Patents4Life | Biotechnology Patent Law Blog

Newsflash! EPO announces that it does not require search results from priority applications filed at the USPTO, JPO and UKIPO

Posted on December 13, 2010 by Warren Woessner

From Marks & Clerk — This is a correction to the post of December 10th.

Late yesterday – December 9, 2010 – a decision of the President of the European Patent Office (EPO) was posted on the EPO website confirming that the search results from a priority application filed at the US Patent Office (USPTO), Japan Patent Office (JPO) or UK Intellectual Property Office (UKIPO) do not need to be filed by the applicant at the EPO to satisfy the requirements of new Rule 141(1). The Rule 141(1) requirement is automatically satisfied due to arrangements between the EPO and USPTO/JPO/UKIPO.

Under Rule 141(1), from January 1, 2011, the EPO requires the search results of a priority application to be filed at the EPO on filing of the EP application or “without delay” once the results become available. The EPO hoped to arrange automatic transfer of these documents with some patent offices so that the applicant would not need to file the documents themselves. Such an arrangement has been reached with the USPTO, JPO and UKIPO. This arrangement is effective from January 1, 2011 and so will apply to all EP applications filed under new Rule 141(1).

It is important to note that this arrangement only exists with the USPTO, JPO and UKIPO. If an EP application claims priority from one or more applications filed with an office other than the USPTO, JPO or UKIPO, the applicant will still need to file the documents under Rule 141(1). Even if a US IDS has been filed at the USPTO, it will still be necessary to file search results at the EPO if at least one of the priority applications was filed at an office other than the USPTO, JPO or UKIPO.

For the EP applications where we still need to file the search results from the priority application, we need to file the search report or exam report issued by the patent office handling the priority application. We cannot file a letter explaining the content of the search/examination report, the EPO requires the actual document issued by the patent office.

In addition to requiring the search results of the priority application, the EPO (under Rule 141(3)) can ask for prior art taken into consideration in national or regional patent proceedings and concerning an invention to which the European patent application relates. The above agreement between the EPO and USPTO/JPO/UKIPO does not affect this additional request for information. However, if this additional information is required, the EPO will send a communication setting a time limit for response.

Posted in Non-U.S. Practice | Tagged EPO, intellectual property, ip, IP law tools, marks & clerk, Warren Woessner | Leave a comment

Obligation to submit search results to the EPO as of January 1, 2011

Posted on December 10, 2010 by Warren Woessner

Submitting search results of priority applications to the EPO will become obligatory as of January 1, 2011

The Implementing Regulations of the European Patent Convention will change as of January 1, 2011, which apply to European patent applications and international applications filed on or after that date. Thus, the new Rules do not apply to applications that have been filed prior to January 1, 2011.

According to amended Rule 141(1) EPC, an applicant claiming priority has to file a copy of the results of any search carried out by the Patent Office(s) with which the previous application(s) was/were filed. This copy has to be filed together with the European patent application or by entry into the European phase of a PCT application, or without delay after such results have been made available to the applicant. It has not yet been determined by the European Patent Office what exactly “without delay” means, but we recommend to provide the search results as soon as possible and within approximately two weeks after they have been made available to the applicant.
This obligation applies to search results in any form, i.e. as part of the search but also as part of an office action issued by the Patent Office with which the previous application was filed. This obligation persists as long as the European patent application is pending.

In view of the new rules, when providing us with instructions to file a European or international patent application with the EPO, claiming priority of an earlier application, please provide us with a copy of corresponding search results once these are available or with a statement that such search results are not available. If search results are available, please provide a copy of the corresponding official document issued by the Office of first filing. A translation of the search results or copies of the prior art cited therein is not required.

If no search results have been filed by the applicant, the EPO will invite according to new Rule 70b (1) the applicant to file, within a period of two months, the copy or a statement that the results of the search are not available. If the applicant fails to reply in due time to such invitation, the European patent application shall be deemed to be withdrawn.

Furthermore, please note that the EPO intends to set up an electronic environment for directly accessing these search results so that applicants claiming the priority of an application filed with an National Patent Office for which such an electronic system is in place will be exempted from the obligation to file a copy of the search results under Rule 141 (1) EPC. We expect that at least the countries USA, Japan and Korea will factually be exempted from this new provision. Unfortunately, respective decisions have not been published yet, but are expected to be published early next year.

Published with permission of

Eisenführ, Speiser & Partner – Patentanwälte Rechtsanwälte

www.eisenfuhr.com

Posted in EP and UK Practice | Tagged biotechnology law, EPO, intellectual property, ip, IP law tools, Warren Woessner | Leave a comment

Supreme Court Grants Cert. in Microsoft v. i4i.

Posted on November 29, 2010 by Warren Woessner

Today, the Supreme Court granted Microsoft’s petition for cert. in Microsoft v. i4i. Microsoft asked the Supreme Court to answer the question of whether or not a defendant who asserts patent invalidity based on art not considered by the Patent Office must still overcome the presumption of validity by “clear and convincing evidence” or whether some lower standard of proof, e.g., preponderance of the evidence, should apply.

Early in its history, the Federal Circuit established the clear and convincing evidence standard as the burden of proof required for a defense based on invalidity of the asserted patent, and has adhered to it for more than twenty-five years. The best that defendants have had to work with is language in some decisions to the effect that, while the burden of proof is not lowered in cases in which the asserted art was not before the Examiner, it may be easier for the defendant to meet its burden in such cases.

Over the years, it has become conventional “wisdom” that, if the art was cited to or by the Examiner, it is of no value in an invalidity defense. For years, I have had to explain to litigators that art before the Examiner will still be considered, and can in fact be relied upon to invalidate a patent, particularly when the Examiner misunderstood the content of the art, and/or the attorney mischaracterized it.

However, even with the help of seasoned appellate teams, it is difficult to envision a decision on the question that will be as nuanced as both prosecutors and litigators would wish. All prior art is not created – or presented – equally. In lowering the bar, how much weight should (semi-)cumulative art be given and, after all, when is art that is not identical in text so cumulative that it is entitled to no such weight? And how “before” the Examiner must the art be? Is a full paper less weighty if the abstract has been cited? Is a publication cited in an IDS in the parent application entitled to more weight than a publication cited three applications back in a chain of CIPs and divisionals? What about art that was before an earlier Examiner who leaves the PTO but was not re-cited to the replacement Examiner?

No doubt this decision will be a “game-changer,” but the design of the field we will be playing on in the future is back on the drawing board.

Posted in Claim Interpretation | Tagged biotechnology law, Federal Circuit, i4i, intellectual property, ip, IP law tools, microsoft, Patent Law, patent strategy, patents, Supreme Court, Warren Woessner | Leave a comment

Bayh-Dole Act Turns Thirty – Dec. 1st Fete Planned

Posted on November 18, 2010 by Warren Woessner

With major litigation looming over invention ownership rights affected by the Bayh Dole Act (see my post of November 3rd on Stanford v. Roche), the link below is to a site created by AUTM and a number of other organizations concerned with university tech transfer. The site provides some good background on the history and the impact of the Act. A House resolution honoring the Act has been introduced and a celebration is planned in DC for December 1st.

Since 1980, thousands of companies (not all still with us) have been created in the U.S. due to patenting and licensing activities mandated by the Bayh-Dole Act, and hundreds of millions of dollars in licensing revenue have flowed into universities from patenting and out-licensing technology to established corporations (like big pharma) as well as to start-ups that go the distance (often to take-over by a larger med tech company). I emphasize life sciences commercialization because more than 80% of university/institutional patenting is in this area. Not bad for an “unfunded mandate.” A recent study that was published in Nature Reviews-Drug Discovery, looked at FDA approvals between 1997 and 2008 and found that 24% of approved drugs originated from university research. All had been licensed to pharma or biotech companies. (Find story here.)

On a more personal note, the first two IP talks I ever did were for the Chemistry and the Law Division of the American Chemical Society at National Meetings in 1987 and 1988. The first was entitled, “Selected Aspects of Patent Law Affecting the University Inventor,” and the second was “”Technology Transfer: From Non-Profit Research to Profit.” I expected a huge audience of professors eager to learn how to commercialize their discoveries but I was ahead of my time, and the meager audience was mostly lonely patent attorneys looking for clients and company. I also spoke at AUTM for the first time in 1989, when it was still the “Society of University Patent Administrators.” I was part of a plenary session and there were probably 50 people in the room, but it was a start, both for me and for university tech transfer. ‘Happy, happy birthday, baby.” You’ve come a long way.

AUTM b-d30