Posts Tagged: "European Patent Office"

The European Patent Office (EPO) recently published its Guidelines for Examination 2022, which come into force on March 1. Compared to previous years, the volume of changes is much smaller, and this witnesses the effort by the EPO in past years to arrive at a more stable text of the Guidelines, particularly concerning the software patentability and biotech sections. Yet some changes have been made, mainly to software patentability guidelines, as well as to other important sections, such as partial priorities and amendments to the description. Continuing the trend of past years, the Guidelines continue to be enriched with helpful examples.

Earlier this year, the European Patent Office (EPO) updated some of its Guidelines for Examination in a way that potentially could affect U.S. patent litigation. These Guidelines instruct European patent examiners (and the public) on how the patent prosecution process works—much like the United States Patent and Trademark Office’s (USPTO’s) Manual of Patent Examining Procedure. For example, the Guidelines detail what form a patent application must be in, what happens during a prior art search, and perhaps most importantly, what should be included in an application. Guideline F-IV 4.3 particularly focuses on the form, contents, and clarity of the claims.

In Part I of this series we discussed how patent portfolio managers should be careful when generating company-owned prior art or reviewing competitor prior art, and how a patent litigation or licensing campaign can be significantly hamstrung based on how the United States and Europe consider intervening prior art. In Part II, we examined software patents with U.S. and European Patent (EP) family members. Part III builds on Parts I and II and focuses on the value of examiner interviews in the U.S. and Europe.

This July has been a landmark month for the commercial space sector thanks in large part to the determination of two tech billionaires: Richard Branson, business magnate and founder of the Virgin Group; and Jeff Bezos, the former CEO of e-commerce titan Amazon.com. Both of these icons of business entrepreneurship reached the outer limits of Earth’s gravity to slip into space for a brief moment in recent weeks—Branson in the VSS Unity, owned by his Virgin Galactic spaceflight company, and Bezos in the New Shepard craft developed by his Blue Origin firm. The successful spaceflights for both Branson and Bezos are breathing life into the nascent space tourism industry, as many others with the wealth to pay for a seat to outer space are lining up for the opportunity.

Oral proceedings before the EPO Boards of Appeal can be held by videoconference, even without the consent of the parties, during a general emergency, according to a July 16 decision by the EPO’s Enlarged Board of Appeal (G1/21). The question about videoconferencing was referred to the EBA in March by a Technical Board of Appeal in Case T-1807/15. The EPO introduced hearings by videoconference (generally held via Zoom) last year as a result of the pandemic and travel restrictions. Since January 2021, some oral proceedings have been conducted without the consent of the parties. The EBA, which comprises members of the Boards of Appeal and judges from EPC member states, was asked to rule on whether this was compatible with the right to oral proceedings as enshrined in Article 116(1) of the European Patent Convention. The EPO claims that videoconference hearings are necessary to manage the workload and ensure efficient delivery of justice during the pandemic. They also mean that parties throughout the EPC’s 38 member states can participate on equal terms, without having to travel to Munich or The Hague.

A decade of consecutive, annual growth in patent application activity worldwide came to a sudden halt in 2020. The pandemic has upended many aspects of business, including patent activity. Filings at the European Patent Office (EPO) may have dipped just 0.7% last year but findings from the World Intellectual Property Organization (WIPO) revealed a 3% drop in filings globally. While broad insights can be extracted from analyzing patent filing activity, as revealed by the EPO’s latest Patent Index, increasingly, organizations are looking for more. With the complexities of today’s business environment exacerbated by the pandemic, businesses seek deeper intelligence and the ability to connect different data points that can translate into actionable insights that support faster, better decisions.

Last week, the European Patent Office (EPO) announced six U.S. researchers as finalists for the European Inventor Award 2021. The EPO began the prestigious European Inventor Award in 2006 to honor individual and teams of inventors in five categories, i.e. Industry, Research, SMEs, Non-EPO countries and Lifetime achievement. The finalists and winners are selected by an independent jury of experts in the fields of business, politics, science, academia and research. In addition, a Popular Prize is awarded based on a public vote wherein the public selects a winner from among 15 finalists through online voting. U.S. researcher Gordana Vunjak-Novakovic was nominated for a lifetime achievement award for devoting her career to “developing an ex vivo tissue engineering technique for more precise tissue cultivation.” The remaining U.S. finalists were nominated in the “Non-EPO countries” category. In particular, Kim Lewis and Slava S. Epstein were nominated for their development of a device for separating and incubating single strains of bacteria in nature, Sumita Mitra was nominated for pioneering use of nanotechnology in dentistry, and Bo Pi and Yi He were nominated for developing the first fingerprint sensor capable of detecting both a fingerprint’s pattern and the presence of blood flow.

On April 7, 2021, the European Patent Office (EPO) Opposition Division (OD) issued a comprehensive written decision in the Opposition by Gilead Sciences, Inc. against NuCana plc’s European Patent No. B-2 955 190, upholding amended compound claims that include Gilead’s blockbuster hepatitis C drug, Sovaldi (sofosbuvir). The claims were upheld over various arguments made by Gilead, including an assertion that the NuCana patent did not teach the skilled worker how to make the nucleoside component of Sovaldi (which is a nucleotide phosphoramidate). Gilead alleged, as it did in the myriad of global Idenix litigation cases, that a skilled person in 2003 who tried to make the nucleoside of Sovaldi “would be required to undertake extensive experimentation, if indeed he would be able to succeed at all. This represented an undue burden.”

On March 16, the European Patent Office (EPO) released the Patent Index 2020, which gives the public a snapshot view of the filing activities going on at the EU’s patent granting agency during the past year. Total patent application filings declined only slightly during 2020 to just over 180,000 patent applications, a reduction of 0.7% compared to the EPO’s 2019 patent filing totals. Despite a 4.1% decrease in patent application filings at the EPO, the United States still held the top spot among individual countries with 44,293 EPO patent filings. Patent application filing totals also dropped in Germany (down 3% to 25,954 filings) and Japan (down 1.1% to 21,841). The United States, Germany and Japan were ranked first, second and third, respectively, in the EPO Patent Index 2020.

The Enlarged Board of Appeal of the European Patent Office (EPO) recently published its decision No. G1/19 on patentability of simulations. There was great anticipation for such a decision, after landmark decisions 641/00 (COMVIK) and G3/08, mainly due to the ambiguous formulations of the questions of law to the Enlarged Board of Appeal. The result is “business as usual”, but several clarifications might be useful in the future. In the following, we first summarize the questions of law, the clarifications of the Enlarged Board of Appeal and then infer possible consequences for applicants and practitioners.

As discussed in Part I of this article, the European Patent Office (EPO) recently published its Guidelines for Examination 2021, which came into force on March 1. In the previous article, we detailed changes affecting computer-implemented inventions and with respect to procedural matters. Here, we will address the Guidelines’ changes for biotech. In addition to some specifications regarding the interpretation of terms relating to amino and nucleic acid sequences and the definition of the concept of “therapy” and of the products that can be claimed in view of their new medical use, the main additions that have been made to the part of the Guidelines relating to biotechnological inventions concern the exclusions from patentability, and in particular the ineligibility of inventions relating to plants or animals and human embryos. A full section has also been added relating to the patentability of antibodies.

The European Patent Office (EPO) recently published its Guidelines for Examination 2021, which came into force on March 1.

The trend towards an accurate and detailed explanation of substantive and formal requirements is maintained, keeping up to speed with the recent case law. The changes are limited but helpful, and this witnesses the effort by the EPO in past years to arrive at a stable text of the Guidelines, particularly concerning the software and biotech patentability sections.

The latest in a series of reports by the European Patent Office (EPO) and European Union Intellectual Property Office (EUIPO) studying IP-intensive industries and their contribution to economic performance and employment in the European Union has found that companies owning at least one patent, registered design or trademark generate higher revenues per employee than companies that do not own IP rights and pay higher wages on average than other companies. The EPO-EUIPO report is titled “Intellectual property rights and firm performance in the European Union” and builds on research conducted in 2013, 2016 and 2019 regarding the contribution of IP-intensive companies to the EU economy, as well as a 2015 EUIPO study based on data from 12 Member States. The latest report analyzes over 127,000 European firms and compares the economic performance of firms that own IPRs with those that do not.

The European Patent Office (EPO) issued a press release and 75-page study on December 10, titled “Patents and the Fourth Industrial Revolution – the global technology trends enabling the data-driven economy,” which examined global trends in innovation in fourth industrial revolution (4IR) technologies. As used in the study, 4IR denotes “the full integration of information and communication technologies (ICT) in the context of manufacturing and application areas such as personal, home, vehicle, enterprise and infrastructure,” and it marks a “radical step towards a fully data-driven economy.” The study examined international patent families (IPFs), i.e., inventions for which patent applications have been filed in two or more patent offices, related to 4IR worldwide between 2000 and 2018. The study revealed that, between 2010 and 2018, global patent filings for 4IR technologies, including smart connected objects, Internet of Things, Big Data, 5G, and Artificial Intelligence (AI), grew at an average annual rate of almost 20%, which is nearly five times faster than the average of all technology fields.