The European Patent Office An overview on the procedures before the EPO: up to grant, opposition and appeal

Transcription

1 The European Patent Office An overview on the procedures before the EPO: up to grant, opposition and appeal Yon de Acha European Patent Academy Bilbao, /10/2010

2 Contents Patents Grant Procedure Opposition Procedure Patentability Requirements

3 What is a patent? A patent is a legal title granting its holder the right to prevent third parties from commercially using an invention without authorisation. In return for this protection, the holder has to disclose the invention to the public. Protection is granted: for a limited period, generally 20 years for a specific geographic area

4 Patents: Structure Description: The invention is disclosed. Level of detail is enough for the person skilled in the art to carry out the invention. Problem is stated, prior art solutions, advantages of the new solution. Claims: Claims legally define the scope of protection. Minimum level of detail: essential features only. Optional features should not unduly restrict the protection. Drawings: with reference signs.

5 What is patentable under the EPC? To be patentable, an invention must: have a technical character (e.g. comprise a product, process or apparatus) be new involve an inventive step be industrially applicable Some innovations are not patentable under the EPC: for example, mathematical methods or formulae, computer programs and business methods are as such not regarded as inventions new plant or animal varieties, methods for treatment of the human body and inventions whose commercial exploitation would be contrary to "ordre public" or morality (e.g. the cloning of human life) are examples of inventions excluded from patentability

6 Contents Patents Grant Procedure Opposition Procedure Patentability Requirements

7 Overview of European patent grant procedure (I) Applicant European patent application Refusal or withdrawal of application Validation in designated states EPO Filing and formalities examination Search and search report together with preliminary opinion on patentability Substantive examination Grant of European patent Public domain Publication of application and search report Online access to application file and legal status information Observations by third parties possible Publication of patent specification

8 Overview of European patent grant procedure (II) Applicant Refusal of application EPO Substantive examination Grant of European patent Limitation or revocation proceedings Opposition proceedings Appeal proceedings Petition for Review Public domain Opposition by third parties possible

9 Search: What is the aim of the search? To find the most relevant State of the Art The State of the Art is all information, relevant to the patentability of the application made available to the public (in writing or orally) prior to the date of filing of his patent application (Art. 54(2))

10 Search: Where and what do we search? The EPO Database EPODOC which contains over 70 million classified prior art documents Other databases (WPI, PAJ, INSPEC etc.) and the Internet may also need to be consulted Non-patent literature where available

11 The search report A search report is drafted listing the state of the art documents: Publication Data (applicant, publication date) A letter code (X,Y,A) which identifies the degree of relevance An indication of the most relevant parts of the documents Written preliminary opinion

12 Publication Effects Communication of information Inspection of files Online register Third party observations Provisional protection

13 Examination: Overview The examination division Three member division The application is examined Patentability (N,IS,IA), clarity, unity, sufficiency of disclosure etc with respect to the EPC with EPO Guidelines, Internal Instructions and Case Law from Board of Appeal During examination amendments by the applicant and suggestions by the examining division are possible (COMM, TEL, INT,ORALP) Outcome: Grant At least two members of the Examining Division agree that the application meets the requirements of the European Patent Convention Refusal If the Examining Division is considering refusing the application The Applicant has the right to be heard He can ask to present his arguments face to face in Oral Proceedings before the division If at least two members of the Examining Division are of this opinion the application is refused

14 European patent application outcome (2009) 7% 24% Withdrawn before examination Withdrawn Granted 42% Refused after examination 27%

15 Grant: Final Actions by the Applicant to validate the Patent At the EPO Approval of the final text Fees for grant and printing File translation of claims in other two official languages EPO publishes the Patent Before the elected National Offices of the Member states File translation of specification Appointment of representative Pay any national fee Pay renewal fees Possible register transfer, licence, other rights

16 Contents Patents Grant Procedure Opposition Procedure Patentability Requirements

17 Overview of European patent grant procedure (II) Applicant Refusal of application EPO Substantive examination Grant of European patent Limitation or revocation proceedings Opposition proceedings Appeal proceedings Petition for Review Public domain Opposition by third parties possible

18 Opposition What is Opposition Opposition is a centralized EPO procedure for challenging the validity of a granted European Patent It must be filed within 9 months of the mention of grant being published It can be filed by any person (no self opposition possible) Purpose of Opposition It allows the introduction of disclosures which may not have been available to the Examining Division Oral disclosures Prior use Proprietary disclosures e.g. manuals It allows the public to challenge the Examining Division s assessment of patentability

19 Oppositions in 2009 Oppositions were filed against 4.7% of granted European patents. Over one third of all opposed patents were revoked. Opposition rejected 26.3% 43.6% Patent revoked 4.7% Oppositions 30.1% Granted patents Patent maintained in amended form

20 Patent. Timeline Entering the Ex. Phase? Priority period Examination Opposition 0 12m 18m 24m (max) 24m+? GD+9m Filing of application Filing and search fees Publication of Application Search Report Start of Examination phase Grant or refusal. Start of national phase: granting fees; translations End of opposition procedure.

21 Contents Patents Grant Procedure Opposition Procedure Patentability Requirements

22 Criteria for patentability under the EPC An invention must demonstrate (Article 52(1) EPC) : Industrial applicability Novelty Inventive step

23 Why novel? Because an exclusive right is only justified for previously unknown solutions. Why inventive? Because exclusive rights for trivial solutions tend to block technological development. Why industrially applicable? To avoid granting rights to impossible solutions.

24 Industrial applicability (Article 57 EPC) if produced or used in any kind of industry having regard to any technical field

25 Novelty (Article 54(1) EPC) An invention shall be considered to be new if it does not form part of the state of the art.

26 What is the state of the art? (Art.54(2)EPC) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application. The public One or more person(s), who could pass information (not bound to secrecy)

27 The means - how is the state of the art formed? Written In any language, in any number of copies, reproduced in any form Oral Presented to the public (without conditions of secrecy) eg. conversation, presentation, radio, TV, audio cassette... Use To produce, to offer or to sell a product; use or commercialize a method or in any other way e.g. CD-ROM, DVD, Internet,

28 When does it comprise the state of the art? Before the filing date At the latest on the day before Filing, or, if applicable, before Priority

29 Assessment of novelty Application Prior Art Prior Art Claim 1 Document 1 Document 2 Features: A A A B B B characterised by C C D D D E E

30 Example novelty Claim 1 (as filed) A Car including a windscreen characterised in that the windscreen is equipped with a pair of rubber blades capable of being moved to and fro. Document 1 (from search report)

31 Inventive step (Article 56 EPC) An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art

32 Closest prior art From a single embodiment within a document Having the same designation Having the same purpose and causing a similar effect as the invention; belonging to the same or closely related technical field; corresponding to a similar use and requiring the fewest (structural, functional) modifications to arrive at the invention.

33 Problem/solution approach Examining is an ex post facto analysis. To ensure objectivity EPO examiners use the problem and solution approach: - Identify the closest prior art - Formulate the objective technical problem to be solved - Identify the features claimed which are not disclosed in the closest prior art - Define the technical problem that is solved by the technical effects that the invention provides over the closest prior art - Decide whether the skilled person would arrive at the subject-matter of claim - Is the problem hinted at somewhere in the prior art? - Is the solution as claimed proposed by the prior art?

34 Assessment of inventive step Application Prior Art Prior Art Claim 1 Document 1 Document 2 Features: A A B B B characterised by C D D C

35 For example Claim 1 (as filed) A pair of tights with a body portion characterised in that the pair of tights comprises three leg portions. Document 1 A conventional pair of tights with two leg portions Document 2 A leg garment comprising two separate stocking portions

36 Application of the problem/solution approach Closest prior art: The closest prior art is described in document 1. Objective technical problem: - The difference between claim 1 and the closest prior art is: the provision of a spare leg portion - The problem solved by the invention is: to provide a pair of tights wherein a damaged leg portion can quickly be substituted. Obviousness: - Is the objective technical problem adressed in document 2: Yes, so the skilled person would consider document 2 when searching through the available prior art for a solution to the problem posed. - Does document D2 propose a similar solution as claimed No, document 2 provides a different solution to the problem than that suggested by claim 1 of the application. Result: Claim 1 involves an inventive step.

37 Was it all there? Claim 1 (as filed) A pair of tights with a body portion characterised in that the pair of tights comprises three leg portions. Document 1 A conventional pair of tights with two leg portions Document 2 A glove with six fingers addressing the same problem as the claimed invention

38 Application of the problem/solution approach Closest prior art: The closest prior art is described in document 1. Objective technical problem: - The difference between claim 1 and the closest prior art is: the provision of a spare leg portion - The problem solved by the invention is: to provide a pair of tights wherein a damaged leg portion can quickly be substituted. Obviousness: - Is the objective technical problem adressed in document 2: Yes, so the skilled person would consider document 2 when searching through the available prior art for a solution to the problem posed. - Does document D2 propose a similar solution as claimed? Yes, document 2 provides the same solution to the problem as claim 1 of the application. It is applied to a different body member but the skilled man is already departing from the correct member in document 1. Result: Claim 1 does not involve an inventive step.

39 Patents: back to the questions If you have a technical solution: Is it new, i.e. Have you not disclosed it yet? Is it inventive? (be careful, if you are the inventor, the solution may seem obvious to you!!) Do you have the right to the invention? As an inventor, you may apply for it. Your company/university research centre may have the right to claim the rights. If all your answers are yes...apply for a patent! Seek professional help (attorneys) to draft and pursue the application! The administrative procedure and the drafting language may not be your strongest points. Now: where to apply?

40 Patent Strategy: Is your invention ready? Are you willing to exploit it? If you want to license the invention, be sure it is compatible with other products of possible licensees. If your application fails or your patent sold: Do you have remaining know-how? If you want to stop others from patenting, publish your application! Considering the timeline, is the pace in your technology field that fast that the time scales are far too big? Plan your filing(s). Explore your markets.

41 Patent documents Patent applications are published. Patent documents contain technical information which is usually NOT available in academic papers. Not all the published application information is protected by a valid patent (i.e. Still alive): this information is free to be used! Patent documentation offers a picture of who is who in a technology field, commercial interests, lines of development.

42 the database of ideas! Free to access to download Over 60 million documents Patents arranged according to technology type by classification schemes (IPC (Edition 8) and ECLA), to make keyword searching more focussed Online tutorial the assistant

43 the database of ideas!

44 Thank you for your attention! Yon De Acha González Examiner in Vehicles and General Technology European Patent Academy