United Kingdom Royaume Uni Vereinigtes Königreich. Report Q193

Transcription

1 United Kingdom Royaume Uni Vereinigtes Königreich Report Q193 in the name of the United Kingdom Group by Geoffrey BAYLISS, Graham BOON, Duncan WHITE, Ian LOVELESS, David HARRISON, David JACOBSEN, Sebastian MOORE and Michelle PRATT Divisional, Continuation and Continuation in Part Patent Applications Questions I) Analysis of the current law United Kingdom 1) Are divisional, continuation or continuation in part applications, respectively, available under your national or regional law? Divisional applications are available under UK Law. Continuation in part applications can not validly be filed. Upon filing, the subject matter disclosed and claimed in a divisional application may be identical to its predecessor, i.e. it may be a continuation application as defined. 2) What is the justification behind allowing the filing of divisional, continuation and continuation in part applications in your law? An application as filed or as amended may relate to more than one invention, or to a group of inventions which are linked so as to form a single inventive concept. It is, however, a requirement that a patent may be granted for one invention, or to a group of inventions which are linked so as to form a single inventive concept. Thus, filing divisional applications enables the applicant to obtain protection for all of the inventions contained within an application. 3) Under what circumstances and conditions may divisional, continuation and continuation in part applications (or combinations thereof) be filed in your national or regional patent system? A divisional application may be filed in response to an objection raised by the Patent Office, or of the applicant s own volition. 4) Are cascades of divisional, continuation and continuation in part applications allowed, i.e. is it possible to file a divisional, continuation or continuation in part application on the basis of another divisional, continuation or continuation in part application? Yes, cascades of divisional applications are allowed. However, the practice of filing a series of cascading divisionals is limited by the overall period for putting the application in order (rule 34 period). The rule 34 period is the time period within which an application must be placed in compliance with the Act and Rules if a patent is to be granted thereon. This period is four years and six months from the earliest declared priority date, or from the filing date if no priority is claimed. A divisional application must be brought into compliance with the Act and Rules within the same period as the expiration of the rule 34 period of the parent. 1

2 5) At what time during the prosecution of the parent application may divisional, continuation or continuation in part applications be filed? A divisional application may be filed at any time up to three months before the end of the time period for putting applications in order (the rule 34 period), with the proviso given below: It is prohibited to file a divisional application after a) the earlier application has been refused, withdrawn, or treated as withdrawn, or it is taken to be withdrawn; or b) the earlier application has granted. Where the first Examination Report is made under Section 18 (4) i.e. the application is already in compliance with the Act and Rules, the time period for filing a divisional application is limited to two months from the date of such a report. 6) Is it a requirement for filing an application that is a divisional, continuation or continuation in part of an original application (or of another divisional, continuation or continuation in part thereof) that the original application (or the direct parent application, or both) is still pending at the time of filing of the divisional, continuation or continuation in part application? The immediate predecessor must be pending at the time the divisional application is filed. The original application need not be pending in order to file a second (or later) generation divisional application from the first (previous) divisional application. 7) Is it a requirement that the original application (or the direct parent application, or both) is still pending throughout the prosecution of a divisional, continuation or continuation in part application derived therefrom? 8) Are there any restrictions as to what may be included in a divisional, continuation or continuation in part application? Under the present form of section 76, the position is that, while a divisional application containing new matter is allowed to be filed initially, it will not be allowed to proceed unless (and until) it is amended so as to exclude the additional matter. If a divisional application contains new matter by error or mistake, correction may also be possible and reference may be made to the parent application for evidence that nothing other than the offered correction was intended. 9) In particular, may the description and/or claims contain or claim matter that was not contained or claimed in the original application, or other application from which the divisional, continuation or continuation in part application derives? As noted above, a divisional application which contains additional matter, that is, subject matter extending beyond that disclosed in the earlier application as filed, may be filed, but shall not be allowed to proceed unless it is amended so as to exclude the additional matter. While there is no objection as such that the claims of a divisional application are broader than those of the parent, it will not be possible to obtain valid claims in a divisional application which are broader in scope than those that could have validly been obtained on the basis of the disclosure in the parent application. There is no requirement for the subject matter claimed in the divisional application to be contained in the claims of the parent application. 2

3 10) Is it possible to extend the patent term in respect of matter contained in the original application by filing divisional, continuation or continuation in part applications, including divisional, continuation or continuation in part applications containing added matter, to the extent the addition of new matter is allowed? 11) Is double patenting permitted or must the matter claimed in divisional, continuation or continuation in part applications be deleted from the claims of the original application, or other application from which the divisional, continuation or continuation in part application derives? In practice double patenting is not permitted under UK Law. 12) Does it matter in this respect whether the divisional, continuation or continuation in part application was filed in response to a restriction requirement issued by the patent granting authority? The substantive requirements for filing a divisional application under UK law are the same irrespective of whether the application was filed in response to a requirement of the UK Intellectual Property Office, or by the applicant s own volition. European Patent Convention 1) Are divisional, continuation or continuation in part applications, respectively, available under your national or regional law? Divisional applications are available under the European Patent Convention. It is not possible to file a continuation in part application. At present, upon filing, the subject matter disclosed and claimed in a divisional application may be identical to its predecessor, i.e. it may be a continuation application as defined. It is noted, however, that in a letter of 11 July 2006 to the Enlarged Board of Appeal, the President of the EPO says that he would welcome jurisprudence as to whether filing a divisional application which is identical to the parent application constitutes an abuse of proceedings. 2) What is the justification behind allowing the filing of divisional, continuation and continuation in part applications in your law? An application as filed or as amended may relate to more than one invention, or to a group of inventions which are linked so as to form a single inventive concept. It is, however, a requirement that a patent may be granted for one invention, or to a group of inventions which are linked so as to form a single inventive concept. Thus, filing divisional applications enables the applicant to obtain protection for all of the inventions contained within an application. 3) Under what circumstances and conditions may divisional, continuation and continuation in part applications (or combinations thereof) be filed in your national or regional patent system? A divisional application may be filed in response to an objection raised by the Patent Office, or of the applicant s own volition. 4) Are cascades of divisional, continuation and continuation in part applications allowed, i.e. is it possible to file a divisional, continuation or continuation in part application on the basis of another divisional, continuation or continuation in part application? Yes, cascades of divisional applications are at present allowed under European patent law. However, questions relating to such applications have been referred to the Enlarged Board of Appeal under reference G1/06. 3

4 5) At what time during the prosecution of the parent application may divisional, continuation or continuation in part applications be filed? A divisional application may be filed up to the day before the publication of a mention of grant in the European Patent Bulletin. 6) Is it a requirement for filing an application that is a divisional, continuation or continuation in part of an original application (or of another divisional, continuation or continuation in part thereof) that the original application (or the direct parent application, or both) is still pending at the time of filing of the divisional, continuation or continuation in part application? The immediately preceding parent application must be pending, i.e. not granted, refused, withdrawn, or deemed withdrawn, at the time the divisional application is filed. If an application is refused and an appeal is filed against the decision to refuse, a divisional application may be filed before the decision in appeal. The divisional application is unaffected by the outcome of the appeal. However, the status of a divisional application filed while an appeal against the decision to grant a patent is pending depends on the outcome of the appeal (J28/03). This is because a divisional application may not be filed on a granted patent. 7) Is it a requirement that the original application (or the direct parent application, or both) is still pending throughout the prosecution of a divisional, continuation or continuation in part application derived therefrom? 8) Are there any restrictions as to what may be included in a divisional, continuation or continuation in part application? A divisional application may be filed only in respect of subject matter which does not extend beyond the content of the earlier application as filed; in so far as this provision is complied with, the divisional application shall be deemed to have been filed on the date of the earlier application and shall have the benefit of any right to priority (Article 76 EPC). Pursuing broader protection in a divisional application, or pursuing subject matter not previously claimed in the parent application therefore carries an element of risk under the EPO s strict rules concerning added subject matter in that an applicant might inadvertently introduce subject matter that extends beyond the content of the earlier application. In the past, it has been the practice of the EPO to permit an applicant to remove any additional subject matter contained in a divisional application subsequent to filing. The inclusion of new subject matter on filing a divisional application was therefore not an unrecoverable defect. However, on 26 August 2005, Decision T39/03 of an EPO Board of Appeal stated that a divisional application which contains added subject matter is an invalid application and cannot be saved by removing the added subject matter subsequently. Since this is an important point of law, the question of whether or not this Decision is correct has been referred to the Enlarged Board of Appeal of the EPO under reference G1/05 (which has been consolidated with case G1/06 see below) for a final ruling. In the meantime, the EPO have stated that in proceedings before the EPO first instance departments (examining and opposition divisions) proceedings will be stayed until the issuance of the decision of the Enlarged Board of Appeal only where the two following conditions are met: the stay of proceedings has explicitly been requested by at least one of the parties to the proceedings, and in the opinion of the examining or opposition division, the outcome of examination or opposition proceedings depends entirely on the decision of the Enlarged Board of Appeal. 4

5 9) In particular, may the description and/or claims contain or claim matter that was not contained or claimed in the original application, or other application from which the divisional, continuation or continuation in part application derives? The claims of a divisional application as filed need not be limited to the subject matter already claimed in claims of the parent application. However, their subject matter may not extend beyond the content of the earlier application as filed (Art 76(1) (Guidelines for Examination in the European Patent Office, C VI 9.1.4). However, see Decision T720/02 (discussed below). Two Decisions of the EPO Boards of Appeal (Decisions T720/02 dated 23 September 2004 and T1409/05 dated 30 March 2006) have questioned the status of divisional applications. The first of these Decisions states that when a divisional application is filed out of an application that is itself a divisional application, this second generation divisional application may only claim subject matter which was encompassed by the original claims of the first generation divisional application. The second Decision, reached by a different Board of Appeal, could not find anything in the European Patent Convention to support the first Decision and, due to the disagreement between the two Boards, this point of law has also been referred to the Enlarged Board of Appeal under reference G1/06 for a ruling. 10) Is it possible to extend the patent term in respect of matter contained in the original application by filing divisional, continuation or continuation in part applications, including divisional, continuation or continuation in part applications containing added matter, to the extent the addition of new matter is allowed? 11) Is double patenting permitted or must the matter claimed in divisional, continuation or continuation in part applications be deleted from the claims of the original application, or other application from which the divisional, continuation or continuation in part application derives? The European Patent Office Guidelines provide that: parent and divisional applications may not claim the same subject matter. This means not only that they must not contain claims of substantially the same scope, but also that one application must not claim the subject matter claimed in the other, even in different words. The difference between the claimed subject matter must be clearly distinguishable. However, one application may claim its own subject matter in combination with that of the other application; e.g. if the parent and divisional applications claim separate and distinct elements A and B respectively which may operate in combination, one of the applications may also include a claim for A plus B (Guidelines for Examination in the European Patent Office, C VI, 9.1.6). The Board of Appeal in T 0587/98 held that there is no express or implicit provision in the EPC which prohibits the presence in a divisional application of an independent claim explicitly, or as a notional claim arrived at by partitioning of an actual claim into notional claims reciting alternatives which is related to an independent claim in the parent application in such a way that the parent claim includes all the features of the divisional claim combined with an additional feature. 12) Does it matter in this respect whether the divisional, continuation or continuation in part application was filed in response to a restriction requirement issued by the patent granting authority? 5

6 II) Proposals for adoption of uniform rules 1) In the opinion of your National or Regional Group, what are the advantages, for applicants and third parties, of allowing the filing of divisional, continuation or continuation in part patent applications? Advantages for applicants: Divisional and continuation applications If the applicant files an application relating to more than one invention, or to a group of inventions which are not linked so as to form a single inventive concept, under current UK and European Patent Law, it is not possible to obtain patent protection for more than one of these inventions (or group of inventions which are linked so as to form a single inventive concept) in a single application. Permitting the filing of divisional applications allows the applicant to obtain protection for these further inventions (or group of inventions which are linked so as to form a single inventive concept). Allowing applicants to file divisional applications enables them to keep an application pending. There is, however, less scope for this in the UK in view of the time limit for putting the application in order (the rule 34 period). Continuation in part applications The applicant may add additional information omitted from the original application. Advantages for third parties: It is an advantage that a patent may be granted only for one invention, or to a group of inventions which are linked so as to form a single inventive concept, so that third parties have some clarity as to the scope of protection that they may wish to avoid. By enforcing a one invention = one patent rule and controlling how and when divisional applications may be filed, a third party can more easily determine what they may, or may not do. Without such limitations, a patent applicant could take a scattergun approach within a single application giving greater uncertainty to third parties. 2) In the opinion of your National or Regional Group, what are the disadvantages, for applicants and third parties, of allowing the filing of divisional, continuation or continuation in part patent applications? Disadvantages for applicants: The disadvantages for the applicant for enforcing the filing of divisionals are i) increased cost and ii) reducing the chance of giving uncertainty to third parties. Disadvantages for third parties: Allowing applicants to keep an application pending indefinitely leads to a degree of added uncertainty for third parties. 3) In the opinion of your National or Regional Group, should the filing of divisional, continuation or continuation in part patent applications, respectively, be permissible? Yes. Filing of divisional and continuation patent applications should be possible. It should not be possible to file continuation in part applications. 6

7 4) If international harmonisation were to be achieved in respect of the rules governing divisional or continuation patent applications, what should be the common rules in respect of the circumstances and conditions in which divisional, continuation or continuation in part applications may be filed? The immediate predecessor should be pending. 5) In particular, should a harmonised system permit the addition in a divisional, continuation or continuation in part application of matter that was not contained in the original application as filed? The content of the divisional or continuation application should only be that of the immediate predecessor with the possibility of going back to the content of the (great) grandparent if that is still pending. 6) Should it be permitted to use a divisional, continuation or continuation in part patent application to obtain new examination and decision of an application that contains claims that are identical or essentially identical with claims finally rejected in the course of the prosecution of the parent application? Should there be an exception where case law on the substantive conditions for patent grant of the patent granting authority has changed since the parent application was rejected? Would this possibility adequately take into account the interests of third parties in legal certainty? The answer to the first question is yes. Accordingly, the latter two questions are not applicable. 7) Should it be possible to extend the patent term in respect of matter contained in the original application by filing divisional, continuation or continuation in part applications, including divisional, continuation or continuation in part applications containing added matter? 8) In the opinion of your Group, would it be justified to limit the access to filing divisional, continuation or continuation in part applications primarily with the object of limiting the backlog of patent granting authorities? 9) In the opinion of your Group, would it be desirable, in the interest of legal certainty of third parties, if databases of patent granting authorities ensured that a clear link was always indicated between original patent applications and all divisional, continuation or continuation in part applications derived therefrom? Yes. National and Regional Groups are invited to make any additional comment concerning divisional, continuation and continuation in part applications which they find relevant. To balance the need to allow an applicant to have time to consider which concepts to protect, against the need for clarity for third parties, it would be advantageous to encourage applicants to file divisional applications early in the prosecution of an application. Attempting to constrain how and when divisional applications may be filed based on an assessment of scope would not give sufficient clarity to third parties. Some form of time limit for filing divisionals would be give greater clarity to third parties, without significantly diminishing the rights of the applicant to have time to consider which of several concepts to protect. For example, a time limit of say 3 years from the issuance of the first Examination Report on the original parent application may be set, outside which divisional applications may not validly be filed. 7

8 This would give the applicant an opportunity to comply with the unity of invention requirement and to allow them to obtain protection for a plurality of inventions present in the original application, whilst limiting the period of uncertainty for third parties. It is noted, however, that due to the discrepancy in the length of time that it currently takes for Examination Reports to issue within different subject areas, the length of time from filing an application to filing divisional applications under this proposal will vary greatly. Summary The arrangements for filing divisional or continuation applications under the UK Patents Act and the European Patents Convention are reasonable given that an application must be restricted to a single inventive concept. On filing an application, the applicant may wish to include what might be regarded as a number of different inventive concepts on the basis that he may not know until searches have been carried out which, if any, it will be possible to obtain worthwhile patent protection for. Moreover, an application may be filed with broad claims directed to one inventive concept from which there are a number of subsidiary concepts and after searches have been carried out, the original broad inventive concept may prove to be not patentable but a plurality of the subsidiary concepts could be patentable but not all in the same application. The ability to file divisional applications in either of these circumstances is considered to be a reasonable course to be open to the applicant. However, it is not unreasonable to provide certainty for third parties and given that European patent applications in particular can remain pending for many years, it would not seem inappropriate to the Group that a time restriction be placed on the filing of divisional applications from the filing date of the original application. Possibly that time restriction could be linked to the issue of the first Examination Report on the parent application and provide a period of say three years from that date for any divisional application to be filed. That aside, the Group would wish the present flexibility to both UK and European systems to be reserved and would prefer the restrictions proposed in some recent Board Decisions mentioned above not to be implemented. Résumé Les dispositions prévues par la loi britannique sur les brevets ( UK Patents Act ) et la Convention sur le brevet européen pour le dépôt de demandes divisionnaires ou de demandes en continuation sont estimées raisonnables dans la mesure où la demande doit titre limitée à un concept inventif unique. Lors du dépôt d une demande, le demandeur pourra souhaiter inclure différentes notions pouvant être considérées comme des concepts inventifs distincts, étant entendu qu il ne saura pas, tant que les recherches n auront pas été effectuées, pour lesquels il lui sera possible d obtenir une protection de brevet valide. En outre, il est possible de déposer une demande renfermant des revendications élargies portant sur un concept inventif duquel peuvent titre dérivés plusieurs concepts subsidiaires, et vis à vis duquel, après exécution des recherches, il pourra s avérer que le concept inventif élargi d origine ne peut pas faire l objet d un brevet mais que plusieurs des concepts subsidiaires peuvent, eux, faire l objet d un brevet dans le cadre d applications différentes. La possibilité de déposer des demandes divisionnaires dans ces circonstances est considérée comme une option raisonnable ouverte au demandeur. Toutefois, il n est pas déraisonnable d apporter aux tierces parties certaines certitudes et, étant donne que les demandes de brevets européens en particulier peuvent rester en attente de validation pendant de nombreuses années, il ne semble pas contre indiqué au Groupe qu une restriction temporelle soit placée sur le dépôt de demandes divisionnaires à compter de la date de la demande d origine. II serait éventuellement possible que la restriction temporelle corresponde à l émission du premier Rapport d Examen de la demande de brevet et stipule une période, par exemple de trois ans à compter de cette date, pour le dépôt de toutes demandes divisionnaires. Tout bien considéré, le Groupe souhaiterait que la souplesse actuelle offerte par les systèmes britannique et européen soit préservée et préférerait que les restrictions suggérées dans les récentes Décisions de la Chambre mentionnées ci dessus ne soient pas mises en application. 8

9 Zusammenfassung Die Vereinbarungen zur Einreichung von Teil oder Weiterbehandlungsanmeldungen unter dem britischen Patentgesetz und dem europäischen Patentübereinkommen sind angesichts der Tatsache, dass eine Anmeldung auf ein einziges erfinderisches Konzept beschränkt sein muss, ausreichend. Beim Einreichen einer Anmeldung möchte der Anmelder unter Umständen eine Anzahl so genannter verschiedener erfinderischer Konzepte berücksichtigen, da er eventuell nicht weiss, für welche, falls irgendwelche, er einen erstrebenswerten Patentschutz erlangen kann, bis die Recherchen durch geführt worden sind. Eine Anmeldung kann ausserdem mit einem breiten Schutzbegehren in Bezug auf ein erfinderisches Konzept eingereicht werden, zu dem es eine Anzahl Nebenkonzepte gibt, und das breite erfinderische Konzept kann sich nach erfolgten Recherchen als nicht patentierbar erweisen, während eine Mehrzahl der Nebenkonzepte patentierbar sein könnten, aber nicht alle in derselben Anmeldung. Die Möglichkeit, in jedem dieser Umstände Teilanmeldungen einzureichen, gilt als angemessenes Vorgehen, die dem Anmelder offen steht. Es ist jedoch nicht unangemessen, Drittparteien Gewissheit zur Verfügung zu stellen und weil vor allem europäische Patentanmeldungen viele Jahre schwebend sein können, erachtet es die Gruppe als nicht unangebracht, dass für die Einreichung von Teilanmeldungen eine Zeiteinschränkung vom Einreichungssdatum der ur sprünglichen Anmeldung an auferlegt wird. Eine solche Zeiteinschränkung könnte möglicherweise in Verbindung gebracht werden mit der Ausgabe des ersten Prüfungsberichtes zur Hauptanmeldung und könnte eine auferlegte Zeitspanne von beispielsweise drei Jahren für die Einreichung einer Teilanmeldung vorsehen. Die Gruppe möchte sich ausserdem die gegenwärtige Flexibilität der britischen sowie der europäischen Systeme vorbehalten und zöge es vor, wenn einige der in oben erwähnten kürzlich getroffenen Entscheidungen der Kammer nicht implementiert würden. 9