IP Part IV: Patent prosecution

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1 IP Part IV: Patent prosecution Tech Transfer course August 2017 Griet Den Herder, PhD, IP Manager

2 Patent prosecution Interaction between applicants and a patent office regarding a patent application Pre-grant prosecution Applying for a patent Negotiating with the patent office to obtain the grant of a patent Post-grant prosecution Opposition

3 The European Patent Convention (EPC) Legal framework for the granting of European patents A uniform procedure for the EPC contracting states European Patent Office (EPO)

4 Patenting procedure

5 Patenting procedure Examination Grant Priority year International Phase National Phase 0 m 12 m 30 m 4-10 y Priority International National Phase Entry

6 Patenting procedure Examination Grant Priority year International Phase National Phase 0 m 12 m 30 m 4-10 y Priority International National Phase Entry

7 Who is allowed to file? Anyone! Applicant = may be any natural or legal person If applicant has no residence or place of business within the territory of an EPC contracting state professional representative needed in all proceedings after the filing

8 Language requirements Any language! When filing with the EPO: all languages accepted Official languages of the EPO English, French, German If not filed in an EPO official language Translation required (2 months from filing) In one of the EPO official languages Language of translation becomes language of proceedings

9 Content of a European patent application Request for grant Description of the invention Claim(s) (Drawings) Abstract

10 When to file? Too early: not enough support, narrow claim scope Too late: competitor has already filed (prior right) or has already published (prior art) Timing is critical!

11 Priority Any person who has duly filed an application for a patent... shall enjoy... in respect of the same invention, a right of priority during 12 months Consequence: the date determining the state of the art and determining which applicant filed first is for all countries determined by the priority date

12 Publish during priority year? Priority filing: 23 August 16: A Priority year Publish A + A* International filing: 23 August 17: A + A* Priority right in respect of the same invention!

13 Patenting procedure Examination Grant Priority year International Phase National Phase 0 m 12 m 30 m 4-10 y Priority International National Phase Entry

14 Patent Cooperation Treaty (PCT) International patent law treaty, since 1970 The PCT contracting states constitute a Union for cooperation in the filing, searching, and examination of applications Unified procedure for worldwide patent filing, but not for worldwide patent grant! PCT application = International application

15 PCT contracting states 1 th August 2017: 152 member states (most of the world, except Jordan, Cambodja, Argentina, Bolivia, Ethiopia, Afghanistan, Myanmar,...)

16 Patenting procedure Examination Grant Priority year International Phase National Phase 0 m 12 m 30 m 4-10 y Priority International National Phase Entry

17 Patenting procedure Examination Grant Priority year International Phase National Phase 0 m 12 m 18 m 30 m 4-10 y Priority International National Phase Entry Publication of patent application

18 Publication Publication of the patent application is NOT the granted patent The granted patent is published after the examination procedure, claim scope is most likely different from the original application! Application content becomes part of the state of the art

19

20 Applicant versus inventor Applicant = who files the patent application The right to a European patent shall belong to the inventor If the inventor is an employee, national law determines the right to a European patent Flemish University Decree: inventions by employees belong to University German Arbeitnehmererfindungsgesetz regulates compensations to inventors/employees... Disputes about entitlement through national courts

21 Inventor is defined as: An inventor should have an intellectual contribution to the claims of the invention. So inventors might change during prosecution when claims are being reduced or amended. A person merely reducing the invention to practice is not considered an inventor: a person who worked with skill and diligence under direction someone who provided a research tool Different from authorship! Also not an inventor: - The person who heads the lab without contribution to conception or reduction to practice - Someone who should be rewarded for hard work - Personal friends, colleagues...

22 Patenting procedure Examination Grant Priority year International Phase National Phase 0 m 12 m 30 m 4-10 y Priority International National Phase Entry

23 and prosecution (VIB) Priority 0 m 23 Aug 16 International 12 m 18 m VIB evaluation 23 Aug 17 PCT (all states) Search Report & Wri en Opinion ~23 Feb 18 Publica on National Phase Entry 30 m 23 Feb 19 Elected states EP US CA AU JP 3 y 5 y 5 y 2 y 7 y Office Ac ons Examination

24 Examination procedure Appeal by Applicant

25 Examining Division (ED) ED consists of three examiners 1 st member, 2 nd member and chairman 1 st member corresponds with the Applicant ED decides together whether to grant or refuse the application The claims are the most important part of the application for the ED, they define the scope or extend of protection Description and drawings are used to interpret the claims

26 Search Reports/ Written Opinions ISR = International Search Report WO = Written Opinion The European search report shall mention those documents... which may be taken into consideration in deciding whether the invention... is new and involves an inventive step

27 ISR example

28

29 Office action example Amended claims contain subject matter beyond the content of the application as filed

30 Amendments during prosecution A patent application may be amended in proceedings (claims) BUT not in such a way that it contains subject-matter which extends beyond the content of the application as filed Claim amendments must be supported by wording in the written description Everything must be in the application, you cannot change wording/add examples etc. Later filed examples may nevertheless be taken into account by the Examiner

31 Office action example Amended claim 1:

32 Refusal If the ED is considering refusal The Applicant has the right to be heard The Applicant can ask to present arguments face to face in Oral Proceedings before the ED If at least two members of the ED are still not convinced refusal

33 Patenting procedure Examination Grant Priority year International Phase National Phase 0 m 12 m 30 m 4-10 y Priority International National Phase Entry

34 Intention to grant At least two members of the ED agree that the application meets the requirements of the EPC R. 71(3) communication Request translation of the claims in the other two official EPO languages Approval of final text Publication of the mention of grant Publication of granted patent

35 and finally a granted Patent A European patent shall... confer on its proprietor from the date of publication of the mention of the grant, in each contracting state in respect of which it is granted, the same right as would be conferred by a national patent granted in that state Belgium: proprietor may forbid third party to make, sell, offer, use, import or stock But how does the scope of the granted claims compare to the scope of the originally filed claims?

36 A granted Patent: the icing on the cake! But not the cake itself... A patent doesn t give you freedom-to-operate If you are prevented from making and selling cakes, having nice icing doesn t help a lot. Essential to ensure freedom to operate before any commercial activity! Patent rights are not absolute, there are restrictions such as: Competition law or other national laws, Private- and experimental/research use exemption.

37 Patenting procedure Examination Grant Priority year International Phase National Phase 0 m 12 m 30 m 4-10 y Postgrant Priority International National Phase Entry

38 Opposition A procedure for third party to challenge the validity of a granted patent Must be filed within 9 months of the mention of grant Allows the introduction of disclosures that may not have been available or found by the ED Allows the public to challenge the ED decision

39 Opposition Division (OD) The patent proprietor and the opponent battle it out amongst themselves The OD takes the final decision OD: three members, at least two did NOT take part in the Examination Proceedings Usually the 1 st examiner from the ED plus two others

40 OD decisions Revoke the patent in its entirety Maintain the patent in amended form Maintain the patent in unamended form (as granted)

41 Patenting procedure Costs

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