The European Patent Convention (EPC) has been revised for the first time since its inception in 1973. The revised version of the Convention, known as EPC 2000, will come into force on December 13, 2007.These changes will bring the EPC into line with recent developments in International Law. These changes will affect European patent applications both before and after grant.
Filing Requirements
The minimum requirements for obtaining a filing date have been relaxed. It is now sufficient to provide the European Patent Office with: i) an indication that a patent is sought; ii) information identifying the applicant; and iii) a description or a reference to a single previous application which will form the description. If a reference to a previous application is relied on, the applicant must supply a copy of the previously filed application within two months of the filing date and, where the previously filed application is not in an official language of the European Patent Office, a translation.
Furthermore, it will no longer be necessary to provide any claims in order to obtain a filing date. If the application is filed without claims, but satisfies all other requirements for obtaining a date of filing, the applicant will be requested to provide claims within a set term. However, the claims cannot be broader than the original disclosure.
Claiming Priority
The provisions on priority have been extended. In particular, priority may be claimed not only from an application filed in any State party to the Paris Convention, but now also from an application filed in any World Trade Organization state.
A further change to the priority provisions is a relaxation of the time limit for claiming priority. Under new Rule 52 EPC it will be possible to add or correct a priority claim up to 16 months from the earliest priority date claimed.
Prior Art Effect of Prior-Filed European Patent Applications
From the date that EPC 2000 comes into force, there will be an amendment to the novelty provisions of Article 54 EPC. From this date, all Contracting States will be deemed to be designated in an application, and it will not be a requirement that designation fees have been paid for a given contracting state in order for a European patent application to have a prior art effect. Thus, the contents of all European patent applications as filed, which have an earlier filing date, but a later publication date, will be considered relevant to the novelty of a European patent application. It should be noted that this revision will not have a retroactive effect.
Further Processing
Further processing (Article 121 EPC) is a procedure permitted under the EPC which allows an applicant, simply by virtue of payment of a fee, to reinstate an application deemed withdrawn when a deadline had been missed. The particular deadlines for which further processing was available were quite restricted. Under EPC 2000 the provisions for further processing have been significantly broadened and the new provisions will apply to any time limit vis-à-vis the European Patent Office, not just those set by the European Patent Office.
A number of time limits are specifically excluded under new Article 121 EPC, these include: the time limits for filing a petition for review by the Enlarged Board; the six month grace period for paying the renewal fee with surcharge; making a declaration of priority; the correction of deficiencies in claiming priority; requesting re-establishment of rights; requesting an appeal; and the one year priority period.
Re-Establishment of Rights
The circumstances where it is possible to make a formal application for re-establishment of rights (Article 122 EPC), in the absence of the availability of further processing, are also extended. Re-establishment of rights is now possible in respect of the priority year. The request for re-establishment must be filed within two months of the end of the priority year.
The time limit for requesting re-establishment is extended in respect of failure to pay a renewal fee. In particular, the six-month grace period for paying the renewal fees is not to be deducted from the one year grace period for requesting re-establishment of rights (new Rule 37(4) EPC).
It should be noted that the evidential burden on the applicant for re-establishment remains the same and the applicant still needs to show that all due care has been taken.
Consideration of Unity by the European Patent Office
Previous Rule 112 EPC has been replaced by new Rule 164 EPC. This has removed the opportunity to have further searches undertaken on PCT applications upon entry into the European regional phase. The opportunity to have multiple inventions searched within the framework of one application will now be limited to the international phase. On entry into the European phase, non-unitary subject matter should be deleted or consigned to a divisional application.
Medical Use Claims
A new Article 54(5) EPC has been introduced which effectively formalizes the patentability of second and subsequent medical uses without requiring “Swiss-type claiming”. Therefore, under EPC 2000, second and further medical use claims may be of the form “substance or composition X for use in the treatment of disease Y.”
Transitional Provisions
Transitional provisions have been introduced to ensure that, wherever possible, the revised provisions will be applicable to pending European patent applications and granted European patents.
Limitation (new Article 105a EPC 2000)
Under EPC 2000, it will be possible for an applicant to limit the claims of a European patent centrally at the European Patent Office (new Article 105a EPC). This is a very significant change, as there is no provision for post-grant amendment under the current version of the EPC other than in the course of opposition proceedings.
Under the existing law, an applicant who wishes to limit aEuropean patent has to make use of national provisions in the designated states where they are available. As the procedure is governed by national law, the process can be time-consuming, costly and complex. Moreover, certain countries, such as France, have no provision for post-grant amendment under their national law. Other countries, such as the UK, only allow post-grant amendments in certain circumstances.
The EPC 2000’s new limitation procedure is intended to be quick and straightforward. No examination of the patentability of the claims will be carried out. The European Patent Office will restrict its examination to whether the requested limitation actually narrows the scope of the claims, whether the amendments are clear (Article 84 EPC) and whether they have basis in the original application as filed (Article 123(2) EPC). Broadening amendments that extend the scope of the claims beyond the scope of the claims as granted will not be allowed (Article 123(3) EPC). A major advantage for the patent proprietor is that there is no provision for a third party to oppose an application for limitation.
Once the European Patent Office decides to allow a request for limitation, the limitation will have a retroactive effect from the date of grant of the patent.
The limitation procedure is available for all European patents, including those that have already been granted at the time EPC 2000 comes into force. A request for limitation may be filed at any time after the patent is granted. However, if a request for limitation is filed while an opposition is pending, the opposition proceedings will take precedence. If limitation proceedings are pending when an opposition is filed, the limitation proceedings will be terminated.
EPC 2000’s new post-grant limitation procedure is expected to provide a useful mechanism for patent proprietors to limit the claims of their patents to distinguish from newly discovered prior art. This will allow patent proprietors to strengthen their patents from a validity perspective prior to enforcement proceedings in the national courts.
Limitation in National Proceedings (Article 138(3) EPC 2000)
EPC 2000 also provides patent proprietors with the right to limit the claims of their Euro-National patents in validity proceedings before national courts (new Article 138(3) EPC).
This new provision provides patent proprietors with a useful tool for improving their position or even circumventing nullity or invalidity proceedings brought against their patents in the national courts.
Review of Board of Appeal Decisions (Article 112a EPC 2000)
Under the current provisions of the EPC it is not possible for an adversely affected party to appeal a decision by a Board of Appeal of the European Patent Office. This will change under EPC 2000. In particular, under new Article 112a EPC 2000, it will be possible for any party adversely affected by a decision of the Board of Appeal to file a petition for review by the Enlarged Board of Appeal.
Such petitions, however, may only be filed under specific circumstances (Article 112a(2) EPC 2000). These include situations where a member of the Board of Appeal took part in the decision despite having a personal or previous interest in the case, or where a criminal act took place that may have had an impact on the Board of Appeal’s decision. Petitions may also be filed in cases where a fundamental procedural defect or violation took place (e.g. if the decision of the Board of Appeal was not based on grounds or evidence on which the parties have had an opportunity to present their comments (Article 113(1)EPC)).
Protocol to Article 69 EPC
Article 69 of the EPC indicates that the extent of protection is determined by the claims. The Protocol”to Article 69 indicates that the scope of protection should combine a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties. The “Protocol” now has an additional article indicating that due account shall be taken of any element which is equivalent to an element specified in the claims.
In the UK case of Kiren & Amgen (RPC 2004, UK House of Lords) the following test was formulated in determining the construction of the claims:
“What would a person skilled in the art have understood the patentee to have used the language of the claim to mean?”
Although a 2004 case, the test was formulated in the knowledge of the new second limb to the Protocol”and so reflects the UK Courts view of how the protocol should now be applied. It remains to be seen how other European Courts apply the amendment to the protocol.
More at Boult Wade Tennant
Posted December 19th, 2007 by Stephen Albainy-Jenei in
EPO News
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Substantial Cost Reductions for Validating European Patents
The cost of obtaining patent protection in Europe is set to reduce significantly early next year thanks to the imminent implementation of the London Agreement.
At present a European patent application must be prosecuted before the European Patent Office in any one of the three official languages, English, French or German and, on grant, translations of the claims of the other two languages must be filed to be published with the specification as granted.
This procedure will remain as before. In order to validate the European patent in the designated states, it is necessary to file a translation of the entire specification in an official language of the national patent office.
With the implementation of the London Agreement, this will no longer be necessary in a number of countries. Instead, assuming that the application is in English, only the following translations will be required for the countries indicated which have signed the Agreement:
(a) United Kingdom, France, Germany, Switzerland, Liechtenstein and Monaco: No further translations required.
(b) Iceland, Latvia, Netherlands and Slovenia: These countries may require:
(i) a translation of the claims only into their national languages;
(ii) the entire specification to be available in one of English, French or German (most countries have opted for English).
Note: Sweden and Denmark are expected to join the Agreement in the foreseeable future. Other countries may later.
Since the validation stage represents a large proportion of the total cost of obtaining a European patent, the implementation of the Agreement will result in major savings.
Posted December 19th, 2007 by Stephen Albainy-Jenei in
EPO News
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4 Comments »
patent troll (PAT.unt trohl) n. A company that purchases a patent, often from a bankrupt firm, and then sues another company by claiming that one of its products infringes on the purchased patent.. —adj.
In a follow-up to our previous story about lawyer Raymond Niro, from the plaintiffs’ IP firm Niro, Scavone, Haller & Niro, and his offer of $5,000 “to anyone that can provide information that leads me to the identity of Troll Tracker,” Niro has responded with what he felt were some misconceptions in the story.
Niro, described as the Original Patent Troll, is interested in learning the identity of the anonymous author of the blog Patent Troll Tracker, a blog written for the stated purpose “to bring to light the extreme problems our US patent system is having with patent trolls: corporations that make no products, but do nothing but acquire patents to sue and make revenue.”
Troll Tracker insists that he (or she) is “Just a lawyer, interested in patent cases, but not interested in publicity.”
A patent troll is the term coined in 2001 by Intel Corporation assistant general counsel Peter Detkin to characterize Niro and his client TechSearch LLC when Intel was defending a patent suit against them. Ironically, Detkin is now considered by some to have become a troll himself.
Niro responds:
Please let me correct a couple of misconceptions in your blog.
1. I do not want to find out the name of the Troll Tracker in order to sue for patent infringement; rather, I want to know his name to expose him, so that he can’t hide behind anonymity and may ultimately be held accountable for what he says.
2. Acacia does not own the patent in question. It is owned by Global Patent Holdings who has no connection to Acacia.
3. Anyone that operates a website runs the risk of infringing Global’s patent if (as we believe) that patent covers the manner in which JPEG images are displayed on a website. Troll Tracker is no exception.
4. As for silencing critics, I doubt that is possible. But anyone should be held responsible for what they say and have the courage to express their views by putting their names on whatever it is they publish.
In addition, Niro mentioned that he has raised the reward to $10,000 for information leading to the identity of the Troll Tracker. “It seems to me if you really have anything truthful to say, you are not afraid of identifying yourself,” Niro stated.
While Niro frames this as a reward, not a bounty, the meat of the issue is that patent infringement is a high-stakes game. Global Patent Holdings has now filed three patent lawsuits against 16 companies for infringment of claim 17 of the ‘341 patent by downloading responsive data, including audio/visual and graphical presentations, such as JPEG images and/or other compressed data, on their web sites.
According to IP Law 360, Global Patent Holdings has proposed, for companies that sell products through their websites, a fully paid-up royalty of up to $250,000 for companies with annual revenue of between 0 and $50 million (are they asking for 0.5% of the company’s present annual revenue?). For companies of (annual?) revenue more than $51.2 billion, the proposed royalty is $15 million (closer to 0.03%).
For companies that do not sell products through their websites but have compressed images on those sites, Global Patent Holdings is seeking half the amount - $125,000 and $7.5 million.
Many people consider a patent troll to be anyone that doesn’t produce a product or service themselves but instead makes money from licensing the rights to companies already making products. Under that definition, I suppose Thomas Edison would be a troll.
See the earlier story here.
Posted December 12th, 2007 by Stephen Albainy-Jenei in
Patent Reform,
Current Affairs
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13 Comments »
Rep. Henry Waxman (D-Cal) introduced the Non-Prescription Drug Modernization Act of 2007 (H.R. 4083) legislation in the House. The bill was co-sponsored by Rep. Tom Allen (D-ME) and was referred to the House Energy and Commerce Committee.
The bill will “amend the Federal Food, Drug, and Cosmetic Act to provide for the amendment or repeal of monographs, to expand the Food and Drug Administration’s (FDA) authority to regulate drug advertising.”
The Act is a reaction to a recent FDA advisory panel recommendation that the FDA should ban OTC cough and cold medications for children under the age of six. Under current law, if the FDA wants to follow its committee’s recommendations, the Agency would have to go through a lengthy rulemaking process that could take years to complete.
The Non-Prescription Drug Modernization Act would give the FDA the authority to act quickly to remove unsafe or ineffective OTC drugs, by allowing the Agency to revoke authorization to market such drugs without a lengthy rulemaking process.
The Act would allow FDA to bypass these procedures and amend or repeal a monograph in a more timely fashion in two circumstances:
1) When FDA, on its own initiative, finds that a monograph must be amended or repealed because a drug under the monograph may pose a significant risk; or
2) After a meeting of one of the Agency’s Advisory Committees, when FDA finds that a drug under the monograph lacks evidence of effectiveness.
The Modernization Act would also give the FDA the authority to regulate OTC drug advertisements. Currently, the FDA regulates advertisements for prescription drugs, while the Federal Trade Commission (FTC) regulates advertisements for OTC drugs. It would also provide for civil monetary penalties for direct-to-consumer OTC drug advertisement violations.
The bill would also require the FDA to report to Congress on whether any of the current OTC drug monographs are in need of review, amendment, or repeal.
(Side Note: Join a Fantasy Congress League and you can follow the progress of this bill here.)
Posted December 11th, 2007 by Stephen Albainy-Jenei in
Drug Legislation,
FTC,
FDA
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A law blog on intellectual property worth noting is the IP Thinktank Blog by Duncan Bucknell, an independent IP consultant. Hailing from Victoria, Australia, IP Thinktank provides one of the best round-ups of IP law from across the globe.
This is a very thorough, well-laid out blog that provides good insight into strategic lifecycle management for both innovator (brandname) pharmaceutical companies as well as generic companies.
One recent post lists the Top 5 reasons not to settle IP Litigation from the IP owner’s perspective:
- The other side are not even close to offering a reasonable deal.
- A state sanctioned monopoly is worth a lot more to you, even after the costs of litigation.
- This is one of many similar actions currently ongoing and you need a precedent and to send a signal to (a) the market, and (b) the other infringers.
- Settling this one will create a cascade of difficulties across many jurisdictions.
- Your CEO just doesn’t get along with the person in charge of that other company (NOT).
You can also learn the word Champerty — a doctrine of law which forbids certain situations in which a third party pays litigation expenses in return for a share in any proceeds.
We recommend adding IP Thinktank to your list.
Posted December 11th, 2007 by Stephen Albainy-Jenei in
Blawg Reviews
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1 Comment »
Blawg Review #138 is up at de novo for Human Rights Day. In a serious vein, this week brought the oral arguments in the Boumediene case in which Guantanamo inmates challenge their detention.
The Petitioners in these cases have all have been confined at Guantanamo for almost six years, yet (apparently) not one has ever had meaningful notice of the factual grounds of detention or a fair opportunity to dispute those grounds before a neutral decision-maker.
At issue is whether or not the Constitutional and Geneva Conventions‘ protections should be afforded to “enemy combatants” and even whether a detainee can be so classified without a hearing. Should due process of law be required for suspected terrorists?
Prisoners of war (lawful combatants) are entitled to the protections set forth in the 1949 Geneva Convention. In contrast, an unlawful combatant does not qualify for the Convention’s protections. In today’s world, can we know the difference?
We are left to answer questions that cannot easily be answered.
Posted December 11th, 2007 by Stephen Albainy-Jenei in
Blawg Reviews
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The U.S. District Court for the District of Columbia dismissed a suit against the Secretary of Commerce for hiring an allegedly incompetent person to office. See Gregory Aharonian, et al. v. Carlos Gutierrez, Secretary of Commerce (07-1224) .
Patent antagonist Greg Aharonian complained that the appointment of Margaret Peterlin to the position of Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office was unlawful because she does not have “a professional background and experience in patent or trademark law” as is apparently required under 35 U.S.C. § 3(b). The Secretary of Commerce basically responded nuh-huh.
35 U.S.C. 3(b) Officers and employees, calls for:
(1) DEPUTY UNDER SECRETARY AND DEPUTY DIRECTOR.- The Secretary of Commerce, upon nomination by the Director, shall appoint a Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office who shall be vested with the authority to act in the capacity of the Director in the event of the absence or incapacity of the Director. The Deputy Director shall be a citizen of the United States who has a professional background and experience in patent or trademark law.
The office of the Deputy Director is currently held by Ms. Peterlin.
The Secretary of Commerce argued that there is no private cause of action under this statute and Aharonian conceded this argument by failing to respond to a motion to dismiss addressing only certain arguments raised by the defendant and, hence, a court may treat those arguments that the plaintiff failed to address as conceded.
The U.S. District Judge held:
One of the three claims invokes Administrative Procedure Act (APA), which unlike 35 U.S.C. § 3(b), does provide a cause of action for persons aggrieved by final agency decisions that are arbitrary, capricious, or contrary to law. A claim alleging violation of the standard in 35 U.S.C. § 3(b) is unreviewable under the APA, however, because 35 U.S.C. § 3(b) lacks standards that a court could meaningfully use in evaluating this type of high-level personnel decision. Because the only statutory standard is vague and highly subjective, the decision whom to appoint Deputy Director must be considered “committed to agency discretion by law.”
The presumption must be that decisions involving high- level policymaking personnel are left primarily to the executive. Cf. Myers v. United States, 272 U.S. 52 (1926). In such a situation, one would expect Congress to speak in precise terms if it intended the courts to monitor the minimal qualifications for agency officers. Here, Congress has given only the broadest of instructions – that the Deputy Director should have “a professional background and experience in patent or trademark law.” 35 U.S.C. § 3(b). The statute is silent as to the content of those terms. Were the decision subjected to APA review, the Court – not Congress – would be the ultimate source of the standards by which the qualifications of Ms. Peterlin would be judged: Is a law degree necessary? Is it sufficient? Are law school courses in intellectual property a requirement? Is certification to practice before the USPTO? Is law firm experience? How many years? If Congress had intended the extraordinary situation in which judicial review would reach to the very qualifications of agency officers for their policymaking positions, its statute would not be drawn “in such broad terms that . . . there is no law to apply.” See Citizens to Preserve Overton Park v. Volpe, 401 U.S. 402, 410 (1971) (citation omitted).
Dismissed.
See more: Can You Sue to Remove a Political Appointee That Doesn’t Meet the Job Description?
Posted December 10th, 2007 by Stephen Albainy-Jenei in
USPTO
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No Comments Yet »
Robert J. Ambrogi at Legal Blog Watch reports on the strange unfolding of a spat between lawyer Raymond Niro, co-founder of Chicago plaintiffs’ IP firm Niro, Scavone, Haller & Niro, and the anonymous author of the blog Patent Troll Tracker. In an article in IP Law & Business, Niro offered $5,000 “to anyone that can provide information that leads me to the identity of Troll Tracker.”
Niro says he wants to find out the name of the Troll Tracker in order to sue for patent infringement. Niro noted that “I view these people [anonymous bloggers] as know-nothings, afraid to reveal their identity.” Troll Tracker thinks this is just a publicity stunt, to get him attention.
The Mises Institute has a review of the events but it seems that the Troll Tracker described Niro in an unflattering way and now Niro wants to get Troll Tracker for patent infringement. So, just how can blogging be considered patent infringement? Apparently, the patent in question, owned by Acacia Global Patent Holdings, can cover the display of .jpg images on web sites.
IP Law & Business explains:
“[I]t is the same patent Niro used to try and silence another vocal critic nearly a decade before. In 2000 Niro filed suit to enforce the patent against the Green Bay Packers, a now-defunct porn site, and others. Greg Aharonian, the unabashedly outspoken author of the Internet Patent News Service, derided Niro’s patent as ‘crap,’ and Niro added him to the suit. A third party filed for a reexamination of the ‘341 patent, and this September, seven years later, it emerged with one claim left intact.”
The patent in question is U.S. Pat. No. 5,253,341, entitled “Remote query communication system.”
See more here and here. See the Troll Tracker response here.
Who knew that the law could be so interesting?
Update: See Niro’s Response here.
Posted December 10th, 2007 by Stephen Albainy-Jenei in
Blawg Reviews
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3 Comments »
