Archive for the ‘EP and UK Practice’ Category

EPO Abolishes Prior “Short” Divisional Guidelines

Monday, October 21st, 2013

This is a guest post from Mewburn Ellis of London.

The Administrative Council (the governing body of the European Patent Office) has decided at its meeting on 16 October 2013 to change the regulations regarding the deadline for filing divisional applications, specifically, to abolish the current deadlines.

From 1 April 2014, it will once again be possible to file a divisional application right up to the day before grant of the parent application.  We understand that the new rule will apply to all applications that are pending on or after 1 April 2014, even if a deadline for filing divisional applications under the current regulations had already been set or indeed had passed.  Thus, for many applications, the “window” for filing divisional applications will re-open.

There will also be an additional filing fee for second and subsequent generation divisional applications (i.e. divisionals of an application that is already a divisional application).

The EPO official announcement can be found here.  We will provide further information as it becomes available.

Case Law of the EPO Boards of Appeal Released

Thursday, October 10th, 2013

Thanks to correspondent Paul Cole of Lucas &Co. for sending us the below notice.

Students of patent law will welcome the 7th edition of this well-known compilation which went live on the EPO website on 4th October. It is now available both online in HTML here and in hardback, but not yet as a pdf. Such works grow with time: the 5th (2006) edition ran to some 746 pages including the index, the 7th (2010) edition was of 1091 pages and the present edition is of some 1200 pages.

A foreword by Wim van der Eijk, Chairman of the Enlarged Board, records that the first appeal decision, J 2/78, issued on 1 March 1979 and was followed in 1981 by 16 technical appeal decisions. The number of technical appeals has grown from 8 in 1980 to 2659 in 2012. It is recorded that over the past 34 years the boards of appeal have settled more than 34 000 cases and that more than 90 decisions or opinions of the Enlarged Board covering legal points of fundamental importance have been handed down.

(more…)

Common Patent for European Union Adopted

Wednesday, December 12th, 2012

The European Union has finally decided to adopt a common patent that will be granted in three languages – English, French and German – but will cover all of the 27 EU countries. Note that there is not a perfect overlap with the 30 EPO contracting states, e.g., Turkey, Iceland and Albania are not yet members of the EU. A common EU patent has been debated and tabled since before I entered practice in 1981. Of course, this should permit a substantial savings in translations and “local” filing fees. When I worked at Kenyon & Kenyon in the early 80’s there was considerable skepticism about new-fangled PCT applications, and many attorneys would not advise their clients to do other than file in individual “foreign countries”, sometimes not even using the EPO (which only had ten member countries then, e.g., Spain, Norway and Finland had not joined, but you could file in Liechtenstein and Luxembourg). The new patent is planned to be available some time in 2014.

An update on this agreement can be found here.

Admissibility of Disclaimers – New Lessons From The EPO Technical Boards of Appeal

Thursday, August 23rd, 2012

The following is a guest post from the 8/12 newsletter of Dr. Stefan Danner of DHS Patentanwaltsgesellschaft mbH

Last year, the EPO Enlarged Board of Appeal (EBA) handed down its decision in case G2/10 relating to the admissibility of disclaimers whose subject matter was disclosed as an embodiment (i.e. ‘positively disclosed’ disclaimers) in the application as originally filed.1

The EBA ruled that an amendment to a claim by the introduction of a disclaimer disclaiming from it subject matter disclosed in the application as filed infringes Article 123(2) EPC if the subject matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed in the application as originally filed.

Determining whether or not that is the case requires an assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application, the nature and extent of the disclaimed subject matter and its relationship with the subject matter remaining in the claim after the amendment. In other words, the examination of the admissibility of a disclaimer for compliance with Article 123(2) EPC has to be made separately for the disclaimer per se and for the subject matter remaining in the claim.

The entire newsletter can be found here.