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1 DETAILED TABLE OF CONTENTS Preface... v v About the Authors... xiii vii Summary Table of Contents... xv ix Chapter 1. European Patent Law as International Law... 1 I. European Patent Law Arises From Multiple Sources... 2 II. History and Development of European Patent Law... 3 A. The International Patent Institute (IIB)... 3 B. The European Patent Convention (EPC) and the Strasbourg Convention... 5 C. The European Patent Convention and Agreement to Centralize Grant Administration... 8 D. The Integration of the IIB into the European Patent Organisation Comparison to Structure of USPTO E. European Patent Law After the European Patent Convention 2000 (EPC 2000) III. European Patent Law as Explained by Actavis UK IV. European Patent Law as a Creature of Treaty A. The World Trade Organization s Trade- Related Intellectual Property Rights Agreement of 1994 (TRIPS) B. The World Intellectual Property Organization s Patent Law Treaty (PLT) of V. EU Directives VI. National Efforts VII. Unified Patent Court Proposal and Plans for the Future xi

2 xii European Patent Practice: 2016 Supplement Chapter 2. The Structure and Governance of the European Patent Organisation I. Structure of the European Patent Organisation II. Structure of the EPC A. The Components of the EPC III. General and Institutional Provisions A. A System of Law Common to the Contracting States B. The EPO is run by a Council of its Member States Role of the Administrative Council C. Structure and Role of the European Patent Office D. The EPO has More Legislative Power and Judicial Independence Than the USPTO E. An EPO Patent is a Bundle of Patents F. Other Comparisons Between the EPO and the USPTO IV. Other Articles of the EPC V. Implementing Regulations and Guidelines for Examination VI. Case Law of the EPC VII. Boards of Appeal A. Comparison to the U.S. Patent Trial Appeal Board Chapter 3. The Patent Cooperation Treaty and Euro-PCT Process I. Filing at the European Patent Office Through the Patent Cooperation Treaty A. Filing through the U.S. Receiving Office Permitted Applicants and Competent Receiving Offices Form of the International Application a. The Request b. The Description... 51

3 Detailed Table of Contents xiii c. The Claims d. The Required Fees e. Designation of European Region The Priority Claim B. Filing Through the International Bureau Permitted Applicants Making the Application Form of the Application II. The PCT Process A. The Search Process B. Selecting the Competent Search Authority C. Responding to the Search Report Time Limits Making Amendments to the Claims D. Demand for the Examination Determining Whether to Demand Examination Selecting a Competent Examination Authority Responding to an Examination Report Making Amendments III. Entry into the European Regional Phase A. Initiating Entry Into the European Patent Office B. Appointing a Representative C. Amending Claims Under the Euro-PCT Process Chapter 4. Patentability Under the EPC I. Overview of Substantive EPC Law II. Patentable Subject Matter Under the EPC A. The Legal Basis B. Distinguishing Characteristics of EPC Patentable Inventions Technical Character Defined Identifying Technical Character Technical Character in Tradition and in Rule... 77

4 xiv European Patent Practice: 2016 Supplement 4. Technical Field to Which the Invention Relates Drafting the Technical Character T 0619/02 (or Does This Perfume Smell Like Henri Matisse or Pearl Jam? ) C. The As Such Exceptions D. Article 53 Policy Exclusions Broad Categories are Excluded The Varying Scope of Article Flow Chart for Patentable Subject Matter E. Comparison of Articles 52 and 53 With 35 U.S.C. Section U.S.C. Section Differences U.S. Case Law Practical Effect F. Industrial Applicability III. Novelty Under the EPC A. Article Analogy to 35 U.S.C. Section Absolute Novelty Under Article Unpublished Applications are Included in the State of the Art B. Unqualified Exceptions Under Article C. Comparison to U.S. Law and Practice IV. Inventive Step A. Article Analogy to 35 U.S.C. Section B. Overview of Problem-Solution Approach C. The Skilled Person is Competent, Knowledgeable, and Motivated but Uninventive Comparison to Skilled Person Under U.S. Patent Law D. The Problem-Solution Approach From the Viewpoint of the Skilled Person

5 Detailed Table of Contents xv 1. Determining the Closest Prior Art a. T 1212/01 The Viagra Oppositions Establishing the Objective Technical Problem to be Solved Assessing the Inventive Step a. Combination Versus Juxtaposition or Aggregation b. Ex Post Facto Analysis The Relation Between Inventive Step and Claim Scope T 939/92 ArgEvo E. Comparison to U.S. Law and Practice Available Prior Art The Level of Skill in the Art Use of the Problem-Solution Approach Chapter 5. Disclosure Requirements for the EP Application I. Introduction II. The Requirements of an Application A. The Principle Requirements for Disclosing and Defining the Invention B. The Requirement of Unity C. The Interplay between the Disclosure, the Claims, and Amendments D. Sufficiency of Disclosure Article 83 EPC Sufficiency Is Determined From the Application as a Whole Disclosure of at Least One Way Article 83 Requires Sufficient Information to Perform the Invention Over the Whole Area Claimed Partial Sufficiency Examples to Support Broad Claims Sufficient for the Person Skilled in the Art Best Mode

6 xvi European Patent Practice: 2016 Supplement a. T 219/85 A Gem of an Explanatory Memo Disclosing Test Conditions a. Board of Appeals Decision: T 1233/10 Disposing a Vaguely Worded Claim Rule 31 Deposit of Biological Materials Proving Insufficiency Comparison to 35 U.S.C. Section E. Clarity of Claims Requirements of Article a. Article 84 EPC Defining the Matter for Which Protection Is Sought Reciting Technical Features Reciting Essential Features Using Means Language Avoiding Undue Limitations a. T 0061/ Clarity and Conciseness Limitation of Claims per Category Support Within Disclosure Aligning Claims With Disclosure The Skilled Person Willing to Understand Comparison to 35 U.S.C. Section F. Requirements for Amendments Article 123 EPC The Stringent Standard for Amendment a. Case No. T 2039/12 Stringent Means Strict, Precise, and Exacting b. Insertion of Word Time Before Rate of Change c. Insertion of the Wording To Not Exceed a Predetermined Maximum Allowable Rate Comparison to U.S. Prohibition against Adding Matter

7 Detailed Table of Contents xvii III. G. Claiming Priority Article 87 EPC Article 88 EPC Having the Right to Make the Priority Claim Rule 53 EPC Comparison to 35 U.S.C. Disclosure Requirements A. Table of Comparisons of U.S. Code and EPC Articles Chapter 6. Rights Conferred by an EP Patent I. The EPC and National Law of European Courts II. Article 69 of the EPC and Claim Interpretation A Brief Pause A. A Codified Standard Unlike the United States B. The Protocol on Interpretation of Article 69 EPC C. Claim Interpretation under UK Patent Law D. Comparison to United States Law Chapter 7. Introduction to Procedure of Examination I. General Approach to Examination Proceedings A. Independence of the EPO B. The Guidelines for Examination Work of the Examiner Generally General Procedures Under the Guidelines II. General Structure of Examination Proceedings A. The Meaning of Proceedings B. Two-Stage Examination Process C. Coordination of Search Division With Examination Division

8 xviii European Patent Practice: 2016 Supplement III. Comparison of EPO Examination Process With USPTO Examination Process A. Comparative Timeline of USPTO and EPO Procedures B. Overview of Differences Chapter 8. EPO Search Stage I. The EPO Search Procedures A. Disclosing Search Results Under Rule Comparison to U.S. Rules of Disclosure. 208 B. EPO Search for Direct Filings Pre-Search and Rules 62a and a. Comparison to U.S. Search Practice Unity of Invention Search Report Search Opinion C. EPO Search for Euro-PCT Applications Rule 161 EPC D. EPO Search for Other PCT Applications Supplementary European Search Report II. No Right to Amend Before Receipt of Search Report A. No Claim Amendments Before Search B. Prior Art for Examination Set by the Search C. Rule 61 EPC and Examination Search at the Examination Stage III. Responses to EESR IV. Right to Amend After Receipt of Search Report A. Rule 137 EPC B. Limitations of the Scope of Amendments Based on Search V. Comparison to U.S. Law and Practice

9 Detailed Table of Contents xix Chapter 9. EPO Substantive Examination Stage I. The Examination Procedure A. Making the Request B. Examination by the EPO under Article 94(3) C. Examiner Decision to Grant or Refuse D. Summons to Oral Proceedings II. Addressing Objections Raised Under the EPC A. Preliminary Issues: Rule 137(5) and Unsearched Subject Matter B. EPO Time Limits III. Complying With Article IV. Complying With Articles 84 and 123 EPC A. Overview in Relation to U.S. Law B. Complying with Article Generally Essential Features Improper or Intermediate Generalization Use of Functional Language Example: Comparison to U.S. Law and Practice C. Complying With Added Subject Matter Requirement Under Article Generally Improper Generalizations D. Example of Complying With Articles 84 and V. Addressing the Novelty Requirement A. The Basics Confirming Information Public Confirming Enabling Disclosure Taking Disclosure in its Entirety B. Importance of Priority Date C. Addressing Internet Publications VI. Addressing the Requirement of Inventive Step

10 xx European Patent Practice: 2016 Supplement A. The State of the Art Must Have Been Published Before the Priority Date B. The Problem-and-Solution Approach in General C. Practical Application of the Problemand-Solution Approach Chapter 10. Examples of Replies to Communications from the Examining Division I. Introduction to the Examples II. Example Test Question from the European Qualifying Examination A. Form of the Exam Question B. Instructions to Candidates to Receive Full Marks C. Analysis of the Facts The Invention as Described in the Example Application The Prior Art Disclosed by the Example Application The Problem Disclosed by the Example Application The Disclosed Examples of the Invention Determining the Technical Features of the Example Invention Comparing the Example Claims to the Invention Disclosed D. Addressing Formalities Under Rule 43 EPC Requirements of Rule 43 EPC Use of the Two-Part Claim Form Use of Reference Numerals With the Example Claims Assessing the Claim Categories Using Claims with Multiple Dependents. 276 E. Dependent Claims as Support for Amendments F. Substantive Issues of Exam Question G. An Amended Claim to Earn All Points

11 Detailed Table of Contents xxi III. 1. Amending the Claim to Add a Technical Feature Providing Basis for the Added Feature Making Amendments that Comply with Client Instructions An Example Amended Claim H. Preparing a Reasoned Reply to Earn All Points Discussing the Claim Amendments in the Reply Addressing the Concerns Over Lack of Novelty Addressing Concerns Over Lack of Inventive Step a. Identifying the Closest Prior Art i. Stating the Closest Prior Art b. Formulating the Objective Technical Problem c. Making Arguments to Support Inventive Step Review of EPO Training Example on Inventive Step A. Introduction to Example Problem B. Analysis of the Facts of the Example The Invention as Described in the Application Comparing the Examined Claims to the Invention as Disclosed The Problem Disclosed in the Application The Prior Art Cited in the Search Report The Differences in Technical Features C. The Analysis of Inventive Step Selecting the Closest Prior Art The Examiner s Formulation of the Objective Technical Problem The Grounds for Finding the Lack of Inventive Step

12 xxii European Patent Practice: 2016 Supplement IV. Example Reply Challenging Formation of the Objective Technical Problem A. Analysis of the Facts The Application The Examiner s Reasoning for Finding Lack of Inventive Step Applicant s Response Challenging the Examiner s Formulation of the Technical Problem Chapter 11. Auxiliary Requests I. Using Auxiliary Requests A. Multiple Fallback Positions B. Expedite Examination II. Legal Basis III. Auxiliary Request Practice A. In-the-Alternative Argument B. Auxiliary Request Timing C. Auxiliary Request Review Admissibility of Requests Clear Allowability of Late-Filed Requests Convergence of Late-Filed Requests D. Allowance of Auxiliary Requests IV. Example Response Use of Auxiliary Requests A. Search Report B. Applicant s Response to the Search Report Amended Main Request Auxiliary Request Applicant Remarks Regarding Auxiliary Request V. Further Example Auxiliary Requests During Opposition and Appeal A. Submission of Auxiliary Requests Before Oral Proceedings First Auxiliary Request (ARI) Claim

13 Detailed Table of Contents xxiii 2. Second Auxiliary Request (ARII) Claim B. Decision to Maintain Patent Based on the First Auxiliary Request C. Changing Request Sequence During Proceedings D. Boards of Appeal Maintains Patent Based on the Second Auxiliary Request VI. Comparison to U.S. Law and Practice Chapter 12. Oral Proceedings I. Overview of Oral Proceedings A. The Right to Be Heard at the EPO B. Initiation of Oral Proceedings II. How Oral Proceedings Are Initiated A. Summons to Oral Proceedings Proper EPO Communication Inappropriate Summons B. Content of Written Submission Requests Late-Filed Requests C. Timing of Oral Proceedings Postponing Oral Proceedings Late Arrival or Nonappearance at Oral Proceedings D. Decision According to the State of the File E. Public or Private Oral Proceedings F. Representation at Oral Proceedings III. The EPO as a Venue for Oral Proceedings A. The Panel B. The Location IV. The Oral Proceedings Process A. The Procedural Sequence B. Checking Attendee Credentials C. Opening Oral Proceedings D. Considering the Requests E. Oral Proceedings Are a Working Meeting F. Requesting a Break During Oral Proceedings

14 xxiv European Patent Practice: 2016 Supplement Chapter 13. Professional Conduct During Proceedings at the EPO I. Professional Conduct as Legal Representative II. The Representative s Duty to Act Honestly Before the Office A. Rules of Professional Conduct Before the EPO B. Duty of Confidentiality C. General Professional Obligations D. Rules of Conduct According to the ABA Model Rules Chapter 14. National Validation [New Chapter] I. Introduction II. Final Stages of EPO Proceedings A. Notice of Intention to Grant B. Amending Text for Grant C. The Decision to Grant D. The European Patent Bulletin E. Date for Filing Divisional Applications F. Suspension of Grant Proceeding III. Validating Granted European Patent in EPC Member States A. Countries in Which the European Patent Can Be Nationally Validated B. Translation Requirements C. The London Agreement IV. National Validation in the EPC Contracting States A. National Patent Offices B. Different Sets of Claims C. Effect of Revocation or Limitation of the European Patent Chapter 15. Text for Grant [New Chapter] I. Introduction II. The Authentic Text at Grant... 54

15 Detailed Table of Contents xxv A. Text for Proceedings Before the EPO B. Language Used by Parties During Proceedings Can Differ From Language of Authentic Text C. Authentic Text for Actions Before the National Courts III. Scope of Claims Determined by Authentic Text IV. Use of Prosecution History During Claim Interpretation A. The UK Position B. The German Position C. The Dutch Position D. The EPO Position V. Correcting Errors in the Text and Application Documents A. Correcting Errors in Documents Filed With the EPO B. Corrections to Description, Claims or Drawings C. Addressing Inconsistencies Between the Claims and the Disclosure D. Typographical and Linguistic Errors Timing of Requests for Correction Party to Decide on the Request for Correction E. Correction of Named Applicant F. Correction of Priority Claim G. Correction of Designated Inventor H. Correction to Translation of Text I. Correction of Procedural Actions J. Complete Replacement of the Application Documents K. Missing Parts of Description and Drawings L. Allowability of Clerical and Grammatical Corrections M. Obligation to Draw Attention to Easily Remediable Deficiencies... 72

16 xxvi European Patent Practice: 2016 Supplement Chapter 16. Selecting and Maintaining Countries for Validation [New Chapter] I. Introduction A. Validation Options II. The European Patent After Grant A. The Validation Period B. Transfer to National Jurisdiction C. The London Agreement and Automatic Validation D. Assignment of European Patent After Grant. 80 III. Factors in Selecting Countries for Validation A. Costs Translation Costs Renewal and Annuity Fees Comparison of U.S. Costs to EP Costs for Frequently Selected States B. Data on Markets of EPC States IV. Costs of EPO Filing Compared to Direct Filing Through National Offices Chapter 17. The Unitary Patent and the Unified Patent Court [New Chapter] I. Introduction II. The Unitary Patent Package A The Unitary Patent Regulation European Patent with Unitary Effect Comparing the Unitary Patent to the Classic European Patent Comparing the Unitary Patent Process to the Classic European Patent Process Filing a Request for Unitary Effect Combining Types of European Patents Registering an Offer to License III. The Unified Patent Court A. Law Applied by the UPC The UPC Adopts the Law of the EPC The UPC Agreement Provides Substantive Law on Infringement

17 Detailed Table of Contents xxvii 3. Prohibition Against Direct Infringement Prohibition Against Indirect Infringement and Inducing Infringement Uses of an Invention That Are Allowed Other Sources of Law B. Structure of the UPC Composition of Judicial Panel The Appeals Court Court of Justice for the European Union C. Bringing Actions Standing to Sue Infringement Actions Revocation Actions Discovery Language of the Proceedings IV. Remedies A. Permanent Injunctions B. Damages Knowingly Infringing Activities Infringement Without Knowledge or Reasonable Grounds to Know Other Corrective Measures V. Revocation of a Patent Appendix A [Redesignated]. Summary Chart of U.S. Patent Statute and Rules Compared with Corresponding EPC Articles and Rules Appendix B. Summary Chart of U.S. Patent Statute and Rules Compared with Corresponding EPC Articles and Rules [New Appendix] Table of Cases Index

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