DEVELOPMENTS IN IP
- Referral regarding patentability of software
- EPO fee changes - 1 April 2009
- European Patent Office update
- Speedier grant of patent applications
- UK Intellectual Property Office opts out of Community trade mark searches
- Possibility of changing the language of the proceedings in Europe
- Myriad’s breast cancer patent maintained in limited form
Referral regarding patentability of software
The President of the European Patent Office (EPO), Alison Brimelow, has caused some surprise in the European patent profession by making a referral to the Enlarged Board of Appeal (EBA) to try and gain more certainty as to which inventions should be considered to be software as such. This is important since under European law no patent can be granted for a computer program “as such”.
Currently, under European law, for an invention in this field to be patentable it must solve a technical problem with a technical solution and there is a significant body of case law that has built up supporting this approach. This case law started with the Pension Benefits case (T931/95) and also includes the Comvik (T641/00) and Hitachi (T258/03) decisions. The EPO has not attempted to try and define what is meant by “technical” and has relied on the body of case law to illustrate what is meant by this term.
However, because the EPO is not bound by its own appeal decisions, it can be argued that some of the decisions from the last 30 years contradict one another and that there has been a shift in the fundamentals of that case law. Indeed, the body of case law has come under criticism from both the UK and German courts. It is in view of this background that Alison Brimelow has made the referral. Nonetheless, the EPO President is only entitled to refer a question to the EBA if there is a contradiction in the case law and it is conceivable that the EBA could decide that there is no contradiction and refuse to hear the case. This has happened previously and some commentators argue that it may happen again.
Many practitioners had felt that the current case law had reached a status quo and it was possible to advise as to what was and what was not patentable before the EPO. However, the logic used by the EPO to reach its decisions as to what is patentable is complex and perhaps of questionable legal basis. Thus, whilst the EPO gives what is generally felt as the 'right' answer it perhaps does so by dubious logic.
It is worth noting that the referral could freeze patent applications in this area for two or three years, since EBA decisions are often slow to issue and this case is likely to be one of the more contentious that the EBA hears. When the European Union discussed software patenting issues several years ago there was significant lobbying from both pro and anti patent bodies.
Assuming that the EBA decides a decision is warranted, the answer to this referral will provide clarity at the EPO but should also provide guidance in European countries that are members of the EPO system, since there should generally be consistency with the EPO. However, there is potential for significant delays in the meantime.
EPO fee changes - 1 April 2009
A number of fee changes took effect on 1 April 2009 in relation to European patent applications. However, it is worth noting that these changes in the fee system will only affect European patent applications filed on or after 1 April 2009, either as direct European filings or as European regional phase applications from a PCT application. Existing applications will progress under the previous fee regime.
The first change relates to claims fees. Under the old fee system, the claims fee charged by the European Patent Office (EPO) was 200 Euros for each claim above 15. However, with effect from 1 April 2009 a new higher tier of claims fee has been introduced, with the claims fee for each claim above 50 becoming 500 Euros. This steep fee for applications with high numbers of claims may even make it worth considering splitting subject matter across two applications. However, given that the current claims fee levels already make having anywhere close to 50 claims in a European patent application prohibitive for many applicants it is thought that this change will not significantly affect many decisions.
Secondly, the EPO charges an additional page fee of 12 Euros for each page above 35 and under the old system this fee was due as part of the grant procedure. Therefore it was only paid on the pages of the application that were actually being granted. However, with the 1 April 2009 changes this fee is due on filing.
Finally, there has been a change in relation to designation fees. Under the old system the fee charged by the EPO was 85 Euros per country but with a cap at seven fees, which meant that to designate all EPO countries 595 Euros is payable. Under the new fee schedule a flat designation fee has been introduced, of 500 Euros; this is payable regardless of the number of EPO countries designated. This means a slight cost saving for applicants who normally designate six or more countries.
If you would like specific advice regarding these issues, please contact your usual patent attorney.
European Patent Office update
Macedonia has joined the European Patent Convention (EPC) with an accession date of 1 January 2009. Macedonia was previously an extension state of the EPC. The accession will not be retroactive and therefore only European patent applications with a filing date on or after the accession date will be able to designate Macedonia as a full member state. The EPC now has 35 member states and three extension states.
It is also worth noting that on 10 December 2008 the European Patent Office (EPO) published European Patent Publication No: 2 000 000; the two millionth patent application to be published. The first European patent application was filed at the EPO in 1978 and it took 22 years for the one millionth application to be published in 2000. In contrast, the second million publications have occurred in the last eight years, showing a sharp increase in the number of applications passing through the EPO.
Speedier grant of patent applications
We reported in our Autumn 2007 and Spring 2008 Newsletters that accelerated examination of UK, Japanese and US patent applications for the same invention was possible, due to pilot cooperation agreements between the respective national patent offices. Broadly, the agreements allow patent applicants who have received a favourable examination report from one of those three national offices to request accelerated examination of a corresponding patent application before one of the other cooperating patent offices. We are pleased to report that these arrangements are to continue for the time being, after which a detailed review of the scheme by the respective offices will be conducted.
A similar agreement has also been established between the European Patent Office (EPO) and the US with effect from September 2008. In essence, this means that, provided the European and US applications meet the qualifying criteria, a favourable examination report received from one of those offices can be submitted to the other office, and the other office will swiftly examine the application taking that favourable examination report into account. For those US and European patent applications which qualify for the scheme it will mean that applications could proceed to grant more quickly and in a more efficient manner. It is, however, worth noting that at the moment the scheme only applies for directly filed national applications and therefore does not cover applications that have been filed via the International (PCT) system.
Please contact your usual patent attorney if you wish to discuss whether any of your patent applications could benefit from these arrangements.
UK Intellectual Property Office opts out of Community trade mark searches
The UK, along with Ireland, Portugal and Sweden, no longer conducts national searches as part of the Community trade mark application process.
At present, applicants can pay an additional fee in order to obtain searches from those national offices which offer this service. These now comprise the following 12 countries: Bulgaria, Czech Republic, Denmark, Greece, Spain, Lithuania, Hungary, Austria, Poland, Romania, Slovakia and Finland. The value of the searches therefore continues to diminish.
Possibility of changing the language of the proceedings in Europe
A reference has been made to the Enlarged Board of Appeal, as G4/08, to obtain definitive guidance as to whether it is possible to switch the official language of the proceedings before the European Patent Office (EPO).
A European patent application must be prosecuted in one of the three official languages of the EPO: English, French or German. When the application is filed directly, the application must be filed in one of these three languages, or else a translation into one of these languages must be filed shortly afterwards. For a European application that is a regional phase filing from an International PCT application, a translation into English, French or German must be submitted on filing the regional phase application if the International application was not already in one of those three languages.
The application that caused the referral was derived from an International PCT application filed in French. The attorneys handling the European regional phase application filed a translation into English and wanted English to become the language of the proceedings. The EPO indicated that there was no basis for changing the language when the PCT application was already in one of the EPO’s three official languages. However, this raises the question of whether not allowing a translation to be filed, and the language to be changed, is discriminatory against an applicant who has filed a PCT application in one of English, French or German, as compared to an applicant who has filed a PCT application in any other language, who could select any one of these three languages he wished when filing in Europe.
Article 14 (3) EPC indicates that the official EPO language in which the European patent application is filed, or into which it is translated, shall be used as the language of the proceedings before the EPO, unless otherwise provided by the Implementing Regulations. Therefore the issue appears to be whether this wording permits a translation to be filed at will, or whether a translation into an EPO language, which then becomes the language of the proceedings, is only permitted if the application was not already in an official language of the EPO.
We will report once a decision is issued on this matter in due course.
Myriad’s breast cancer patent maintained in limited form
In a decision from the Technical Board of Appeal at the European Patent Office (EPO), the seven year battle surrounding Myriad’s BRCA1 breast cancer patent EP0699754 has finally been resolved. The BRCA1 gene is strongly associated with hereditary forms of breast and ovarian cancer in women.
The patent was initially granted in 2001 containing claims directed to a method of diagnosing a predisposition for breast and ovarian cancer. The patent was later revoked during Opposition proceedings in 2004. The patentee appealed the decision.
In November 2008 the Technical Board of Appeal overturned the decision of the Opposition Division and allowed the patent to be maintained, albeit in an amended form. The patent now protects diagnostic methods for the detection of a predisposition for breast and ovarian cancer caused by a frameshift mutation in the BRCA1 gene. It does not contain claims directed to the BRCA1 gene itself or to mutated forms thereof.
There is no further possibility to contest this decision at the EPO. The only route now open to opponents of the patent is to attack the patent before national European courts.
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