Archive for the ‘EP and UK Practice’ Category

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.

From The EPO: Oral Proceedings/Interviews Before Examining Division Can Be Held Via Videoconferencing

Thursday, June 14th, 2012

This is a guest post from Lynnea Fedyk, legal process assistant at Schwegman, Lundberg & Woessner, P.A.

Attached are two documents of particular interest regarding Oral Proceedings by video conference and submission of email during video conference.

Should you like to view the complete listing of contents in the Official Journal – May 2012, please go to

Should you like to view the complete EPO newsletter, please go to

 Oral Proceedings by Video Conference

Interviews and Oral Proceedings – Submission of email

Patentability Of Surgical Methods – New Insights From The EPO

Friday, May 18th, 2012

This is a guest post from Dr. Stefan Danner
Patentanwalt/German Patent Attorney, European Patent Attorney

In its previous decision G1/07, the EPO Enlarged Board of Appeal (EBA) shed new light on the patentability of surgical methods, particularly those forming part of diagnostic methods. Based on this ruling the range of patentable subject matter is now limited in that methods that are surgical by nature but not necessarily by purpose are not deemed eligible for patent protection according to Article 53(c) EPC[1]