Posts Tagged: "European Patent Office"

The sunrise period for opting out traditional European patents is planned to start on 1 September 2017. Since such opt-outs will now be done electronically through the UPC case management system, it will take less than a minute to opt out a patent and the opt-out will be on the register immediately… For pending patent applications that are close to grant, the applicants need to decide whether they want to apply for unitary effect and take the necessary preparations, including a request to the EPO not to publish the mention of the grant of the patent prior to 1 December 2017 and filing a request for unitary effect with the EPO during the sunrise period.

The number of patents granted to US companies by the European Patent Office (EPO) grew by 46.7% in 2016, the highest increase in ten years, and a new record high. Last year US companies were granted 21,939 patents by the EPO (2015: 14,955).

The problem-solution paradigm has become a cornerstone of patentability in Europe. If the invention cannot be reduced to the format of a technical solution to a technical problem, this could be a sign that either the supposed invention is non-technical, or the contribution over the state of the art is non-technical. In Europe, non technical inventions are excluded much in the same way as abstract ideas are deemed non-patent eligible in the US. Inventions that make no technical contribution are refused for obviousness. The EPC and the subsequent case law do not have a precise definition of what is technical (non-abstract) and non-technical (abstract). Nevertheless there is a growing body of case law on inventions which involve a mix of technical features and non technical features and that are refused for lack of inventive step because the non-technical features are disregarded.

A PCT application is an international application that is filed under the Patent Cooperation Treaty (PCT), which currently has 151 contracting states. A PCT application is filed with an appropriate Receiving Office within 12 months from the date of first filing (where applicable). The main advantage of a PCT application is that an applicant generally gets 30/31 months from the date of first filing to file individual National Phase applications in jurisdictions of interest. However, one must consider the costs associated with the PCT Process.

There is a plausible case that the US law on obviousness is indeed compatible with the EPO problem-and-solution approach. It could even be said that the steps of the problem-and-solution approach appear to have been inspired by US law and practice! Under present working styles, USPTO examiners concentrate on the claims and spend little or no time reading the description. If they are to initiate obviousness rejections using the problem-and-solution format they would have to change habits and consult the description to locate any effects related to the distinguishing features.

In Europe and the US, patentability depends on a showing of inventiveness that is based on similar legal requirements but practice differs substantially and the resulting patent quality varies… At the USPTO, patent applications are rejected for obviousness (35 USC §103) already in a first Office Action by an examiner and his/her supervisor… Over in Europe the examination of inventive step begins with an opinion following which the applicant is invited to comment/amend.

A few years ago, a clearly irritated client asked me why European maintenance fees were so expensive. Apparently, he had consulted the EPO schedule of fees and found my recent quote to be much higher than the government fee. The final quote in this case was more than double the government fee, which itself is not a small amount as any practitioner who prosecutes European patent applications knows. I had not realized that the annuity payment firm I was using had slowly increased its rates over the years to an unreasonable level. This started a reflection on how to minimize costs to my clients while still ensuring that the maintenance fees were paid.

The IP5 is the name given to a forum of the five largest intellectual property offices in the world that was set-up to improve the efficiency of the examination process for patents worldwide. The top five Patent Offices (IP5) have recognized this internationalization phenomenon and many directives have been introduced to facilitate cooperation between the patent offices… For example, the IP5’s Common Citation Document (CCD) application now allows access of up-to-date citation data of all five patent offices.

The European Patent Office (EPO) announced earlier today that the overall number of European patent applications filed at the EPO rose in 2015 to 160,000. This represents an increase of 4.8% compared with 2014, when the EPO saw a record high 153,000 patent applications filed… Many within the U.S. patent industry are openly talking about protection being better, fairer and more attainable in Europe, and Europe is rapidly becoming a preferred venue for litigating patent disputes. With the unitary patent and European Patent Court on the horizon, the continued self-inflicted wounds being leveled against the patent system in America makes it all but certain that the EPO will continue to experience ever more filings moving forward.

In October, Italy, one of the last holdouts to the European Unitary Patent, joined the party, leaving Spain and Croatia as the only members of the 28-member European Union (EU) opting out. As the fourth largest market in Europe in terms of population, gross domestic product (GDP) and patent validation, Italy’s reversal is a huge step forward. According to Benoît Battistelli, president of the European Patent Office (EPO), ”Italy’s accession will … render the Unitary Patent more attractive to companies from other European countries and from across the globe.”

According to WIPO data, USPTO, EPO and KIPO are major ISAs for U.S. applicants; about 94% of intentional searches have been done by these three patent offices. U.S. applicants may consider the quality of search reports and cost of search fees as the most important factors in selecting an ISA. Search fees vary by ISA, for example, EPO’s rate is relatively high $2,125, USPTO’s rate is $2,080, and KIPO is well known to provide high quality earches with a relevantly competitive cost at $1,219.