FOCUS ON EUROPE. Successful Multilateral Patents Workshop June 26, 2007 GWILYM ROBERTS European Patent Attorney Kilburn & Strode

Transcription

1 1 FOCUS ON EUROPE Successful Multilateral Patents Workshop June 26, 2007 GWILYM ROBERTS European Patent Attorney Kilburn & Strode Kilburn & Strode 20 Red Lion Street London WC1R 4PJ UK T: +44 (0) F: +44 (0) E: W: Topics The description and claims Recent decisions EPO operational issues

2 2 Principal Parts The Introduction Problem/Solution The Description Added Matter Technical Effect The Claims Unity Of Invention The Introduction

3 3 Key point: The Problem Solution Approach Determine closest prior art Establish objective technical problem Would invention have been obvious? The Problem Solution Approach Non-obvious problem Non-obvious solution

4 4 The Introduction Describe closest prior art Describe problem Do not give away solution No statement of object or aim The Introduction Then refer to claims Then explain solution Tensions with us practice Can be innocuous Needn t be exhaustive

5 5 The Specific Description Key Point Added Matter

6 6 Technical Effect Not excluded subject matter per se Technical effect The Description Significance of added matter issues before the EPO The level of description required Blind man test Technical effect

7 7 The Description Tensions with US practice Cause and effect language The Claims

8 8 Key Point - Unity of Invention Claims must relate to same invention Look for common point of novelty Multiple independent claims must be clear But plug & socket claims ok The Claims Fees in excess of euro flat rate Mechanical apparatus & method, plug/socket IT device, method, CRM, program, computer, client/server

9 9 The Claims Inverted pyramid OK Piston Engine Vehicle Garage The Claims US tensions Fees Apparatus and method Separate claim sets?

10 10 Take Homes 1 More is good Cause and effect Consider separate claim set Recent Case Law

11 11 T0332/00 Essential Features Examiner insisted on inclusion of essential features in claim These went beyond those necessary to distinguish over the prior art TBA: It is only necessary for the claims to distinguish over the closest prior art T0422/99 Support/Sufficiency Method of autoclaving syringes Evidence showed would not work for all types of syringe Specification did not teach which types it would work with Claims could not be worked over full scope - revoked

12 12 T0389/01 Added Matter Claims had been amended to recite specified range of water content Specification provide range values in conjunction with other constituents But water content could not be specified in isolation Invalid for added matter T0049/04 Technical Effect Automatic splitting up of text on a display Improved readability Distinguished from aesthetic enjambment in poetry Solution of technical problem - patentable

13 13 Take Homes 2 EPO understands claims Added matter really is that strict Specify technical effect Operational Issues

14 14 Direct EP Specification Description Claims Drawings Abstract Other information Applicant Fees Basics 1 Filing, search and claims Basics 2 Direct EP Within 16 months Statement of inventorship Certified copy Subsequently Search (EESR) Publication Pay examination & designation fees Examination

15 15 Basics 3 Grant formalities Approve text Pay grant and printing fees Patent published Select validation states Perform national validation Basics 4 EP ex-pct Within 31 months of priority Request regional entry Pay search/examination fees Pay designation fees Pay claims fees Proceeds as normal EP

16 16 Procedural Issues EESR Auxiliary requests Oral proceedings and beyond Key Point Cheap and powerful post-grant opposition in place For once US copies us!

17 17 Opposition Nuts and Bolts Legal basics Procedural basics Tricks of the trade Legal Basics Used to attack patent centrally Must be filed within 9 months Available grounds: Unpatentable Insufficient Added matter Not available lack of support, entitlement, unity of invention

18 18 Procedural Basics Must be complete on filing No discovery, little cross examination All on papers save short hearing One tier of appeal Nature of the hearing Legal effect Take Homes 3 Procedurally straightforward High level of inventive step Prosecution aspects very different from the US

19 19 Conclusion A good US patent will make a good EP patent Understand added matter issues Stress technical features and advantages Consider alternate claim sets Gwilym Roberts Kilburn & Strode groberts@kstrode.co.uk