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The 1 April 2010 Amendments to EPO Divisional Applications

Posted on Monday, August 2, 2010


By Charl Goussard, NAIP Legal Research
Photo by tacoekkel

On 20 August 2009, the European Patent Office (EPO) announced its decision to amend the rules relating to Divisional Applications. Since the publication of this first notice, the EPO consequently issued a number of explanatory notices, amendments to its Guide for Examinations and even a presentation explaining the effects of the amendments of the rules – all of which might pose as an excess of information for the untrained eye.
This article attempts to serve as a basic summary, in plain English (where possible), for non-practitioners, of the amendments and various notifications issued by the EPO with regards to the 1 April 2010 amendments to the rules for Divisional Applications.

These amendments came into effect on 1 April 2010.

Divisional Application Requirements

Jumping right in, we'd like to look at the two basic requirements for a Divisional Application filed with the EPO:

1. The patent which is intended to be divided must still be pending.
This means that the earlier patent must have been filed, but not yet granted, withdrawn, or deemed withdrawn on the day the divisional application is filed.

2. The divisional application must be filed within one of the following periods:
a) For Voluntary Divisionals: within 24 months of the Examining Division's first communication (called an "office action" at the USPTO) of the earliest application for which a communication has been issued. Thus, in the case of a sequence of EPO divisional applications, the 24 month time window is calculated from the date of the first communication issued for the earliest application in the sequence. Notification of the search opinion does not constitute a "first communication", since it is not issued by the Examining Division. Furthermore, the substance of the first communication is irrelevant for the calculation of the time window.
b) For Mandatory Divisionals: within 24 months of any first non-unity of invention objection from the Examining Division . Thus, each time the Examining Division raises a non-unity of invention objection for the first time, it creates a NEW time window of 24 months in which the applicant can file a divisional application. Notification of Summons to Oral Proceedings, or the minutes of a telephone conversation with the examiner, can also count as a communication (provided that lack of unity was the basis of the objection).

However, an objection of lack of unity in a Search Opinion is not considered to be a communication from the Examining Division and will not start the time window for filing a divisional application.

Transitional Arrangements

Before 1 April 2010, a divisional application could have been filed without consideration of a time window.

However, as explained above, the April amendments brought about a change in the time allotted to file divisional applications.

To accommodate for the transition the EPO has created a six months buffer period beginning 1 April 2010. Up until 30 September 2010, applicants will be allowed to file divisional applications even though their time windows have expired before 1 April 2010. If a time window is still open on 1 April 2010, but expires soon afterwards, the EPO will allow filings of Divisionals up until 30 September even though the time window has closed prior to that date.

The important date to remember in this transitional stage is 30 September 2010!

As of the 1st of October 2010, the EPO will strictly apply the new time window for divisional applications.

Language

The divisional application must be filed in the language of the proceedings of the earlier (parent) application. If the earlier application was not filed in one of the official EPO languages (English, French or German), then the divisional application may be filed in the non-official language of the earlier application. However, a translation will then have to be filed within two months.

Non-compliance with time limitations

If a divisional application is not filed within the 24 months window period, the application will be considered withdrawn.

Further Processing will not be possible (Further Processing is a procedure whereby an applicant can apply for an extension of a time limit).

Re-establishment of rights is, however, still available as a means to remedy the failure to observe the 24 month time window—but only if the necessary extraordinary circumstances can be proven.

Non-compliance with the time limits set for divisionals can result in fatalities for some potentially valuable divisional applications. It is therefore suggested that all currently pending applications be reviewed in order to secure filing of divisional applications before the 1 October 2010 deadline.

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TIPO Announces Ex Officio Telephone Notifications for Amendments

Posted on Friday, July 30, 2010

On 22 June 2010 TIPO launched a new program, "Ex officio Telephone Notifications for Amendments". The program went into effect on 10 June 2010 and is intended to provide applicants with greater flexibility in when amendments to claims or specifications may be filed. Now, if an invention application is in the examination or reexamination stage, an applicant may submit a request to file amendments. Previously amendments could only be made within 15 months of initial filing or only in response to an office action. Further details can be found here (Chinese).

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Taiwan and China Make Strides at the EPO

Posted on Monday, June 28, 2010

by Charl Goussard, NAIP Legal Research

Recently released statistics by the European Patent Office (EPO) confirm a trend that we have noticed over the past 10 years: Asian patentees, specifically Taiwanese and Chinese, are waking up and exploring the possibilities of the European market.

As one of the leading patent prosecution firms in Taiwan, NAIP has helped promote this growth. Since 2000 NAIP's European patent applications have grown at a faster rate than Taiwan's overall rate and, based on recent statistics, currently we manage approximately 10% of Taiwan's EPO applications.

EPO Patent Applications: 2000 to 2009
The following is a selection of data released by the EPO showing total patent applications:


Taiwanese Applicants:
Only recently have Taiwanese companies shown interest in obtaining European patents. Looking at (Fig. 1) below, which indicates the percentage increase in the number of applications filed with the EPO by Taiwanese applicants, the number has leaped from 261 applications in 2000 to 1077 applications in 2009. Taiwan has had steady year-on-year increases in applications filed with the EPO – the exceptions being 2007 and 2009, which can be contributed to economic meltdowns.


Fig. 1: Percent Change in Patent Applications for Taiwanese Applicants

Chinese Applicants:
China on the other hand, started off with only 162 applications in 2000 (99 applications fewer than Taiwan), but has outdone Taiwan in applications filed with the EPO since 2007. Also, China is also the only country listed above that, despite the economic meltdown, has maintained its year-on-year increases in applications filed, (Fig. 2).


Fig. 2: Percent Change in Patent Applications for Chinese Applicants


EPO Patent Grants -2000 to 2009


Fig 3. Patents Granted by the EPO: 2000 – 2009

Figure 3 shows that the number of patents granted by the EPO to Taiwanese applicants has steadily increased from 20 in 2000 to 201 in 2009. Taiwan's growth is second only to China, who has grown from 11 patents granted in 2000 to 351 in 2009.

Please note that, tempting as it may be, it is not possible to compare grants with applications as we do not have the statistical data needed to trace the success rate of each application. Generally speaking, the EPO grants approximately 50% of all applications.


The Big Picture

Having a look at the bigger picture (Fig 4), Taiwan and China are still minorities compared to the major players at the EPO – the United States, Germany, and Japan respectively. Korea files nearly triple that of China, but far less than the BIG 3 (US, Germany, and Japan).


Fig. 4: European Patent Applications Globally

Although the numbers might seem insignificant at first, this growth trend signals a rising awareness among Taiwanese and Chinese companies of the importance and potential value of patent protection in Europe. In the past the numbers were likely low because Taiwanese companies were traditionally focused on the US-market for commercialising their inventions. Now, the shift in roles from passive manufacturers to own-brand companies and exploration of new markets has led them to increase their focus in patents. For China, their delayed entry can likely be attributed to a learning curve in intellectual property rights. In addition, many prospective applicants are put off by the relatively more expensive cost of obtaining a European Patent. Finally, among the many other reasons, a general lack of experience with European Patents may also have contributed to the past apathy.

What is causing this growth? A plethora of possibilities– some of which include: globalisation of the world economy; the shift of market resources to Europe due to competition in the US; overall growing awareness of the importance of IP, better quality patents granted by the EPO and so on.

Whatever the reasons, reality dictates that both the number of applications filed with the EPO by Taiwanese and Chinese applicants and the number of patents granted to them have made gains over the past 10 years. At NAIP, we believe that Taiwanese and Chinese companies are finally recognising the market opportunities in Europe and more importantly, are taking action and investing money to secure their European intellectual property rights.

In Search of Effective Filing


Fig. 5: Total European Patent Applications Globally

A final interesting note from the data is that, as a percentage of the total number of patents applications at the EPO in 2009, Taiwan
's applications represent 0.75% and China's 1.21%, both up from previous years. However, when looking at the actual patents granted, Taiwan's granted patents represent only 0.39% of the total number of patents granted to the countries listed. China's 0.68%.

Germany on the other hand represents 18.66% of the total number of applications filed, but managed to achieve 21.9% of the patents granted. The success rate of other countries is also similar or higher than their application rate.

Does this mean the quality of applications filed by Chinese and Taiwanese companies are of lower quality or patentability than those filed by Germany, US or even Korea? Not necessarily. The figures may be representative of the learning curve associated with implementing IP strategy in a new market. The applicant's may not be familiar with procedures, drafting differences and so on.

That is why it is imperative Taiwanese applicants have access to reliable, quality European patent partner. NAIP provides such a service. Early on we embraced the opportunity to expand our specialized patent filing services to EPO applications. Through ongoing European patent training NAIP has ensured a strong knowledge base among our patent engineers and administrative staff. That allows us to process our clients’ European patent applications effectively, focusing on quality above all. Furthermore, to maintain and guarantee high quality patents, we collaborate with a reputable German Patent Firm for the direct filing and prosecution of all of our European Patent Applications.

We believe that through our experience with EPO applications, our thorough consultations with our clients and our attention to detail, our clients can expect a much higher success rate with their EPO applications.

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Taiwan Intellectual Property Office Re-organization Act Amended

Posted on Wednesday, June 9, 2010

On 6 June 2010 Taiwan's Executive Yuan passed an amended version of the Taiwan IP Office Re-organization Statute. The amendments are aimed at tackling the patent backlog and delays in patent examination, and will increase the number of patent examiners, but maintain existing head count. This will be accomplished by reducing the number of administrative and secretarial personnel, training and transferring existing personnel, and loosening restrictions on the number of part-time patent examiners. The statute will now go to the Legislative Yuan for approval.
The announcement can be found here (Chinese).

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US Continuation-in-Part Applications at the EPO

Posted on Tuesday, June 1, 2010

Today, companies with strong, active patent and R&D divisions develop their patent strategies with a global perspective, often filing for patents in both the United States and in Europe.

To encourage and improve the inter-office "compatibility" of US and European Patent applications, both the United States Patent Office (USPTO) and European Patent Office (EPO) have introduced programs such as the Patent Prosecution Highway Programme. However, despite these efforts, the two systems remain fundamentally different, and without proper planning and consideration of each office's specific rules and procedures, an applicant risks losing valuable rights in the application process.

One Invention – Two Systems: An example
One potential landmine is the US Continuation-in-Part (CIP) Application. Companies often first file a patent in the US, then a corresponding application in Europe claiming priority to the US patent. Later, due to rapid market changes or previously unseen application of the technology, a company sees the opportunity to extend the subject matter in its application and does so though the USPTO's CIP application.

Does the applicant have a similar option for the corresponding EPO application? How does this affect the EPO application? First, a quick look at the US CIP application:


The USPTO Continuation-in-Part Application
The USPTO provides that an applicant/inventor may add new subject matter to an existing non-provisional application, provided that the new subject matter has not previously been disclosed and that the nonprovisional application is still "alive". In addition, the new application will repeat some or all of the substantial subject matter of the already existing non-provisional application.

This new application is known as a Continuation-in-Part Application.

An advantage of a CIP is that priority from the earlier non-provisional application may be claimed. Provided that the earlier application has not been patented, abandoned or terminated on the date that the CIP is filed, such CIP will receive the same filing date as the earlier application.

(To learn more about CIP applications, please see USPTO MPEP: 201.08 Continuation-in-Part Application [R-3])

At the European Patent Office
The first thing to know is that the EPO does not provide for Continuation-in-Part Applications. The EPO does have a few options that may seem similar to the CIP, but they cannot be utilized in the same way.

The options are limited, but available....


1. Divisional Applications:
Divisional Applications are used to overcome Unity of Invention problems – in other words, to overcome the objections of claiming more than one invention in one application. Thus, when filing a Divisional Application with the EPO, the subject matter disclosed in the Divisional Application must be directly derived from the parent application as filed.

The EPO provides for Divisional Applications to be filed "only in respect of subject matter which does not extend beyond the content of an earlier application as filed..." – EPC ~ Article 76(1)

When dealing with a USPTO CIP application, it is indeed NEW subject matter which is added to the earlier nonprovisional application. Unless the new subject matter, which is disclosed in the CIP application, is already disclosed in the earlier EPO application, it will not be possible to apply for a Divisional Application.

It is thus advised to disclose and claim as broad as possible when submitting your first application. Therefore, should the examiner object to the application on the grounds of unity of invention, the applicant would be in a position to claim divisional applications from the "parent" application. However, it should be noted that the EPO has introduced a time limit of 2 years from the first communication from the EPO regarding unity of invention for claiming a divisional application.

2. Amendments:
Amendments are similar to Divisional Applications in that no new subject matter is allowed to be added to the application. However, if the subject matter disclosed by the CIP application has been disclosed in the earlier EPO application, amendments may be applied for if such amendment will not give rise to any other objections (such as Unity of Invention).

EPC 123(2) – clearly states that no amendment to an EPO application may add new subject matter which extends beyond the contents of the application as filed.

Thus, it might be advantageous for the applicant in the EPO to file his/her application as close as possible to the expiry of the 12month priority period – claiming priority from the earlier US-application. In doing so, the applicant will have ample time to foresee and amend his/her EPO application to overcome disclosure of new subject matter (EPC –Article 87 ~ 89).


3. Filing a New Application with the EPO:
The last resort is filing a new EPO Application for the new subject matter disclosed in the CIP application.

Note that the new EPO application will be entitled to claim priority from the CIP only if filed within the 12 months priority period granted since filing of the CIP application. Also note that the priority date is the filing date of the CIP, not the filing of the date of the CIP's parent application

While this method is not ideal, it does provide a stronger measure of protection than a completely new EPO application.

Conclusion
As this example on USPTO CIP applications and EPO applications clearly shows, inventors and applicants of patents in multiple patent systems must be aware of the various subtle yet significant differences between the requirements of the various patent offices. Contact your patent agent or legal firm and plan ambitiously. You always scale down later.

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Benoit Battistelli – Newly elected President of the European Patent Organization

Posted on Wednesday, March 31, 2010

by Charl Goussard, NAIP Legal Research

On the 1st of March 2010, Benoit Battistelli triumphed as the sixth president of the EPO. Securing the required two third majority votes from the Administrative Council of the EPO was no easy task. It took no less than four sittings of the Council, which is made up of delegates from all the member states of the Organization, to finally elect Mr. Battistelli for a term of five years.


As can be expected from such a tough election, the result was met with some criticism, mostly questioning the lengthy process and the choosing of Battistelli.

What cannot be denied is Battistelli’s superior diplomatic talent. Shortly after the first Council vote, Battistelli and Danish candidate, Kongstad, released a joint statement in which they proposed for Battistelli’s presidency, with Kongstad as Chairman of the Administrative Council. They even went on to publish a manifesto addressing major topics such as the PCT, EPO Human Resources, issues addressing Cooperation, and proper governance of the EPO.

Although the Administrative Council rejected this joint proposal, the progress made was that of cooperation between Battistelli and Kongstad. Soon after the third Council vote, Kongstad announced his withdrawal from the election and Denmark openly supported Battistelli. This was an important diplomatic move that benefited Battistelli in the long run.

Since election results in the Council are confidential, it is hard to speculate what exactly made Battistelli defeat Roland Grossenbacher, his Swiss opponent and other front-runner for the EPO presidency. A look at Battistelli’s background might provide the answer.

Currently, Battistelli heads the French Patent and Trade Mark Office, a position he has held since May 2004. In addition, Battistelli has been actively involved with the EPO for the past five years.

Battistelli believes that his experience will help him address the pressing staffing issues and grievances which exist in the EPO and manage with a firm hand. He has already committed himself to providing a more transparent organization for EPO staff members as well as better explanations of responsibilities and actions. In reaction to Battistelli’s election, the EPO Central Staff Committee said that they are hoping that the newly elected President of the EPO will display the much needed competence to communicate effectively with staff and to value their contributions and rights.

Schooled in Law and a graduate of National School of Public Administration (Ecole Nationale d’Administration, ENA) Battistelli is well-experienced in transnational trade issues. He has held various trade related posts with French government departments, notably Deputy Trade Commissioner at the French Embassies in Italy, Turkey and India. More recently, Battistelli was Chief Advisor to the Industry Minister, Mr. Nicole Fontaine, former President of the European Parliament.

Battistelli also has experience working with the World Intellectual Property Organization (WIPO) and the World Trade Organisation (WTO). Thus, facilitating cooperation among the EPO’s 36 member states and among the EPO and other organizations should not be as daunting a challenge.

When Battistelli takes up his post on the 1st of June, 2010, this Frenchman will be the second French EPO president and the first EPO president who have previously held the position of Chairman of the Administrative Council.

Battistelli, a French national, is fluent in French, English, Italian and has basic German language skills. He is a husband and father of three, and at home in the French municipality of Saint-Germaine-en-Laye he is deputy mayor in charge of culture.


Sources:

1. http://www.ipjur.com/blog2/index.php?/archives/141-BREAKING-NEWS-Mr.-Benoit-Battistelli-to-become-next-President-EPO.html

2. http://en.wikipedia.org/wiki/Beno%C3%AEt_Battistelli

3. http://www.epo.org/topics/news/2010/20100301.html

4. http://www.eplawpatentblog.com/eplaw/2010/03/epo-beno%C3%AEt-battistelli-france-elected-epo-president.html

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Enter the Tiger!

Posted on Wednesday, February 10, 2010




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A Unified Patent For Europe - An Update

Posted on Wednesday, February 3, 2010

by Charl Goussard, NAIP Legal Research

The day when a single patent can provide protection within all European Union (EU) countries is now closer. On the 14th of December 2009, ministers from the EU gathered for a meeting at the EU Competitiveness Council. The Council, tasked with ensuring the enhancement of competitiveness and growth in Europe, had on their agenda the future of the European Patent System (for a refresher on patents in Europe and the current state of the European Patent Office, please refer to our previous article - An Introduction to the European Patent System).

The major outcome of the meeting was an agreement of a draft regulation for what is known as the EU patent. In addition, conclusions were reached on the features of a proposed unified patent litigation system (court), arrangements regarding renewal fees and their distribution between national patent offices, and methods for improved collaboration between the national patent offices and the European Patent Office (EPO).

Key Points of the Proposed Regulations

  1. One Patent, Full and Equal Protection
    The new system will introduce a single patent that provides equal protection throughout the entire EU territory (Link to webpage with countries in EU).

    Currently applicants must either apply at the various national patent offices in the individual European countries, or opt for a unified application process through the EPO.
    In the first method, separate applications need to be prosecuted for each individual country in which the applicant wishes to establish patent rights.

    When opting for a unified application process at the EPO, the prosecution stage up, until grant of the patent is unified. However, the applicant must still delegate his patents to national offices and have them verified in such offices, in order to enforce patent rights in those countries.

    One system with full and equal protection in the whole Euro-territory upon granting of the patent will make access to European markets easier, more cost effective and less risky. This change will particularly benefit Small and medium-Sized Enterprises (SME's).

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  2. A Single Examination and Granting Authority: The EPO
    The EPO is to play a central role in granting the EU patent–sole responsibility for examining and granting EU patents.

    The EPO already has the infrastructure and expertise to deal with European Applications. To ensure the most effective implementation of the new patent system, it is vital that the EPO be entrusted with the administrative procedures and that their mandate extended to the post-grant phase of, for instance, managing renewal fees and the patent registry.


  3. A New Role and Revenue Stream for National Patent Offices
    All central intellectual property offices will have an essential role under the new system–giving support and advice to applicants. In turn, they will be compensated through the distribution of annual renewal fees.

    This provision ensures that local knowledge and good relationships with the national patent offices are not lost. Furthermore, applicants may make use of this extra service to obtain the best advice for their respective applications.


  4. Multiple Filing Offices
    Applicants will still have a choice to file their applications at the national offices, if more convenient, or directly at the EPO.


  5. Unified Application Fees
    To ensure fairness throughout the European Union, all filing offices will charge the same fee for filing a European patent.


  6. The European Patent Convention As the Principal Legal Structure
    In order to avoid unnecessary confusion and delay, the EPC will remain as the principle legal structure governing the pre-grant process. The EPC received a major revision in 2000 (implemented in 2007) which now makes it a trusted system.


  7. Individual National Patents Remain an Option
    The proposed regulation will not replace national laws relating to patents nor will it remove the applicant's right to apply for national patents.

    If applicants wish to only apply for a selected country or countries, they will be allowed to do so. Applicants will thus, with the new system, have an additional option, and not be limited to a unitary European patent.


  8. One Patent Court for the EU
    Having one unified patent litigation system for the whole territory will be a major advantage. The new system will cut litigation cost and ensure quick and effective enforcement of the patent rights throughout the whole Euro-territory.


The Road Ahead

Next, the EU Parliament will deliberate the proposal. Compatibility of the draft regulation and current EU laws, language arrangements for the new EU patent system, and the collaboration between national patent offices and the EU patent office will probably be some of the key issues to be debated.

Taking into account that the revised European Patent Convention (EPC 2000 edition) took seven year to come into effect, one should not be panicking about sudden changes. At least there is hope on the horizon....

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