Tag:  “patent application”  | (11) posts

EPO gets Stricter on Requirements for Recording Assignments

The EPO is going to take a stricter approach for recording an assignment of EP applications. Up until now the EPO has accepted assignment documents evidencing a transfer that had only been signed by the Assignor.

Recordal of assignment is governed by Article 72 EPC which states that “An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract”

The November 15 edition of the “Guidelines for Examination” (at E-XII-3) states that “a declaration of the assignor only is likewise sufficient, provided that the request has been filed by the assignee”.

The above-mentioned section of the EPO Guidelines for Examination has been revised, and the above wording deleted, to be replaced with “Article 72 requires that the signatures of the parties appear on the documents submitted as evidence of the transfer” at new section E-XIII-3.

The new Guidelines for Examination will enter into force on 1st November 2016. Registration of transfers already recorded will not be affected by this change.

Thus, the EPO are getting stricter in following the requirements of Article 72 EPC, and now require that the signatures of both the Assignee(s) as well as the Assignor(s) must appear on the assignment document when recording a transfer.

According to the new guidelines it is however still possible to provide the following other evidences of the transfer: “Any kind of written evidence suitable for proving the transfer is admissible. This includes formal documentary proof such as the instrument of transfer itself (the original or a copy thereof) or other official documents or extracts thereof, provided that they immediately verify the transfer”.

In view of the above change, we should advise all our clients to ensure any assignment documents prepared for the transfer of EP patent applications include the signature(s) of the Assignors(s) as well as the signature(s) of the Assignees(s). Also, to avoid problems with the recordal of assignment at the EPO it is important to ensure printed names and capacity as signatory for both parties in the transfer document.

Although it may seem that the EPO is going belt and braces with this stricter approach it is important to remember the that once a transfer has been duly entered in the European Patent Register, the registration cannot be undone. In case of any doubt, proceedings may have to be stayed until the identity of the legitimate applicant/proprietor has been established.

 

Helle Friis Svenstrup, member of Awapatent’s EPC specialist team

European Patent Office: New PPH agreements on the way

The ever expanding Patent Prosecution Highway (PPH) network keeps getting new additions, and as usual, the AWAPATENT IP Blog sums up the new expansions and arising possibilities.

The PPH is a system of bilateral agreements allowing for requesting accelerated examination at one participating office. The system is based on the search results and a set of claims accepted for grant, in an analogous application, at the other participating office.

Most recently, European patent applicants have been offered the possibility of speeding up and simplifying the examination. Namely, effective as of 1 October 2016, the EPO (European Patent Office) and the Superintendence of Industry and Commerce of Colombia have launched a new PPH agreement. The agreement applies to both national and PCT work products. The EPO’s notification of entry into force can be found here.

Furthermore, the EPO has just announced the signing of three new PPH agreements with the IP offices in Russia, Malaysia and the Philippines. These three PPH agreements will, according to the EPO, enter into force during 2017. The announcement may be found here. The AWAPATENT IP Blog will inform its readers of the actual dates of the entry into force.

Finally, it is worth mentioning that the Chilean and Moroccan IP offices also have joined the PPH network. The Chilean IP office has together with the Mexican, Colombian and Peruvian IP offices signed mutual PPH agreements. The Moroccan IP office has signed a PPH agreement with the Spanish patent office. This makes the grand total of IP offices, participating in the PPH network, 41.

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

Wider scope of protection for Swedish patents?

Last week the Swedish government referred an amendment of the Swedish patent law to the Council on Legislation for reconsideration. According to the suggested amendment, patent applications filed in English need not be translated into Swedish. Instead, they can be granted in English.

For applicants filing a Swedish patent application in English and wishing to obtain a Swedish patent, this ought to be a major cost saver. However, many of my clients use the Swedish patent system for receiving a quick and not so expensive search and examination and then, after receiving the first Office Action, they abandon the patent application. The patent protection in Sweden is instead obtained by validating a European patent in Sweden. With the new legislation though, there can be benefits in keeping the Swedish application alive.

There will be occasions when the applicant might have to file a translation of the claims, e.g., when publishing the patent application in order to obtain provisional protection and upon receiving an intention to grant. Further, during opposition or litigation, the patentee can be requested to file a translation of the description and the abstract. It is however the claims in English that determine the scope of the patent.

When validating a European patent in Sweden, the scope is instead determined by what is present in both the claims of the European patent and the claims of the Swedish translation. This can be a problem if the translator chooses a narrower wording than the wording in the original application. Hence, one advantage with letting the Swedish patent application become a patent might be a wider scope of protection.

To sum up, the suggested amendment provides both cost savings and supposedly a wider scope of protection. Whether it will lead to an increase in filing rates, we can only guess.

If the amendment is passed, it will become effective 1 July 2014.

Update: The Council on Legislation have now reviewed the amendment and have no objections. The next step is that the Swedish government presents a parliamentary bill to the Riksdag. (25 Nov 2013)

Julia Mannesson, European Patent Attorney 

Link to more information (in Swedish)

A slip of the pen?

A claim for 90 MSEK worth of damages is being filed today in the Skellefteå District Court by 707 Chilean plaintiffs, who were poisoned by arsenic-containing waste products deposited near their hometown in the early eighties. The defendant, the Boliden mining group, had commissioned a Chilean company to take care of the waste according to best practice at that time. But according to the plaintiff side, Boliden knew that best practice was not good enough – as the background section of their patent application SE8001847-6 reveals:

“The arsenic content of such waste products is often up to 20–40 %, rendering it difficult to safely dump said waste products because of the enormous environmental problems created thereby, even though the prescribed safeguards per se have been taken.”

It will be a crucial point to prove that Boliden’s decision-makers were as knowledgeable about chemical hazards as their patent drafters. A not-unexpected defence – and maybe a successful one – might be to have a patent attorney confirm that patent backgrounds often are very concerned about the shortcomings of the prior art, to draw a flattering backdrop for the invention.

The new claim brings to mind a case (judgment of 27 May 2003 by Bavarian Administrative Court of Appeal in case 5 CE 02.2931) where the holder of European patent EP0236736 requested the German Patent Office not to publish his competitor’s patent DE4332545 unless the competitor removed his disparaging statements about the former’s beverage cans:

“EP0236736B1 … show[s] a tearable lid … These stiffening ribs are however interrupted … so that the achievable stiffening action is more or less lost. Because further the pulling ring is substantially immersed in the U-shaped seam, it is difficult to get hold of the ring with a finger nail …. Yet another drawback is the considerable mechanical tensions in the lid, which develop during manufacture as a consequence of the many seams and deformations, and which lead to undesired displacements in the plate.”

The holder of EP0236736 produced evidence that these statements were much exaggerated. He cited § 4 of the German Act Against Unfair Competition (UWG), by which discrediting statements are an unfair commercial practice.

The court noted that the Patent Office has no duty to scrutinise statements in the background section, so that the public ought to read that section of patent publications with caution. Further, most applicants will want to highlight their invention by stressing the disadvantages of earlier solutions, of course within reason and without downright insulting their predecessors. Moreover, while patent rights may be powerful business tools, the court couldn’t agree that patent publications have a significant commercial impact. This decided the matter and the background section in DE4332545 was left unchanged.

It will be very interesting to see what importance the court attaches to the statements in Boliden’s 1980 patent application.

Anders Hansson, European Patent Attorney, member of Awapatent’s Specialist Team Litigation

DK-US Patent Prosecution Highway agreement version 2.0

Patent Prosecution Highway agreement version 2.0 between the DKPTO and the USPTO

Effective from today, 3 June 2103, the PPH agreement between The Danish Patent and Trademark Office (DKPTO) and The US Patent and Trademark Office (USPTO) has been upgraded to what the DKPTO aptly calls a “PPH-agrement version 2.0”.

With the PPH agreement version 2.0 – to this blogger’s knowledge the first of its kind – a significant simplification is introduced. Now, it no longer matters which office is the Office of First Filing and Office of Second Filing, respectively.

In more detail it is now possible to proceed as follows:

  1. File a first patent application with the USPTO.
  2. File a second patent application claiming the priority of the first application with the DKPTO, and
  3. File a request for examination under the PPH in the US patent application with the USPTO using the result of the examination made by the DKPTO.

Hence, in contrast to the original and now superseded agreement, it is now also possible to use the examination result of the Office of Second Filing to request examination under the PPH at the Office of First Filing. In the original agreement it was only possible to use the examination result of the Office of First Filing to request examination under the PPH at the Office of Second Filing.

Furthermore, it is worth mentioning that with the arrival of June the Indonesian patent office has entered the PPH network by signing a PPH agreement with the Japanese Patent Office.

As always, we shall endeavour to keep our readers updated on further developments.

Link to the DKPTO-USPTO PPH-agreement version 2.0:

At DKPTO: http://www.dkpto.dk/media/20511122/pph2.0_us_filers_03062013.pdf

At USPTO: http://www.uspto.gov/web/offices/com/sol/og/2013/week22/TOC.htm#ref15

 

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

A patent application for a trainee unit of patent knowledge

To: Awapatent IP Blog

Re: Patent Application

Background of the invention

Two periods of heavy patent theory have passed, and during that time we as trainees have gained a lot of insight into the world of patenting. If the patent world should be compared to another world, I would think that the world of quibblers would be quite suitable. Through the trainee program we have experienced how discussions might arise due to different wording in, for example, a patent claim, and how an outcome of an oral proceeding might be based on this. Therefore, the strength given to the patent by co-operating with co-workers, having different views on the various aspects, is of great importance.

Summary

Based on this, it is the objective of the present invention to provide an office, comprising at least three trainees, at least three desks, at least one chair, and maybe at least one (dead) plant, wherein said at least three trainees are placed at each of said at least three desks, where on each of said three desks a computer is attached, thereby forming a trainee unit of patent knowledge.

By this invention it is believed that a faster communication route and broader knowledge for the trainees is obtained, giving the best environment for learning, in that silly questions might be answered without disturbing other colleagues.

Submitted to the Awapatent IP Blog on 11 January 2013. Awaiting search report from the examiner.

Susanne Rytter Christoffersen, Associate

It’s time for the first patent application

The “trainee tour” has moved on to Gothenburg and we have now spent almost three weeks in the world of IP and the pace of learning is increasing. The first two weeks gave us a comprehensive introduction to patents and now we have been assigned the task of writing our own patent application, which is an interesting and most challenging task at this stage. Although the patent claims are provided to us in this particular assignment, we have had a few study sessions of how to write claims, so the fog that surrounds this challenging topic is starting to clear up for all of us.

We also discussed a fictional case described as a smorgasbord of opportunities for Awapatent consultants. The smorgasbord case concerned a company with its own R&D department that acquired a second company mainly for their IP-portfolio. It turned out that we in this case could provide services within design, trademarks, agreements, litigation, due diligence, among many other things. In another lecture, it was also interesting to hear about how design may penetrate patents, trademarks, and copyright, apart from being a field of IP in itself. It certainly feels like the diverse world of IP is opening up more and more.

Tonight we are going to experience the annual crayfish party at the Gothenburg office, which is one of many examples of fun activities happening within Awapatent. We still have no clue about any surprises that may appear at this event!

We are only half way through the first theory period of five weeks so there is a lot more to come; the next stop on the trainee tour 2012/2013 is Stockholm!

Fredrik Öisjöen, Associate

Starting to get the hang of this …

A couple of months into the Specialist programme, most of the things I’ve been taught about IP have started to settle. I’m starting to know my way around and even the language of patent applications comes quite naturally by now.

During these months we’ve had quite a few senior colleagues teaching us how to write patent applications. I was surprised at first, that people were giving such different advice. Everyone seemed to have their own way of writing and I remember thinking that surely someone ought to know best. As time has passed it has become quite clear that there is no universal best way of writing. There are too many things to consider when writing, depending on the type of invention involved and the purpose of the application. You just have to figure out your own way of writing, picking up advice as you go.

The end of 2011 has been very busy at my home office in Stockholm. I pushed myself quite hard to finish writing a patent application in time for Christmas – and yes, discussing my first draft with a senior colleague revealed “a few” things I need to improve. Now, after a week of vacation, I’m back at it again.

David Färm, Associate

Explore the benefits of a first national filing

The filing of a patent application is associated with numerous considerations. Should it be firstly filed as an international PCT application? Would it perhaps be better to directly enter one or more regional phases in combination with some selected countries of interest? Alternatively, should the application firstly be filed nationally before deciding how to proceed?

 Obviously, there is no default answer to these questions. Instead, the patent application filing strategy must be decided on a case-to-case basis by considering factors such as geographical locations of clients, competitors, manufacturer sites, possible future markets etc., as well as the applicant’s financial allocation for the application. It is the duty of the patent attorney to analyze these factors and to protect the interests of the applicant, based on the conditions at hand, when deciding where and how to file.

By firstly filing a patent application nationally, the applicant may start the patent journey cautiously and avoid relatively high costs at an early stage. Seen from a local perspective, a patent application may be filed nationally with the Swedish Patent Office (PRV). A filing with the PRV is beneficial in that the filing fee is relatively inexpensive and that the search/opinion regarding the patentability of the application is issued relatively fast. These aspects may be of special interest for applicants desiring to keep initial costs low and/or being unfamiliar with the prior art in the field of the application. Furthermore, a relatively quick patent application procedure gives the applicant a further insight regarding the possibility of obtaining a Swedish patent and/or an indication when contemplating a PCT-route wherein priority is claimed from the Swedish application. In some cases, it is even possible to obtain a national Intention to Grant Communication (“slutföreläggande”) within the priority year, which may even further contribute to the evaluation of a possible PCT filing.

A national patent application may be filed with the PRV in English, followed by a later translation into Swedish. A first filing in English is advantageous in that a continuation into the international PCT phase may thereby be prepared. Furthermore, in a recent press release from 30 June 2011, issued by the Swedish Ministry for Industry, Employment and Communications, it was announced that the Swedish government has decided to investigate the possibility of abolishing Swedish translations of national patent applications filed in English. It will also be investigated if national patents could be granted in English similarly to the validation of European patents in Sweden. The mentioned measures, if put into practice, will lead to further procedural simplifications and translation cost savings for the applicant, and will moreover, as related to this context, influence the step of where/how to file the application.

 To conclude, the above highlights several beneficial aspects of a first national filing. On the other hand, it should be noted that directly filing an international or regional patent application could be preferred, dependent on the case at hand. Although the way of filing a patent application hereby seems rather complex, the content of this text may, as a final remark, be summarized in one sentence: a sound patent application filing strategy, whether international, regional and/or national, is based on the interests of the applicant and the expertise of the patent attorney, aiming to protect these interests.

Love Koci, Patent Attorney, Awapatent

Changes to the German Intellectual Property Laws

A series of changes to the German intellectual property laws was recently passed by the German parliament. The reforms enter into force on 1 October 2009.

Of greatest importance are the changes to the patent law regarding patent invalidity proceedings. The changes aim at speeding up the process by limiting the possibility of making changes to the patent at a late stage and filing other submissions, which could delay the proceedings.

The changes also affect the Employees’ Invention Act, thus providing that employee inventions belong to the employer unless the employer declares otherwise within four months from the notification of the invention. Presently, the employer is required to actively claim exclusive or non-exclusive right over the invention whereas with the new reform no action is required by the employer.

The new patent law also entails changes to the costs of filing new patent applications. The fee for filing a patent application electronically will be reduced. However, at the same time claim fees will be introduced and filing more than ten claims will result in an additional fee for each claim exceeding ten claims.

The EU Paediatric Regulation will also be implemented. The regulation provides an addition to the regulation on Supplementary Protection Certificates, which allow for extensions of the term of Patents relating to medicinal products. The Paediatric Regulation provides the possibility of an extra six months extension of the Supplementary Protection Certificates if a paediatric investigation plan for the medicinal product in question is approved.

Jakob Leffland Reimers, Associate