DEVELOPMENTS IN IP
- The Enlarged Board of Appeal clarifies patentability of surgical methods, second medical use claims and the language of European patent applications
- Important changes to European patent practice
- UK patent application fee changes
- Speedier prosecution for “green” UK patent applications
- Changes to UK applications for a series of trade marks
- Changes in the UK customs procedures
- First referral to the European Court of Justice regarding designs
- When is a European patent application “pending”?
- Further country coverage available for European patent applicants
The Enlarged Board of Appeal clarifies patentability of surgical methods, second medical use claims and the language of European patent applications
The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) issued three key decisions providing clarification on points of European practice in February 2010.
In G1/07 the EBA indicated that the exclusion from patentability of methods of surgery should cover interventions that are the core of the medical profession’s activities, for which its members are specifically trained. Interventions of the kind that involve a health risk, even when carried out with professional care and expertise, should be excluded, whereas those that are “uncritical”, involving minor intervention and not normally presenting any significant health risk, should be open to patentability. It was stressed that the technical reality of the method must be assessed on a case by case basis to decide whether the exclusion applies.
Meanwhile, G2/08 confirmed that it can be possible to protect a new medical treatment using a known substance, even when the substance is already known for use in a different regime for treating the same illness. This includes the possibility of protecting new and inventive dosage regimes. Essentially, if a method of treatment using a known substance would be patentable were it not for the exclusion from patentability of methods of treatment, then a claim to the substance for this new use should be permitted, using a second medical use claim.
The decision also places a bar on “Swiss type” claim language for second medical use claims in European patent applications having an earliest date (priority date or filing date) three months or more after the date of publication of G2/08 in the EPO Official Journal. Therefore whilst this does not affect granted and currently pending applications, the EPC2000 wording, which requires the applicant to claim “Substance X for use in treating specific medical condition Y”, must be used for new applications.
Finally, G4/08 ruled out the possibility of switching the official language of the proceedings for European regional phase applications where the PCT application was published in an EPO official language (English, French or German). For such cases this language of publication is the official language of the proceedings and this cannot be changed by providing a translation into a different EPO language on filing, nor can it be changed on request, even if all parties agree.
Important changes to European patent practice
As reported previously, on 1 April 2010 European law covering a number of practical aspects will be changing.
Potentially the most important change is the reduction, in most cases, of the time available in which to file a divisional application. There will, however, be a guaranteed grace period for filing divisional applications from pending European applications which runs until 1 October 2010. It is therefore worth considering a review of existing European patent applications in the near future to determine whether any divisional applications will be necessary, for example where a number of inventions are provided in the same application.
Other significant changes include a compulsion to file a substantive response to the written opinion accompanying the European search report, and a restriction on voluntary amendments, such that they must be filed with the mandatory response to the search report rather than up to the time of filing a response to the first examination report. These changes will therefore effectively transform the European search report into an exam report and so the overall effect should be that there is to be an acceleration of prosecution of EP applications, unless the European Patent Office begins to slow down the rate at which search reports are generated.
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UK patent application fee changes
With effect from 4 October 2009, the UK Intellectual Property Office (UK IPO) has made reductions in patent application fees for electronically filed cases. For electronically filed patent applications, the application fee is reduced from £30 to £20 if paid on filing. There is also a £10 reduction in the official fee for a request for search that is filed electronically and for an e-filed request for examination.
Additionally, it is worth noting that the UK IPO has been carrying out a consultation with a view to more radical changes to the fee system in the UK. The main changes being considered are:
- an increase in patent search and examination fees, but with larger discounts for e-filed search and examination requests
- increases to patent renewal fees, with the renewal fees for the final seven years of the patent term being most affected
- the introduction of a fee for each claim above the fifteenth
- the introduction of a fee for progressing litigation proceedings at the UK IPO where the proceedings are contested.
We will of course report on any changes that are decided in due course.
Speedier prosecution for “green” UK patent applications
An initiative has been announced that will allow patent applications with an environmental benefit to be fast-tracked through the UK patent system. The UK Government is implementing the scheme as part of its measures to tackle climate change. It is believed that the initiative will help businesses working in green technologies to get patent rights quicker and therefore potentially speed up the time taken to get products to market.
The initiative applies both to new applications and to existing patent applications. It is hoped that the prosecution time to obtain grant for applications processed under this scheme could be reduced from the average of two to three years to around nine months, as green patent applications will be given priority over other applications.
If you have an invention that relates to technology that can reasonably be described as giving rise some environmental
benefit and are interested in accelerating patent grant in the UK, please contact your usual patent attorney.
Ben Lincoln
Changes to UK applications for a series of trade marks
The UK Intellectual Property Office (UK IPO) has historically permitted a series application consisting of a number of trade marks which are essentially the same and where any differences are not significant. For example, such an application could cover the same word mark shown in capitals, in italics, and in plain lower case lettering. The number of marks that could be applied for in a series application has been unlimited and there has been no additional cost for consideration of a series of marks. Upon examination, it could be determined whether any or all of the marks being applied for within the series application were considered to be registrable; if any were not then these could be deleted. Further, if the series was not deemed acceptable, then this could be divided into separate applications for individual marks whilst retaining the original
filing date.
However, for UK trade mark applications filed on or after 1 October 2009 the following changes will apply:
- the maximum number of marks in a series will be capped at six
- there will be no additional UK IPO fee for the first and second marks in the series; however, each mark beyond the first two will incur an additional official fee of £50
- it will not be possible to divide an application on the basis of the marks in the series, although divisions based on the selected goods and services will still be possible.
An important impact of these changes is that if, upon examination, it is decided that the marks do not constitute a valid series then it will be necessary to delete marks from the application until a valid application remains. No refund of any series fee paid will be made in these circumstances. Further, if protection is required for the marks that are deleted this would have to be via a new application, which would only be entitled to its actual filing date rather than retaining the original date of filing.
Changes in the UK customs procedures
HM Revenue and Customs (HMRC) has revised the procedures which it has in place in connection with pirated or counterfeit goods. These changes place a higher burden on the rights holder.
Previously, HMRC would detain goods that were potentially counterfeit and inform the rights holder. The rights holder would then have a period of ten working days to examine the goods; if it confirmed by way of a witness statement that the goods were counterfeit, HMRC would destroy the goods, unless the importer sought to rebut the allegations.
However, the burden of proof has now shifted to the rights holder. Whilst HMRC will detain goods that it believes to be potentially counterfeit and will still inform the rights holder, the rights holder must commence legal proceedings.
In addition, such proceedings must be instigated within ten working days from the date of notification by HMRC informing the rights holder it has seized potentially counterfeit goods. For HMRC to detain the offending goods for longer than ten working days, the rights holder must either reach an agreement with the owner of the goods or, alternatively, request a ten working day extension of time. The time period for which HMRC will detain the goods will not exceed twenty working days unless court proceedings are issued. In relation to perishable goods, the period of time within which court proceedings must be issued is three working days; this cannot be extended.
If legal proceedings are not taken and/or the rights holder is not successful, then the goods will be released. Where the rights holder obtains judgement in its favour, destruction of the infringing goods must now by carried out at the expense and under the responsibility of the rights holder, whereas previously HMRC would destroy such goods.
First referral to the European Court of Justice regarding designs
For the first time, the European Court of Justice (ECJ) has been asked questions on the correct application of European law in relation to Community designs. In this regard, the Community Design Court of Spain referred a number of questions to the ECJ regarding the determination of the ownership of designs.
The relevant EU law provides that where a design was developed by an employee in the execution of his duties or following the instructions given by his employer, the right to the Community design shall vest in the employer, unless otherwise agreed or specified under national law.
In the judgement now issued by the ECJ, it has been confirmed that this provision
does not extend to commissions. Therefore the automatic transfer of rights only
occurs where there is an employment relationship of the type where the designer is
bound by a contract governed by employment law. The possibility for a nonemployed
designer to assign his rights remains, however, and such an assignment
contract should be considered under national law.
When is a European patent application “pending”?
A reference has been made to the Enlarged Board of Appeal at the European Patent
Office (EPO) relating to whether or not divisional applications can be still filed
following a refusal of a parent application. Under European practice, a divisional
application can only be filed whilst the parent case is pending.
The question asked in the referral, G1/09, is whether an application that has been refused by a decision of the Examining Division is still pending until the expiry of the time limit for filing a notice of appeal, when no appeal is actually filed.
The patent application in question was refused by the Examining Division at oral proceedings. Following the oral proceedings, but before expiry of the time limit for filing an appeal against the decision, a divisional application was filed. The decision to refuse the parent application was not appealed. The divisional application was rejected as not validly filed, on the basis that the decision to refuse the parent application at the oral proceedings took legally binding effect immediately.
The applicant appealed, submitting that the parent application was still pending
when the divisional application was filed, because an application must be considered
pending as long as the applicant has the possibility of filing an appeal.
The Board of Appeal noted that the use of the term “pending” has several different
meanings in European law. Further, it acknowledged that present practice results in
the situation where an application ceases to be pending when a decision to refuse
the application is taken by the Examining Division, but that it would become pending
again should an admissible appeal be filed.
Therefore a definitive ruling has been sought from the Enlarged Board of Appeal on
when the pending status of an application ends. We will report when the Enlarged
Board’s decision issues in due course.
Further country coverage available for European patent applicants
San Marino has joined the European Patent Convention (EPC) with an accession date
of 1 July 2009. European patent applications with a filing date on or after the
accession date will be able to designate San Marino as an EPC member state. The
EPC now has 36 member states and three extension states.
Meanwhile, the London Agreement entered into force for Lithuania, as the fifteenth contracting state, on 1 May 2009. Lithuania does not require proprietors of European patents to supply a translation of the full patent specification into Lithuanian, irrespective of the language in which the European Patent Office granted the patent, although a translation of the claims into Lithuanian is required. This law change will have no effect in practice, however, because the previous translation requirements under Lithuanian law were the same.
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