would be two sub-groups: one corresponding to the single chemical compound, which enjoys priority; and the other corresponding to all other compounds embraced by the claim, which does not enjoy priority. In a further example, in a claim reciting a continuous numerical range of 1 to 10, wherein the priority document discloses the narrower range 3 to 6, there would be three sub-groups: one corresponding to the range 3 to 6, which enjoys priority; and two others corresponding to the ranges (i) 1 to less than 3 and (ii) more than 6 to 10, respectively, which do not enjoy priority.
In view of the divergent case law in this area the Board of Appeal in T 557/138 referred questions to the Enlarged Board of Appeal to resolve the issue.
The Enlarged Board analysed the priority provisions of the European Patent Convention (EPC) and the Paris Convention to assess whether imposing any "additional conditions and/or limitations", such as those sometimes considered to arise from G 2/98, would be in line with the fundamental principles concerning the right of priority.
The Board concluded that the priority provisions contain no requirements for recognising a right of partial priority except that the "same invention" as that disclosed in the priority document is encompassed by the claim of the priority-claiming application. The Board further indicated that this meant that the reference in G 2/98 to "the claiming of a limited number of clearly defined alternative subject-matters" could not be construed as implying a further limitation of the right of priority.
Finally, the Enlarged Board outlined a two-step process for assessing whether partial priority can be enjoyed. The first step involves determining the relevant disclosure in the priority document. The second step involves determining whether this disclosure is encompassed by the claim in the priority-claiming case. If yes, then the claim is de facto conceptually divided into a part enjoying priority and a part not enjoying priority.
This clarification means that, when the claims of the priority-claiming European filing involve only broadening amendments compared with the disclosure in the priority filing, a right to partial priority will arise owing to the "encompassed" nature of the earlier disclosure. Under these circumstances, so-called "poisonous divisional" attacks are no longer possible, and nor is self-collision between the priority-claiming European filing and the priority application (or another European filing also claiming priority from the same priority filing). This is because the enjoyment of partial priority by the claim at issue immunizes it from any identical disclosure in the hypothetically conflicting application. This will be welcome news for patent applicants.
Nonetheless, it should be emphasised that the Enlarged Board in G 1/15 also considered and endorsed the strict approach taken under European practice to the concept of "the same invention" when determining whether a disclosure in a priority filing gives rise to any right of priority in the priority-claiming European application.
The strict "same invention" assessment requires that subject-matter for which priority entitlement is sought is directly and unambiguously derivable from the priority document. Consequently, the position with regard to partial priority remains uncertain when the claimed subject-matter in the later-filed application does not correspond only to a broadening of the disclosure in the priority application, but additionally involves the narrowing of one or more elements of the claim. Following the two-step analysis outlined by the Enlarged Board in G 1/15, such a disclosure in the priority document is no longer (fully) encompassed by the claim in the priority-claiming case and as such it is possible that no priority will be enjoyed by the claim.
In many cases, even if the claim at issue is denied priority, the relevant disclosure in any intervening publication will not be fatal, given that it necessarily discloses (broader) subject-matter that is different from the (narrower) subject-matter being claimed. However, there may be exceptions, notably in cases where the narrowed claim does not meet "selection invention" criteria with respect to the broader disclosure in the priority document. By way of example, in the case where a priority filing discloses an invention featuring a range of 1 to 10 and this range is narrowed to 2 to 9 in the claim of the later application, then: (a) the two-step assessment of G 1/15 may lead to the conclusion that there is no right to priority for the claim; and (b) the claimed range of 2 to 9 may, depending on the facts, be considered not to give rise to novelty under European provisions over a disclosure in the priority period of the range 1 to 10. It seems at least possible that self-collision objections may continue to be raised under such circumstances.
G 1/15 provides authoritative confirmation that exclusively broadened claims in a European patent application will enjoy partial priority entitlement from a priority document disclosing subject-matter encompassed by the broadened claim. For such cases currently in pre-grant examination or post-grant opposition proceedings before the EPO where self-collision or even “poisonous divisional” attacks have been raised, it is now clear that these objections should fail.
When a priority-claiming application is being prepared, the principles outlined in G 1/15 should now provide more freedom to broaden out claim features without significant risk of loss of priority for the disclosure in the priority filing. However, it remains good practice to retain all of the priority document disclosure in the later filing. For example, this would allow for claim amendments to be made later to reinstate full priority entitlement in the event of potentially problematic prior art being cited that was published between the priority and filing dates.
Similarly, it remains important carefully to consider the correlation between the disclosure in the priority filing and that in the priority-claiming application. This is particularly true when, during preparation of the priority-claiming application, it is intended to narrow down one or more features compared with the disclosure in the priority filing (perhaps while broadening out one or more other features). Care is needed to establish the extent to which partial priority entitlement could still be asserted, for example, with respect to any preferred embodiments already disclosed in the priority application. There may still be circumstances where it would be desirable to take proactive steps to mitigate the risk of self-collision objections, such as by preventing the publication of the priority application.
Finally, still earlier in the process, careful drafting of the priority filing, including the provision of extensive fall-back positions, remains desirable. Ideally, the priority filing should itself provide adequate scope for narrowing amendments, so that these do not need to be added for the first time when the priority-claiming application is being drafted. In this case, the prospects for preserving priority entitlement will be maximised.
01 February 2017
07 April 2022
The European Patent Office (EPO) uses oral proceedings as a means to bring pre-grant examination and post-grant opposition proceedings to a close. Oral proceedings will be appointed when the EPO considers it expedient to discuss outstanding issues face to face and/or at the request of any party to the proceedings. Consequently, the majority of EPO oppositions conclude with oral proceedings. Oral proceedings are rarer during pre-grant examination, but are typically appointed when the EPO intends to refuse the application. The Boards of Appeal also hold oral proceedings during the appeal procedure.
15 March 2022
This introductory briefing sets out what a biological deposit is, why a biological deposit may be needed, and basic requirements for making a biological deposit and relying on it in a patent application, with a particular focus on practice before the European Patent Office (EPO). A complementary briefing goes on to consider strategic aspects relating to biological deposits, including how it might be possible to remedy certain deficiencies relating to them.
15 March 2022
Introduction It is a fundamental requirement of patent law that, in exchange for a monopoly right, a patent must disclose the claimed invention in sufficient detail to allow a person skilled in the relevant technical field to reproduce the invention. This requirement is known as sufficiency of disclosure in European practice and enablement in the US. Therefore, a biological deposit is often made, usually with an International Depositary Authority (IDA) under the Budapest Treaty, to ensure that subject matter relating to biological material that is not publically available and/or which cannot be adequately described by other means, is sufficiently disclosed. The sufficiency/enablement...
15 March 2022
The European Patent Office (EPO) applies the same basic patentability criteria to antibodies as to other inventions. However, the high volume of applications in this area means that examiners have developed standardised approaches to assessing “antibody-specific” issues and these have been formalised in a dedicated section of the EPO’s Guidelines for Examination (G, 11, 5.6 ; issued March 2021 and revised March 2022). For an explanation of the basic approach adopted by the EPO, please see our related briefing Antibodies in the European Patent Office – Basic Principles or ask your usual J A Kemp contact. This briefing is intended...
15 March 2022
Over recent years, antibodies have become increasingly important as therapeutic drugs and large numbers of patent applications are filed in this area (>1000 granted by the European Patent Office (EPO) in 2019). Whilst patentability is assessed in the same way as for any other invention, the high volume of cases means that examiners have developed standardised approaches to assessing “antibody-specific” issues. These informal principles have been formalised in a dedicated section of the EPO’s Guidelines for Examination (G, 11, 5.6; issued March 2021 and revised in March 2022).
10 March 2022
What are SPCs? A Supplementary Protection Certificate (SPC) is an intellectual property right available for active ingredients of human and veterinary medicinal products requiring marketing authorisation 1 . The highest tribunal hearing disputes involving SPCs for EU member states is the Court of Justice of the European Union (CJEU). Historically there have been numerous referrals to the CJEU on points of law relating to SPCs and this is expected to continue. Some of the key decisions are discussed below.
04 March 2022
Article 53(c) EPC specifies various patentability exclusions, including “diagnostic methods practised on the human or animal body”. This exclusion was considered in opinion G1/04 1 of the Enlarged Board of Appeal. The Enlarged Board identified two requirements that must both be met for a claim to be excluded from patentability. Firstly, the claimed method must include all the steps necessary to reach a medical decision on diagnosis. Secondly, all the technical steps of the method must require the presence of the human or animal body. This two-part test has subsequently been developed in several Technical Boards of Appeal decisions.
11 February 2022
Parameters are characteristic values of a product or process which are generally based on directly measurable properties. Typical examples of such features are the melting point of an alloy, the particle size of a powder or the performance of a material when subjected to stress in a particular way. Parameters can usefully be relied upon to define an invention before the EPO and they can be the most effective way of ensuring that the claims provide an adequate scope of protection for an inventor’s contribution. They are commonly used within the chemical field, but could find applicability in a wide variety...
09 February 2022
In 2021, reporting of the case law of the EPO Boards of Appeal in the field of IT & computer-implemented inventions has been dominated by two topics: the Enlarged Board’s decision relating to simulation and the rejection of two applications for inventions created by the artificial intelligence “DABUS” for failure to designate a human inventor. The simulation decision could well become the most important decision in this field as it endorses and summarises 20 years of case law since the well-known Comvik decision. The DABUS decisions follow the line taken in the UK and US that a human inventor must...
07 February 2022
In 2014, the EPO launched the Early Certainty initiative to speed up the patent granting process. This initiative has resulted in speedier establishment of search reports and a shorter examination procedure. As can be seen from the chart, the result is that the number of EP patents granted since the launch of the initiative has increased dramatically, and has remained high, relative to the number of patent applications filed. This is confirmed by our experience, in which a consistently short turnaround time has been noticeable, with an sizable portion of applications proceeding to grant directly after a response to the...
01 February 2022
The Patent Box makes the existence of a patent more attractive, whatever the breadth of the patent’s claim, so long as it covers the product (or process or service). A company may wish to optimise its strategies both for filing and prosecuting patent applications and for patent and patent application abandonments bearing in mind the tax savings available through the Patent Box.
01 February 2022
In order to benefit from the Patent Box, the beneficiary must be a qualifying company as defined in the legislation. We discuss here the requirements of a qualifying company .
01 February 2022
In order to benefit from the Patent Box, a company must hold or have an exclusive license to a qualifying IP right . Here we discuss the definition of a qualifying IP right .
01 February 2022
We discuss here issues relating to which income streams can qualify for the Patent Box. The Patent Box legislation defines what income streams count as relevant IP income. The calculation of relevant IP income is used in determining an amount deductable from the profits of the trade for the calculation of UK Corporation Tax liability. Determining the amount deductable from the profits of the trade leads to the amount of UK Corporation Tax due being equivalent to paying a rate of 10% on the relevant IP income (following certain deductions as explained in our separate Briefing “Patent Box – How...
01 February 2022
A company must elect in to the Patent Box regime in order to take advantage of the reduction in payable UK Corporation Tax. For some companies there may be advantages in delaying entry into the Patent Box. This Briefing looks at this issue.
01 February 2022
We outline here the accounting steps which are necessary to calculate the Patent Box benefit. We also present a simplified example calculation which may help you to estimate the amount of saving in UK Corporation Tax you might expect to make if you were to elect in to the Patent Box regime. You will need to seek the advice of your corporate tax advisor for an accurate estimate of savings you might achieve and the best accounting approach to make the biggest saving.
28 January 2022
This document is intended to provide a brief introduction to Supplementary Protection Certificates (SPCs) for plant protection products. For more detailed information, please speak to your usual J A Kemp contact.
28 January 2022
This document is intended to provide a brief introduction to Supplementary Protection Certificates (SPCs) for medicinal products. For more detailed information, please see our full briefing on this topic.
19 January 2022
Which new ideas are worthy of a patent application? How should the applications be drafted and prosecuted? When should they be filed? Where in the world should they be filed? How long should applications and granted patents be maintained? A systematic answer to these questions is provided by a patent strategy. A patent strategy is part of an overall intellectual property (IP) strategy. It is usually the most important part of such a strategy for technology-based companies. The IP strategy should follow the company’s R&D strategy which in turn should follow its overall business strategy.
19 January 2022
The EPO operates a PCT service, PCT Direct, available to PCT applications which: name the European Patent Office as International Searching Authority; and claim priority from an earlier patent application which was searched by the EPO. If a new PCT application fulfils both of these criteria, the Applicant may file a “PCT Direct letter” providing informal comments with the application. The Search Examiner is obliged to consider those comments when preparing the International Search Report and the Written Opinion on patentability.
19 January 2022
A patent is a legal monopoly granted by a government in return for public disclosure of an invention. A granted patent gives the proprietor the right to prevent others using the invention in the territory to which the patent applies.
31 December 2021
Last year we provided a review of 21 EPO Board of Appeal cases relating to “antibody inventions” that were decided and published between January 2018 and January 2021. At the time, we observed that this relatively small number of decisions was consistent with our view that there had been relatively little case law in this field, despite the high number of applications and patents relating to antibodies that have been prosecuted at the EPO in the same period. Now considering the activity of the Boards of Appeal in the calendar year of 2021, we see some evidence that the trend...
10 December 2021
The issue of “double patenting” arises in the EPO when one applicant files two European patent applications with closely related claims and the same effective filing date. Two situations where double patenting commonly needs to be considered are: when the claims of a divisional application overlap with the claims of its parent application; and when a first European patent application claims priority from a second European patent application and the claims of the first application overlap with the claims of the second application.
08 October 2021
Introduction Supplementary Protection Certificate (SPCs) for medicinal products are intellectual property rights intended to compensate patent holders for the loss in effective patent term that results from the time taken to receive marketing authorisations for such products. An SPC takes effect at the expiry of the normal term of the patent on which it is based, and expires at whichever is the earlier of (i) 15 years from the first marketing authorisation in the EU/EEA, and (ii) 5 years from the expiry of the basic patent. Usually, therefore, the maximum term of an SPC is 5 years. However, the term of an...
21 September 2021
To what extent will a Supplementary Protection Certificate (SPC) for a biological product be considered to encompass closely-related alternatives such as biosimilars? This question will become increasingly important as more and more biological medicinal products, and their competing biosimilars, enter the marketplace. We expect to see the issue arise before the national courts of the EU and the UK, and ultimately – at least for EU member states – the question is likely to require a referral to the CJEU. Until that happens, however, arguably the best available guidance is that provided by the EFTA court in 2015, in its...
20 September 2021
An orphan drug, or orphan medicinal product, is a medicine that is developed to treat a rare disease, defined as a disease affecting a relatively small number of people as a proportion of the population. In recognition of the fact that the commercial market for such medicines is small, regulators have sought to provide economic incentives for their development. In this briefing we review the major aspects of orphan drug legislation and the available incentives in the EU/EEA and UK.
20 September 2021
In order to place a new medicinal product on the market in Europe, it is necessary first to obtain a marketing authorisation. Most applications for marketing authorisations are made through a centralised procedure with the European Medicines Agency (EMA) which effectively leads to authorisation in all EU/EEA member states1, although other routes are available. Regardless of the route, an application for marketing authorisation must be supported by a dossier, referred to at the EMA as the common technical document (CTD), which demonstrates the quality, safety and efficacy of the medicinal product. The dossier will include non-clinical pharmacology and toxicology data,...
16 August 2021
When IP-protected goods are placed on a particular market by, or with the consent of, the IP right holder, there is a generally accepted legal concept worldwide that the corresponding IP rights are ‘ exhausted ’ at least in the market in question. This means that the owner of the IP rights cannot subsequently rely on them to prevent the further distribution or resale of those goods within the relevant market.
12 August 2021
It is fairly common at the EPO in the fields of chemistry and biotechnology for applicants/patentees to rely upon data that are not present in the application as filed, and that were generated after the priority/filing date, to support arguments in favour of inventive step. Such data are often referred to as “post-published data”. They are often used to evidence some technical advantage associated with the claimed invention, as compared with disclosures in the prior art. That enables the patentee or applicant to define the “objective technical problem” solved by the claimed invention as that of providing an improved product...
23 June 2021
Crowdfunding can be a great way of raising funds. However, if you fund your business in this way you need to consider carefully how to protect your valuable intellectual property (IP). Crowdfunding involves wide and rapid disclosure of information. This can be beneficial to your business but may also pose some risks to your IP.
04 June 2021
In G 3/14 the EPO Enlarged Board of Appeal ruled on the extent to which amendments made in EPO Opposition (and Opposition Appeal) proceedings may be examined for clarity, conciseness and support (Article 84 EPC). They confirmed that compliance with Article 84 EPC may be examined only when, and to the extent that, the amendment introduces non-compliance with Article 84 EPC. In particular an amendment which introduces the feature of a dependent claim may not be examined for Article 84 where the feature introduced corresponds to the complete dependent claim or is a simple alternative in such a claim.
04 June 2021
It is possible at the EPO to accelerate the search and/or examination of any application using the accelerated prosecution procedure (PACE) 1 . To use the procedure, it is necessary to file a PACE request online using the appropriate form. Other than this, there are no special requirements to qualify for PACE: the request can be filed at any time, no official fee is payable and no special reasons need be given.
04 June 2021
Parameters are generally used in patent claims to define subject matter which cannot be expressed in terms of structural features. They are often relied upon for inventions in the chemical field, but can in fact be used in any technical area. Parameters can relate to features that can be measured directly, such as the density or melting point of a substance; measured indirectly, such as the tacticity of a polymer; or that can be calculated, such as the superficial velocity of a flow in a reactor. They can also be expressed in terms of relationships between such features.
04 June 2021
European Patent Office (EPO) opposition procedure comprises two parts: opposition division (first instance), and, if relevant, appeal. A typical procedure is set out on the attached flow chart. It is also possible to petition the Enlarged Board of Appeal for review of the appeal decision under certain very limited circumstances. There are some fixed time limits in the overall procedure, such as the deadline for filing an opposition and an appeal. However, there is also some flexibility in the procedure. The EPO announced in June 2016 that it aims to issue first instance decisions on “straightforward” oppositions within 15 months....
24 May 2021
Whatever the technology, IP can form a significant intangible asset for a company. In addition to legally protecting the company’s products and activities from being copied by competitors, IP can generate revenue through licensing or sales, it can protect market share and increase return on a company’s R&D investment. IP therefore plays a vital role in establishing the value of a company. When looking to invest in a company that holds IP, a good understanding is needed, not only of what IP a company holds, but how that IP adds value to the company. IP is not just a matter...
05 May 2021
The Enlarged Board of Appeal of the EPO has, in case G 01/19 (Pedestrian simulation), issued a decision regarding the patentability of simulations under the EPC. This decision was eagerly awaited as the referral to the Enlarged Board raised fundamental questions about the patentability of simulations at the EPO. Given that simulations of technical systems had generally been considered patentable with some caveats to be applied on a case by case basis, this decision had the potential to have wide reaching consequences regarding a significant and growing area of innovation in Europe.
03 May 2021
A common misconception is that ownership of IP rights associated with a product gives an automatic right to make and sell that product. However, IP rights such as patent and design rights are best viewed as ‘negative’ rights, which allow the owner to prevent other parties from using the invention, mark or design. They do not provide an automatic right to practice the invention or to use the design.
03 May 2021
With the entry into force of Regulation (EU) 2019/933 on 1 July 2019, the EU introduced a so-called “manufacturing waiver” by amending existing Regulation (EC) 469/2009 concerning supplementary protection certificates (SPCs). Scope of the manufacturing waiver The amendments to the existing SPC Regulation have excluded certain acts from the protection conferred by SPCs. In particular, a third party (referred to as a “maker”) is permitted to manufacture a medicinal product protected by an SPC for the exclusive purpose of export to countries outside the EU 1 .
29 April 2021
The efficacy of PPH varies from territory to territory. In some patent offices there is a history of examination being influenced by the granting of a patent by particular patent offices; PPH may work well for such patent offices. In other patent offices, requesting PPH only results in acceleration and does not guarantee allowance.
29 April 2021
The aim of the Patent Prosecution Highway (PPH) is to provide a way for applicants to use positive examination results from one patent office to streamline prosecution in a second patent office. An evolving network of different PPH agreements exists between various patent offices, including most major patent offices. For both the European Patent Office (EPO) and the UK Intellectual Property Office (UKIPO) requesting PPH results in acceleration of examination and does not guarantee allowance.
01 April 2021
The UK Intellectual Property Office (UK IPO) and the European Patent Office (EPO) continue to receive reports of applicants and proprietors being approached for payment by firms offering to perform official processing such as registering patents and publishing patent applications. These firms often use names, abbreviations and/or logos which are confusingly similar to those used by official offices such as the UK IPO, the EPO, and the World Intellectual Property Organization (WIPO).
31 March 2021
Obtaining patents for polymorphs can be challenging. However, before the European Patent Office, there is no general rule which makes polymorphs less patentable in principle than other subject matter. With careful drafting and consideration of any specific advantages associated with the polymorph of interest, European patents directed to polymorphs of commercial significance can be obtained. Such patents can act as additional barriers to entry of generic products onto the market, and can thus be very useful in managing the life cycle of a patent estate for pharmaceutical and other biologically active compounds.
08 March 2021
The High Court of England and Wales has recently handed down its judgment in Illumina Cambridge Limited vs Latvia MGI Tech SIA and others. This is one of the last judgments handed down in the High Court by Mr Justice Birss, who was recently elevated to the Court of Appeal. The judgment touches on a number of important aspects of patent infringement and validity, including the first application of the recent Supreme Court decision in Regeneron Pharmaceuticals Inc vs Kymab Ltd relating to sufficiency. In this briefing we consider four aspects of the judgment: one relating to sufficiency of disclosure, one...
16 February 2021
Before the EPO parameters are defined as features which are based on directly measurable properties or combinations of several variables in the form of formulae. This might be a claim defined by the viscosity of a composition, or the particle size of a powder, for example. Relying on such features to define an invention is commonplace within the chemical sphere and can be very useful. However, their utility is not limited to such subject matter and they could be used to define characteristic features in a broad range of technologies. The EPO has developed a large amount of case law which...
10 February 2021
In our previous discussions of antibody practice at the EPO, we observed that there was a (perhaps surprising) lack of case law to support the evolving practice of the examining divisions. Despite the high number of applications and patents relating to antibodies that have been prosecuted at the EPO more recently (>1000 granted in 2019), the quantity of Board of Appeal decisions concerned with “antibody inventions” remains relatively low. We counted only 21 published decisions in the last 3 years that we considered meet this definition. Each of the 21 decisions arises from an application with a filing date between 1999...
01 February 2021
In the UK, marking patented products as patented is not compulsory. However, there are several benefits to marking products as patented and both guidance from the UK Intellectual Property Office, and UK law, effectively encourage this practice. However it is important for patentees considering marking their products as patented to ensure that this is done correctly because failure to do so can potentially lead to adverse consequences. This briefing provides an overview of patent marking in the UK and some practice points for patentees to bear in mind when considering whether and how to mark their products.
27 January 2021
It does not seem possible to write any review of 2020 without mentioning Covid-19. However in this case we shall limit it to noting that the cancellation of most in-person oral proceedings at the EPO lead to a comparatively low number of published decisions by the electronic and software-focused boards of appeal (247 vs 339 in 2019) and that Board 3.5.03 held the first appeal hearing by video conference in May 2020. Previously only Examining Division Oral Proceedings had been held by video conference and rarely; it will now be quite routine, saving costs for applicants. On substantive issues it was...
24 November 2020
The Technical Board of Appeal of the European Patent Office (EPO) issued its written decision in case T844/18 on 6 November 2020. The central issue was whether the patentees were legally entitled to claim priority. If not, the patent would be invalid for lack of novelty.
28 August 2020
The UK Supreme Court has handed down an important judgment1 which is likely to have global implications for how standard essential patents (SEPs) are licensed in the future. Background A standard essential patent (SEP) is a patent which covers technology which is required (i.e. is essential) to be used in order to implement a technical standard (for example such as 2G, 3G and 4G in the telecommunications industry). Conforming to the technical standard allows devices from different manufacturers to operate together and to use the same infrastructure. Standard Setting Organisations (SSOs) bring participants together to evaluate technologies for inclusion in a new standard....
22 July 2020
The deadline for requesting entry of a PCT application into the European regional phase is 31 months from the filing date or, if priority has been claimed, from the priority date (Rule 159(1) EPC). However, if this deadline is missed, remedies are available that may permit entry into the European regional phase later than this deadline.
10 July 2020
The CJEU issued on 9 July 2020 its judgment in the Santen C-673/18 case. The full text of the judgment can be found here . The Santen decision overturns the earlier Neurim C-130/11 decision, which had held that it is possible under certain circumstances to obtain an SPC for a new therapeutic application of an active ingredient, even if that active ingredient has previously been authorised for other therapeutic applications.
10 June 2020
On 14 May 2020 , the EPO’s enlarged board of appeal issued its decision in case G3/19 (“Pepper”). This derives from a referral made to the enlarged board by the EPO president in April 2019, which aimed at resolving some outstanding questions regarding patent-eligibility of plants under Article 53(b) EPC . Contrary to earlier case law, G3/19 confirms that plants that are the products of essentially biological (i.e. breeding) processes are not patent-eligible.
01 June 2020
What is a patent? A patent is a legal monopoly granted by a government in return for public disclosure of an invention. A granted patent gives the proprietor the right to prevent others using the invention in the territory to which the patent applies. A patent does not, however, give a positive right to use an invention. There may be earlier patents for other inventions that an inventor may need to license to exploit his own invention.
30 April 2020
On 30 April 2020 the CJEU gave its ruling in C-650/17 (Royalty Pharma). The judgment, which is reviewed in detail below, confirms that SPC applications are allowable when the product is not explicitly recited in the claims. However, it is implied that the product will need to be disclosed to a high degree of specificity elsewhere in the patent. The case was previously joined with C-114/18 (Sandoz and Hexal) because both referrals concern the interpretation of Article 3(a) of the SPC Regulation. Article 3(a) requires that: “A[n SPC] shall be granted if… the product is protected by a basic patent in force” However,...
25 March 2020
Patent protection may be obtained in the UK either by filing a European patent application with the European Patent Office and then validating a granted European patent in the UK, or by filing of a UK national patent application with the UK Intellectual Property Office (UK IPO). It is possible to file a UK patent application directly with the UK IPO, with or without a claim to priority from an earlier (e.g. foreign) patent application, or to enter the UK national phase from a PCT application. The official fees payable to the UK IPO for prosecution of a UK national application...
22 January 2020
2019 has been another busy year for the EPO Boards of Appeal covering computer-implemented inventions, although the most significant case has not reached a conclusion. In T 0489/14 (Pedestrian simulation/CONNOR) of 22.2.2019 questions relating to the patentability of simulations and modelling were referred to the Enlarged Board of Appeal, which has not yet set a timetable for a hearing and decision. Although the questions asked are primarily related to the narrow field of simulation of physical systems, it is possible that the answers given could have a broader impact by affecting what is considered technical.
12 November 2019
On 23 October 2019, Kitchin LJ handed down a judgment, available here , which brought to an end a 13-year long dispute between Professor Ian Shanks OBE FRS FREng and Unilever. The case concerns a compensation claim made by Professor Shanks, in connection with several patents owned by Unilever directed towards glucose monitoring devices, for which Professor Shanks was the sole inventor (the “Shanks patents”). Professor Shanks considered that his patents were of outstanding benefit to Unilever and, in accordance with Section 40(1) of the UK Patents Act 1977 (PA ’77), that compensation was due.
08 May 2019
Two recent decisions of an EPO Technical Board of Appeal emphasise the need for a proper technical context to be set out in claims to render an abstract idea patentable. The two appeals, by Ab Initio Technology LLC, related to inventions in the field of parallel processing, a field that seems on the face of it highly technical. However, the inventions were claimed as processes for converting computation graphs into a form better adapted for parallel processes but without specifying any steps of performing any processing, parallel or otherwise. At this level of generality the Board considered the inventions to...
13 February 2019
This briefing explores the options available to applicants in the event that the deadline for filing a PCT has been missed. In this context we refer to the deadline for filing a PCT application that is set by the twelve month deadline for claiming priority under the Paris Convention. A successful claim to priority may be important, particularly if the applicant has disclosed their invention after filing their first application and wishes to proceed with national and/or regional phases in which no grace period is provided for disclosures by the inventor/applicant.
13 February 2019
Re-establishment of rights under Article 122 EPC may be used to recover rights lost as a result of missing a deadline set by the European Patent Office. The requirements of this provision are shared with a number of restoration systems worldwide. There is much variation from regime to regime. However, the European Patent Office approach is well established, with a history of case law that makes it clear what is needed to successfully recover rights in Europe.
13 February 2019
The central issue when seeking restoration or re-establishment of rights in many countries is establishing that due care was taken. This is certainly true of cases before the European Patent Office. This paper reviews what issues may need to be addressed in order to demonstrate due care to the European Patent Office when preparing grounds for re-establishment of rights. Other offices, such as the International Bureau, follow a similar approach to the European Patent Office.
31 January 2019
2018 has been a year of increased productivity for at least those Boards of Appeal that cover software inventions (Boards 3.5.01 and 3.5.03 to 3.5.06). In particular Board 3.5.01 has returned to a similar level of productivity as the other Boards now that it has a Chairman. The main controversies continue to be the proper treatment of mixed inventions (those involving non-technical aims or features as well as technical ones) and how to determine what is and is not technical.
04 December 2018
The Supreme Court in the UK handed down its decision in Warner-Lambert v Actavis on 14th November 2018 (and a copy of the complete decision is available here ). The Supreme Court considered the following issues in its judgment: how much data is required in the application as originally filed to support a second medical use claim; and the circumstances under which “cross label use” for the patented indication of a drug sold by a competitor company can constitute infringement of a second medical use claim.
19 October 2018
This is the fourth year in a row that sections of the EPO guidelines for examiners relating to computer implemented inventions (CII) have been significantly amended. These amendments have come about as a result of a project within the EPO to harmonise the treatment of inventions involving computers and software across all examining divisions. In the EPO, inventions not relating to computer science per se are handled in various examining divisions according to the function performed by the computer and its software. Thus, significant variation in practice had arisen between different examining divisions. This year’s set of amendments is the...
06 July 2018
A patent that has been granted by the European Patent Office may subsequently be made effective in any of the countries for which a designation, extension or validation fee has been paid. This process is commonly known as “validation” of the European patent. Some countries impose translation requirements as part of the validation procedure. In general, any required translations must be submitted within three months of the grant date of the patent.
14 June 2018
The EPO has long adopted an approach to consideration of inventive step known as the problem and solution approach. Although this approach is fundamentally the same across most technical areas, special considerations apply for software related inventions. Firstly, the EPO looks for an invention to be the technical solution to a technical problem and so disregards non-technical aims/features, which are common in software fields. Secondly, the EPO Boards of Appeal often have quite high expectations of the capabilities of the ordinary person skilled in the art and thus a high threshold for inventive step. We discuss these issues below with...
05 March 2018
Claiming small entity status on a US application or patent provides a reduction in official fees. Most fees (e.g. basic filing fee, examination fee, search fee, etc.) are reduced by 50%, so the saving is significant. There are some risks but these may be mitigated. Where available, small entity status is attractive to many applicants.
17 January 2018
2017 was a year of change for the Boards of Appeal of the EPO: a new President 1 and a move out of the EPO’s oldest building in the centre of Munich to a suburb, Haar. There has been some recruitment, but overall it appears there are still many vacancies on various Boards. Overall the relevant Boards issued 10% more decisions than in 2016 and Board 3.5.01 in particular has significantly increased its output in the latter part of the year as it now has a chairman.
10 January 2018
The European Patent Office (EPO) uses the term “ disclaimer ” to refer to a negative feature in a claim of a patent application. Negative features are those which exclude certain subject matter from the scope of protection. While a positive feature in a claim may for instance take the form “ wherein the composition comprises X ”, a disclaimer would take the form “ wherein the composition does not comprise X ”.
14 December 2017
Since the UK Court of Appeal judgment in Menashe v William Hill, it has not been safe to assume that infringement of a patent claim including a processor or a processing step can be avoided by performing the processing on a server outside the UK. A third judgement on this topic has recently been issued – making the score two for infringement and one for non-infringement – so it is instructive to consider what factors affect a finding of infringement. We review the relevant points of the three cases and draw some practical conclusions.
14 November 2017
In May 2017, we reported on two “CardinalCommerce” decisions 1 by EPO Technical Board of Appeal 3.5.01 that introduced the concept of a “notional business person” into in the examination of mixed inventions (inventions including both technical and non-technical features). A new decision by the same Board ( T0630/11/Waterleaf ) provides some clarification of this approach, warning against over limiting what the notional business person can do and perhaps limiting the utility of the CardinalCommerce to applicants seeking to patent mixed inventions.
21 July 2017
The UK Supreme Court’s judgment in Lilly v Actavis has profound implications for the scope of protection provided by patent claims in the UK. The judgment moves away from the principle that the patentee should enjoy the full extent, but no more than the full extent, of the monopoly that a reasonable person skilled in the art, reading the claims in context, would think he was intending to claim. Rather, following this new decision, a patent claim in the UK can be infringed by products or processes that are not within the ambit of the language used in the claims.
31 May 2017
The software industry has been a major beneficiary of the R&D tax credit regime in the UK. Although more obviously suited to the manufacturing and pharmaceutical industries, the software industry can also benefit from UK Patent Box legislation. One aim of the Patent Box legislation is to provide an additional incentive to locate in the UK high-value jobs associated with the development and exploitation of patented technologies. To achieve this the Patent Box legislation allows companies to pay a lower rate of UK corporation tax for profit attributable to qualifying patented technology.
29 May 2017
Intellectual property (IP) rights are legal rights which provide protection for your innovative and creative endeavour. For example, IP could relate to something that you have created, such as a brand, an invention or a design, or could relate to information that you have developed or collated. When people talk about IP, they usually mean IP that can be registered: trade marks, patents and designs. However some IP rights arise automatically (so-called unregistered rights), such as copyright and unregistered designs. Each form of IP right has a different purpose in protecting a different aspect of your work and can be...
12 May 2017
When seeking patent protection, most companies start with a single national patent application but may then wish to seek protection in other countries. This briefing outlines points to consider in selecting the countries to cover, the international schemes available and the timing of the decisions to be taken. There are several advantages to filing a UK application first, even if you are not UK based. The UK Intellectual Property Office carries out searches quickly and cheaply; this can give you an indication of the patentability of your invention before you incur the costs of filing in other countries. UK applications must...
03 May 2017
In two Decisions published on 27 April 2017, EPO Technical Board of Appeal 3.5.01 has given valuable guidance on the treatment of inventions that implement business methods and given rare positive verdicts on two related applications. In the process, the Board has introduced the "notional business person" whose hypothetical actions need to be considered alongside the venerable "person skilled in the [technical] art".
04 April 2017
You have a new technical idea. When will you be ready to draft a patent specification? When will it be appropriate to file an initial application at the Patent Office? Are there any potential issues with filing an application early and making a follow-up application later? This Briefing sets out some of the factors to consider in addressing such questions.
01 April 2017
The Supreme Court, the highest Court for England and Wales, has given guidance as to considerations to take into account when deciding whether an activity can be regarded as “making” a patented product and thus infringing a patent. This Decision has relevance for activities including reconditioning and repairing of patented articles and for sale of spare parts and even consumables of larger patented articles. The Decision makes it clear that the question of whether an activity is “making” is “one of fact and degree”. The Decision concludes that there are no fixed principles nor any single simple test to assess what constitutes...
02 January 2017
Notwithstanding surprising electoral developments in the UK and the US, 2016 was a continuation of business as usual for the Boards of Appeal of the EPO at least in relation to computer-implemented inventions. The Boards continued to apply the “Comvik” approach to examining mixed inventions, that is inventions involving both technical and non-technical features, but still did not offer any definition of what is and is not technical. Backlogs appear to have risen, due no doubt to the freeze on recruitment of Board members and consequent vacancies. This article discusses some statistics from 2016 of the various Boards of Appeal...
29 June 2016
Since April 2014, it has been possible to file multiple divisional applications from any European patent application pending at the European Patent Office (EPO). Divisional applications can be filed from a European application which is itself a divisional application. Further, the EPO’s rules on double patenting are relatively liberal1. In some cases, Applicants have used these rules to file multiple divisional applications with similar claims. These divisional applications can then be kept pending at the EPO while challenges to the parent patent are determined in EPO opposition proceedings and/or in national litigation. If the parent patent is revoked, or is found...
19 May 2016
In the 2016 decision T 2440/12-Fluid flow simulation/SIMCON, Technical Board of Appeal 3.5.07 has found that a commercially available software package makes the methods it embodies available to the public because it could be run line-byline in a virtual machine (VM).
28 January 2016
In 2015 the Boards of Appeal of the EPO continued to develop the “Comvik” approach to examining mixed inventions, that is inventions involving both technical and non-technical features, but again declined to define what is and is not technical. This article discusses some statistics from 2015 of the various Boards of Appeal that consider software inventions and some interesting or notable decisions.
24 September 2015
Third party patents can represent significant obstacles to achieving a commercial goal. The opposition procedure at the European Patent Office (EPO), if used successfully, can provide a cost-efficient mechanism for removing or limiting a troublesome patent. As a general rule, it is relatively cheap compared to national litigation and the centralised procedure means that revocation or limitation of a European patent in the opposition procedure applies in all of the validation states. However, EPO oppositions are often slow, in particular when the appeal stage is taken into account.
03 September 2015
The UK Patents Act was amended on 1 October 2014 to clarify the extent to which conducting clinical trials to assess the safety and efficacy of a patented drug can constitute patent infringement. This briefing contains a discussion of the amendments and of the situation before the future European Unitary Patent Court (UPC).
05 March 2014
Section 7(2) of the Indian Patents Act requires that when an application is made “by virtue of an assignment of the right to apply for a patent for the invention” , then it is necessary to file “proof of the right to make the application” . The so-called “proof of right” is normally a “Form 1” signed by the applicant and the inventors. Alternatively, a certified/notarised copy of an assignment of rights in the invention in India from the inventors to the applicant can be filed in place of a “Form 1”.
18 November 2013
Many countries have provisions which allow for compulsory licences to be granted under exceptional circumstances. However, in recent years, these provisions have only rarely, if ever, been used.
19 September 2013
In its decision in Generics (Mylan) V Yeda & Teva, the UK Court of Appeal considered the extent to which subsequent evidence can be relied upon for the determination of inventive step. The Court closely followed the approach adopted by the EPO to the consideration of such evidence. The decision provides a useful summary of the manner in which the technical contribution provided by a patent is assessed.
18 September 2013
Transforming research carried out in institutions such as universities and hospitals into commercial products and services can be a long and complex journey, but the results can provide significant income for the institutions involved, as well as improving the lives and prosperity of the public. IP often plays a central role in the success or failure of a project. It is crucially important to adopt the right strategies, both in terms of how an IP portfolio is grown and how it is used.
16 August 2013
Article 53(c) EPC specifies a number of exceptions to patentability in the field of medicine, including “ methods for the treatment of the human or animal body by surgery ”. These exceptions to patentability were included in the EPC on socio-ethical and public health grounds to ensure that medical and veterinary practitioners remain free to take any action necessary to treat or diagnose illnesses.
12 March 2012
After your patent application has been filed at one (or more) of the many Patent Offices around the world, it will be processed by that Patent Office. This is known as the patent “prosecution” process. This Briefing provides an overview of what to expect. However there are many local differences to take into account. The law and practice that govern the details of the procedures followed by the Patent Office vary widely from country to country. The cost involved and the time taken to process applications also vary from country to country, and indeed from case to case.
02 August 2018
The CJEU has dismissed Nestlé’s appeal on the acquired distinctiveness of the KitKat bar. The Court has re-affirmed the principle that, for an EU trade mark to be registered on the basis of acquired distinctiveness through use, the acquisition of distinctive character needs to be shown in every Member State of the EU in which it did not, ab initio, have such character. It remains to be seen whether the CJEU decision signals the end for Nestlé’s trade mark registration, or is merely one decision in a series of appeals set to continue for some years to come.
04 April 2017
Whether or not it is worth filing intellectual property rights IPRs in China is likely to be influenced by how you plan to develop your business. Are you planning to exit by selling your business, or assigning or licencing your product globally? Most investors and buyers will look for Chinese IPRs, and if you have none then this may affect the level of interest, or the price you can obtain. If on the other hand you are planning to grow your business yourself, then you should consider whether the cost of filing and maintaining an intellectual property right in China...
01 November 2016
In July, the U.K. repealed a provision that provided a shortened term of copyright protection for ‘‘artistic works.’’ Because this change also revives protection that had expired under the old law but would be revived under the new, rights holders in certain industries such as furniture makers may now have resurrected rights that can be asserted against those copying their works.
10 February 2016
The High Court of England and Wales was asked for permission to serve proceedings for UK patent infringement on a Chinese manufacturing company. In considering whether or not to grant permission, the court had to consider the burden of proof when establishing infringement of a process claim. It also considered whether or not the Chinese company could properly be said to be a joint tortfeasor.
16 June 2015
On 11 June 2015, the Opinion of Advocate General Wathelet was delivered in Case C-215/14, Nestle v Cadbury, a case concerning the registrability of the shape of the well-known Kit-Kat chocolate bar.
04 March 2015
In the first High Court trade mark judgement of 2015, Mr Justice Arnold recently delivered his decision in Enterprise Holdings, Inc v Europcar Group UK and Another  EWHC 17 (Ch). The well-known car rental companies were in dispute over the fact that both use an ‘e’ logo on a green background, with Enterprise claiming that Europcar’s use of its ‘e’ logo infringed Enterprise’s earlier rights in its own ‘e’ logo. Arnold J held that, although the marks were only similar to a low degree, there was a likelihood of confusion, and found in Enterprise’s favour on the grounds of trade...
19 December 2014
The CJEU has delivered its decision on Case C-205/13 Hauck GmbH v Stokke A/S & others regarding the registrability of shapes as trade marks. The case concerns the grounds for refusal or invalidity of a shape trade mark under Article 3(1)(e) of the Trade Marks Directive (2008/95/EC), which provides that a sign shall not be registered as a trade mark or, if registered, shall be liable to be declared invalid, if it consists exclusively of:
15 June 2014
Do Not Immediately Contact the Infringer! You may discover or suspect that someone is infringing one or more of your IP (intellectual property) rights. It could be a patent at the core of your business, a trade mark protecting your main brand or an important product design. When you become aware of the situation, you may be tempted to go straight into battle and take immediate action. Your first instinct may be to contact the infringer straight away and tell them to stop infringing.
05 March 2014
In a previous briefing (Design For “Trunki” Child’s Wheeled Suitcase Successfully Enforced), we reported the successful enforcement of Magmatic’s Community design for the “Trunki” against PMS International’s “Kidee Case”. PMS were, however, successful in their appeal, leading to the decision at first instance being overturned in the Court of Appeal. The appeal addresses some important questions regarding the interpretation of the registered design and on what level a comparison should be made with an alleged infringement.
29 July 2013
The Court of Justice of the European Union (CJEU) has recently issued its decision in response to a reference from the English Court of Appeal. In Case C-252/12, 18 July 2013, Specsavers International Healthcare Ltd, Specsavers BV, Specsavers Optical Group Ltd, Specsavers Optical Superstores Ltd v Asda Stores Ltd, the CJEU held that a figurative mark is put to genuine use where a word mark is superimposed over it, provided that the distinctive character of the figurative mark remains intact. The CJEU has also held that where a figurative mark is registered in black and white, but has been used...