Tag:  “EPC”  | (10) posts

Referral to the Enlarged Board of Appeal regarding negative features in a claim (i.e. disclaimers).

The use of undisclosed disclaimers in a filed application has been practiced since the start of the EPC (European Patent Convention) and was codified in G 1/03. According to this decision, three exceptions[i] from the general principle (a patent or patent application may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed (Art. 123(2)) were established.

In a second decision, the EBA (Enlarged Board of Appeal) in G 2/10 had to deal with disclosed disclaimers, i.e. disclaimers that formed part of the original application. The EBA decided that ‘the test to be applied is whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed’. The test is sometimes referred to as the ‘Gold Standard’.

Since G 1/03 relates to undisclosed disclaimers and G 2/10 relates to disclosed disclaimers, they should complement each other. However, the comments in G 2/10 give the referring board in T 437/14 reason to believe that the Gold Standard should apply in addition to the exceptions or even as the sole standard. Therefore, the EBA will have the opportunity to revisit the disclaimer issue for the third time and hopefully finally resolve it.

After the G 2/10 decision, the various boards have struggled to deal with the two tests. In some decisions only the exceptions in G 1/03 are applied, while in other decisions different ways to accommodate the Gold Standard in the exceptions of G 1/03 have been explored. When the Gold Standard was applied strictly (as in T 748/09) the board did not allow the disclaimer. However, when the Gold Standard is applied in a modified form the disclaimers stand a better chance. In at least two instances (T 1870/08 and T2018/08) different modified Gold Standards are applied. Therefore, the EBA has the opportunity to determine the modified standards for disclaimers in the event the exceptions of G 1/03 apply in addition to the Gold Standard of G 2/10.


[i] The three exceptions relate to disclaimers not disclosed in the application as filed and introduced in a claim in order to

  • restore novelty by delimiting the claim against the state of the of the art disclosed in a European patent application filed prior but published after the relevant date (Art. 54(3) and (4) EPC),
  • restore novelty by delimiting a claim against an accidental anticipation, i.e. an anticipation so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention, and
  • disclaim subject-matter excluded from patentability for non-technical reasons.

Torben Raven Rasmussen, Partner – European Patent Attorney

Amended rules relating to the refund of the examination fee

Today the rules relating to fees[1] stipulates that the examination fee will be refunded in full if the European patent application is withdrawn, refused or deemed to be withdrawn before the Examination Division (ED) has assumed responsibility of the application. The examination fee can also be refunded at a rate of 75% if the European patent application is withdrawn, refused or deemed to be withdrawn after the ED has assumed responsibility, but before the substantive examination has begun. Exactly when the Examination Division assumes the responsibility really depends on when the request for examination has been filed, which is practically determined by when the Examination fee has been paid. The substantive examination begins on the date when the examiners starts identifying European prior rights not available when the search was carried out, and this date is recorded in the Register.

This rule will now change, and the examination fee will hereafter be refunded as follows:

R Fees 11 (a)  in full if the European patent application is withdrawn, refused or deemed to be withdrawn before substantive examination has begun; and

R Fees 11 (b) at a rate of 50% if the European patent application is withdrawn after substantive examination has begun and before expiry of the time limit for replying to the first invitation under Article 94 (3) EPC issued by the Examining Division proper or, if no such invitation has been issued by the Examining Division, before the date of the communication under Rule 71(3) EPC.

A full refund will thus be obtainable if the substantive examination has not begun. For certain files and if operationally possible the EPO will inform the applicant, at least two months beforehand, of the date on which it intends to start substantive examination, and they will commit to not starting substantive examination before the date indicated.

The 50% refund will be applied after the issuance of a first office action, and an applicant will only get this refund if they actively withdraw their application. Communications addressing purely formal deficiencies in the application documents and issued by formalities officers will not be considered an Art 94(3) EPC communication issued by the “Examining Division proper”.

In the situation of a direct grant after search, the 50% refund is only possible to obtain the day before the date printed on the Rule 71(3) EPC communication, meaning that the withdrawal should be done as soon as possible after the positive search opinion has been received.

A withdrawal made conditional on the 50% refund will generally be possible.

RFees 11 (a) a as amended applies to all European patent applications which are withdrawn, refused or deemed to be withdrawn on or after 1 July 2016. Article 11(b) RFees as amended applies to all European patent applications for which substantive examination starts on or after 1 November 2016.

Sofia Willquist, European Patent Attorney

[1] RFees 11 Refund of examination fee

Exclusive competence of the UPC – is it time to develop opt-out strategies?

The Agreement on a Unified Patent Court (UPCA), “the Court”, will enter into force four months after the 13th Contracting Member State has deposited its instrument of ratification. This date has been gradually moved forward from the beginning of January 2014. It is now anticipated for early 2017.
Immediately upon its entry into force of the Agreement, the Court will begin to settle disputes relating to European patents and European patents with unitary effect. A European patent is a patent granted under the provisions of the European Patent Convention (EPC) which does not benefit from unitary effect.

The UPCA thus automatically applies not only to the European patents with unitary effect, but also to all European patents which have not yet lapsed at the date of entry into force of the Agreement. The UPCA also applies to all European patents granted after that date, as well as to all European patent applications pending at that date or filed after it.

This means that even if you as a proprietor do not request unitary effect, your patent will still be within the exclusive competence of the new Court. Another important aspect worth considering is that the patents that have already been granted by the EPO will be also prosecuted before the new Court.

However, Articles 3 and 83 of the Agreement  offer relief to proprietors and applicants which do not wish to have their European patents brought before the new Court. During a transitional period of seven years after the entry into force of the UPCA, an action for infringement or revocation of a European patent may still be brought before a national court or other competent national authority.

This must be requested, by opting out from the exclusive competence of the Court, by notifying the Registry and paying the prescribed fee (currently EUR 80). The proprietor or applicant may, of course, withdraw their opt-out at any time unless national court proceedings have begun.

The opt-out will only take effect upon entry into the register. Patent portfolios should therefore be reviewed during the second half of 2016 in order to be properly prepared before the Agreement enters into force and to be able to quickly file a request to opt out.

It is ultimately up to the proprietors and applicants to decide on the patents, applications and SPCs for which they want to opt out. However, bearing in mind that the UPC is a new court, without any case law to rely upon, it might be anticipated that opt-outs will be requested for important patents and applications for which unitary effect will not be sought, at least until the case law from the Court develops.

It is now also possible that there will be a ‘sunrise period’ during which patent holders may file the opt-out request with the Registry before the Court opens by the signing of the Protocol to the UPC Agreement on October 1st 2015.

Sofia Willquist, European Patent Attorney

European patent validation in Morocco and Tunisia

Recently, the EPO has initiated work on a new interesting possibility for European patent applicants.

Namely, the EPO has reported having signed an agreement with the Tunisian government on the validation of European patents for Tunisia. A similar agreement has previously, in 2013, been signed with the Moroccan government.

According to the agreements, European patents validated in these countries will have the same legal effect as Moroccan and Tunisian national patents, even if neither Morocco nor Tunisia is an EPC contracting state. Also, European patents validated in these countries will be subject to Moroccan and Tunisian patent legislation. Morocco and Tunisia will thus become States recognizing European patents upon request or, in terms of the EPC, Extension States.

However, the Moroccan and Tunisian governments will first have to ratify the agreements before they enter into force. To do so it is also possible that the Tunisian and Moroccan legislation must first be amended.

Furthermore, it is not yet established what documents will be required for validation, what the official fees applicable will be and what the translation requirements will be.

Until, and by all likelihood also after, ratification of these agreements patent protection in Morocco and Tunisia may be obtained by filing national patent applications and/or PCT national phase applications.

Furthermore, in light of the above, it is worth noting that patent protection in Morocco extends to Tangier and Western Sahara.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

Link to the EPO press release

Introduction of fee reductions for small entities before the EPO

Effective 1 April 2014 the Administrative Council (AC) of the EPO has changed the rules for obtaining reduction on certain fees charged in relation to the procedure before the EPO [1].

The requirement that the applicant must be a resident of or have principal place of business is in an EPC contracting state with an official language other than English, French or German or be a national of such a state who is resident abroad has not been changed.

However, the reduction obtainable has been increased from 20 % to 30 %. Now, who wouldn’t want to obtain such a reduction? Everybody, obviously! However, not everybody is eligible for fee reductions. Thus, to find out whether you are eligible for a fee reduction, read on.

According to the new Rule 6 EPC the applicant must also be a small and medium-sized enterprise (SMEs), a natural person or a non-profit organisation, university or public research organisation.

These types of applicant are defined in the EU Commission’s recommendation of 6 May 2003 [2], and outlined in a somewhat simplified manner in the Official Journal of the EPO [3].

As regards natural persons, non-profit organisations, universities and public research organisations, these types of entities are straight forward to identify.

Natural persons and non-profit organisations are considered self-explanatory. Universities are institutions of higher education and research under the relevant law. Public research organisations are institutes organized under public law with the primary purpose of conduction research and development and of disseminating the results by teaching, publication or technology transfer and which must reinvest all profits in carrying out such activities.

As regards SMEs to qualify as such three conditions must be fulfilled, namely:

a) employ fewer than 250 persons;

b) have an annual turnover not exceeding EUR 50 million and/or an annual balance sheet total not exceeding EUR 43 million; and

c) no more than 25% of the capital may be held directly or indirectly by another company that is not an SME.

When calculating these numbers for a given enterprise, any mother and daughter enterprises must be included subject to the somewhat complex rules of calculation given in [2].

If the applicant is an enterprise failing to fulfill just one of the above-mentioned criteria, no fee reductions are available any longer.

Furthermore, the new reduction of 30 % applies only to the filing fee and the fee for examination. Hence, fee reductions are no longer available for the fees for opposition, appeal, petition for review and limitation/revocation.

To obtain the reduction a declaration stating the applicant’s status must be filed with the EPO when paying the relevant fee. This may be done simply by ticking a box added to the relevant accompanying form.

And what if the applicant changes status during the pendency of an application, you may ask. Fortunately, changes in the status of the applicant occuring after the declaration is filed have no retroactive effect, and so the status of the applicant at the time the fee falls due applies.

It is also worth mentioning the EPO will perform random checks of the declarations filed. If a declaration is incorrect, the associated application will be deemed withdrawn. Fortunately, in this case further processing is available to reinstate the application.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

[1] Decision of 13 December 2013 (CA/D 19/13) the Administrative Council of the European Patent Organisation: Link
[2] Recommendation of the EU Commission dated 6 May 2003: Link
[3] Official Journal of the EPO, 2/2014, A23: Link

Claiming a non-therapeutic use with inseparably associated therapeutic effect

A use of a substance or composition for the treatment of humans by therapy is excluded from patentability according to the EPC Article 53(c). However, claiming a non-therapeutic use of a substance or composition may still fall under this same exclusion if the non-therapeutic use is inseparably associated with a therapeutic use.

This was confirmed by the Technical Board of Appeal in a case against a decision from the Opposition Division (T1635/09). The case in suit related to the use of a contraceptive composition with reduced concentrations of the active substances, wherein the use had the further effect of preventing or reducing pathological side-effects (i.e. a therapeutic effect).

In the Board’s assessment of the subject-matter of the patent as a whole it was found that the reduced concentrations served solely to prevent or reduce the side-effects. Thus, the contraceptive effect was inseparably associated with the therapeutic effect.

Provisions in the EPC exist for claiming the substance or composition for use in the treatment; previously in the form of Swiss-type claims, i.e. a claim directed at the use of a substance or composition for the manufacture of a product for the treatment in question. However, the Board finds that the wording “manufacture of a product” according to the Swiss-type claim inherently provides an additional protection of the product per se. Hence, in T1635/09 it was further confirmed that a use claim (as excluded under EPC) cannot readily be converted into a corresponding Swiss-type claim (or the equivalent new format) without also extending the protection of the patent.

Consequently, owing to the facts of this case, applicants (in particular from the U.S., where the similar use claims are not excluded from patentability) should carefully consider the form and wording of use claims directed at protecting treatments by therapy as well as claims related to non-therapeutic uses, wherein the use may be associated with a therapeutic effect.

Jakob Leffland Reimers, Associate

A visit to the Copenhagen office

This week has so far been one of the most interesting weeks in the Specialist programme (soon to be renamed to the Trainee programme). Topics of the week include infringement, opposition and sales training, not to mention a trip to the Copenhagen office. The latter definitely being one of the highlights of the week.

The Copenhagen office is situated in the eastern part (Østerport) of the city in an old genuine building. The topic of the day was foreign filing which turned out to be a very interesting subject. Acceptance date, PPH (Patent Prosecution Highway), heavy prosecution countries and restriction requirements were all new expressions for the most of us. We found out that there is a lot more to know than EPC and Swedish patent law. Strategic decisions, for example using utility models instead of patents, were especially interesting. And although we didn’t get a hold of any Danish pastry, we had the pleasure to enjoy a Grøn Tuborg.

To analyze claims from another perspective – like when to file an opposition – was the topic of today. Arguing why a claim should not be valid instead of the opposite differed from what we are used to and resulted in many intriguing discussions. Hopefully, it will be more time to deal with oppositions in the upcoming practice period.

Soon, it’s time for sales training and I’m convinced that it will be as instructively as always.

Oskar Kronsell, Associate

Software inventions: The BGH confirms examination approach

Software inventions: The BGH confirms examination approach


By its judgment in X ZR 121/09 (Webseitenanzeige), the German Federal Court of Justice (BGH) recently nullified one of Siemens AG’s German patents (English-language version) for lacking technical character. The judgment can be said to belong to the same lineage as Xa ZB 20/08 (Dynamische Dokumentengenerierung), which was reported in AWA IP Review 2/2010, and X ZB 22/07 (Steurungseinrichtung für Untersuchungsmodalitäten), on which Xa ZB 20/08 relied heavily.

This new judgment once more demonstrates the German two-step approach to determining whether an invention has technical character. The two-step approach is in contrast to current practice under the EPC, which regards technical character as a monolithic – and usually rather easy – requirement to satisfy. The new judgment (see point 15) stresses that the invention both

(i) should possess technicality (“Technizität”, referring to the wording of § 1(1) PatG, “Erfindungen auf allen Gebieten der Technik”), and
(ii) has to provide instructions for solving a concrete technical problem.

An invention failing condition (ii) will not escape the exception in § 1(3), point 3 PatG (“Pläne, Regeln und Verfahren für gedankliche Tätigkeiten, für Spiele oder für geschäftliche Tätigkeiten sowie Programme für Datenverarbeitungsanlagen”).

It is intriguing to note that these provisions, which proved fatal to the patent-in-suit, are word by word identical to Art. 52(1) and Art. 52(2)(c) EPC. What makes such differing interpretations possible – and what their impact may be – is discussed in more detail in the article in AWA IP Review 2/2010.

Siemens’ patent was about a method for organizing browsing history. This is a computer-implemented invention fulfilling the “Technizität” requirement (see point 16) but does not, in the Court’s view, go beyond the normal interactions between hardware and software in a computer to such an extent that it fulfils condition (ii) (see points 22–27). Indirect advantages – e.g., that a server executing the claimed method can allow computers with simpler hardware to connect (point 25) or that the total load on the Internet may decrease a trifle (point 30) – are not accepted as evidence of a concrete technical problem being solved. Indeed, they relate to devices outside the claimed subject-matter and do not form part of its results from an objective point of view.

Between the lines, the BGH points out the weaknesses that made the Court pass this judgment. Apparently, the application leaves the skilled person with little more than conceptual ideas for carrying out the claimed steps (point 27). Also, the method relies on user data being entered by the user him- or herself and not on measured – hence potentially technical – environment variables (point 28).

Considering, as we do, someone else’s patent in retrospect, these points can certainly be seen as “room for improvement”. Done right, they would have offered fallback positions that might have saved the patent. These points also reminds us that Siemens’ application was drafted in 2001, in the days before a stable European software practice had emerged. Today, I believe few patent attorneys in this field would feel comfortable filing an application that discloses the invention only on a conceptual level.

Since the European application EP02006122 in the family is still pending, the judgment offers an interesting opportunity to compare European practice with the patenting standards of Europe’s largest economy. While the BGH judgment makes explicit reference to the German law, the EPO may reach a similar conclusion, be it by other arguments.

Anders Hansson, Patent Attorney, Awapatent

EPO’s fight against divisional applications

EPO is seeking to limit the submission of divisional applications, which would be a severe blow to small, newly started technical companies in particular. Although a stop was put to their latest proposal by the Committee on Patent Law, it is highly likely that despite this setback we will see a modified version put before the Administrative Council meeting in March.

EPO’s proposal
EPO has proposed limiting the option of submitting divisional applications to a period of 24 months following either a first order from the Examining Division or a first notification that the parent application lacks unity of invention. The proposal represents a significant limitation of the possibilities allowed to applicants under current rules, which enable divisional applications to be submitted for as long as the basic application remains valid.

The proposal is intended in part to limited alleged misuse of the submission of divisional applications. Based on the figures presented by EPO, it is estimated that alleged misuse occurs in fewer than one in a thousand applications.

However, the proposal is very far-reaching. If it is passed, it will no longer be possible to submit a divisional application in connection with oral proceedings. At present, this method can sometimes be the only way to ensure that an applicant has the possibility to obtain protection for patentable material contained in the submitted application. In cases where the patent application is rejected during the course of the proceedings, under current rules the applicant has the option of pursuing other lines of retreat through divisional applications, but under the proposed change in the rules divisional applications must be submitted at an early stage.

Small players hit hardest
EPO’s line will particularly hit small, newly started technical companies, which often lack both the economic resources and a precise knowledge of the position of the technology. At the same time, the innovation which forms the basis of such a newly started company often includes a number of inventions for which the company may be totally dependent on being granted strong protection.

Given that a company may often lack the resources to submit a large number of patent applications during the start-up phase, it has to rely on one or two broader-based applications. But due to a lack of the resources needed to fully protect the position of the technology beyond the basic idea behind the invention, as formulated in the applicant’s principal requirements, it often becomes necessary to utilise the option of divisional applications.

As the application is scrutinised, any changes to a principal requirement are defended in a rejoinder. Under EPO’s proposal, where the rejoinder does not have the desired effect, the time limit for submitting divisional applications would meantime have expired. Consequently the applicant must, at the time of submitting the rejoinder, already submit divisional applications for the set of inventions that can be identified by the applicant, in the event that an umbrella claim contained in the basic application is not approved. Given the fact that this entails a significant increase in procedural costs for a regular applicant, for a start-up company this option becomes prohibitively expensive. The proposal is therefore hostile to start-up companies of the type which EU common market policy otherwise claims to support.

The industry’s position
Against this background, Swedish and European industry together with representative associations are strongly opposed to EPO’s proposal, and a majority of the national delegates who spoke at the CPL meeting were also responsive to the concerns of the industry and the representative associations’ misgivings. The original proposal failed to muster support, subsequent to which a revised proposal was put forward whereby the option of submitting a divisional application would have to be justified and receive the approval of the Examining Division. This proposal also failed to gain sufficient support.

I would like to see a limitation introduced which would simply establish an exception in the case of divisional applications whose submission constitutes clear misuse of the regulatory system. The issue is whether EPO continues to pursue its hard line against divisional applications and whether this will gain resonance at the Administrative Council meeting in March.

Nils Ekström, European Patent Attorney

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What has happened since the introduction of EPC 2000?

EPC 2000 came into effect on 13 December 2007, as a result of the first major amendment of the European Patent Convention since its introduction in 1973. The most important reasons for the revision were adaptation to and harmonisation with international law (in particular TRIPS and PLT), modernisation and increased flexibility. A result of this was that the EPC became more user-friendly. EPC 2000 contains several provisions that did not exist before.

So what impact have these new provisions had on new European patents and applications? The EPO recently released new statistics on EP applications (covering the period from 13 December 2007 to 8 June 2008). These figures show, among other things, that:

  • Reference filing, which allows applicants to replace the description, any drawings and optionally also the claims by a reference to a previously filed application, has only been used in less then 0.5% of all new applications. However, it is interesting to note that most of the cases in which reference filing has been relied upon are divisional ap-plications. I believe this is a convenient way of making sure that you include everything from the parent application in your divisional application.
  • Central limitation have been requested for almost 50 European patents. That is quite a few in such a short time. Before the entry into force of EPC 2000 there were indications from the EPO that the central limitation proceedings should be fast, even in the range of two months. Of the 49 requests filed up until 8 June only one has been allowed. The allowed request was filed on 20 December, the EPO informed the patentee of the allowance on 16 May and the decision to allow the request was dated 2 July and published on 23 July (as the first B3 publication). Even though the proceedings in this case were a bit longer than two months, I believe that applicants will find this an easy and cost-effective way of customizing their patents after grant. Furthermore, the proceedings will hopefully become quicker, since the allowance in this case seems to have been delayed by a few months due to the fact that the EPO’s technical support for issuing this kind of allowances was not functioning from the start.
  • Central revocation has been requested for 13 patents, but of these 10 had the same applicant and the figures are therefore perhaps not fully illustrative.
  • Late filing of claims has not been used to a great extent by applicants. I hope that this means that applicants realise that they may run into major problems with support in the application as filed if claims are filed at a later stage.

Another new provision in EPC 2000 worth mentioning is the petition for review by the Enlarged Board of Appeal. So far, four petitions for review have been filed (two of these have been filed recently and are therefore not included in the statistics released by the EPO), and the first decision, in case R 1/08, was issued only a couple of weeks ago, on 15 July. The decision reads: “The petition for review is clearly not allowable”. From the reasoning presented by the Enlarged Board of Appeal it seems as if petition for review will be allowed only in exceptional cases, which was what most European patent attorneys anticipated from the start. For example, the Enlarged Board of Appeal states in R 1/08 that “[t]he extraordinary nature of this remedy [i.e. the petition for review] means that the provisions or Article 112a EPC are to be applied in a strictly-limited fashion”. It will be very interesting to follow the outcome of the other three pending cases and of any new petitions, to see what will be required to have a petition for review allowed.

Of course it’s too early for any deep analysis of the impact of EPC 2000, but I venture to argue that it seems that the new EPC provisions work as they were intended. And I also think that the users of the European patent system will benefit from the increased flexibility that the revised EPC affords.

Maria Stenbäck, European Patent Attorney

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