IP LAW HARMONISATION: BEYOND THE STATUTE Harmonisation of the statutes Harmonisation of Patent Office practice Harmonisation of Court practice Dealing with increasing workloads Tony Maschio & John Lloyd REAL KNOWLEDGE REAL EXPERIENCE REAL RESULTS
Harmonisation of the statutes US Statute dates from 10 April 1790 EPC: 1979 Chinese: 1985 Japanese: 1899, revised 1959 Fundamental differences in concept: First to invent vs. first to file Novelty Utility Medicine Software
PLT and SPLT PLT (2000) harmonised formal requirements; reflected in EPC2000, UK Patents Act, PCT, etc. SPLT proposal submitted to WIPO General Assembly in 2004 by US and Japan. Proposed to begin discussions with the following issues: Definition of Prior Art Grace Period Novelty Non-obviousness/Inventive Step No agreement on future direction since 2005
Legal differences
The EPC; a harmonised patent system Escitalopram decisions: UK High court patent novel and inventive, but revoked for lack of sufficiency UK CA and HoL patent sufficient, maintained Dutch High Court Patent invalid for lack of inventive step German BPG Patent invalid for lack of Novelty and Inventive step. Germany BGH reverses BPG Epilady decisions
Europe further integration Community patent A third option in addition to EPO and National patents No further harmonisation potential Unified Patent Litigation System (UPLS) Succeeds EPLA proposals Centralised litigation in ECPC Single Court of Appeal Judges of different nationalities A single decision aids harmonisation!
Harmonisation between US and European Courts? Courts and Patent Offices in the US and Europe have established a long history of patent practice For example: Doctrine of equivalents Added subject matter File-wrapper estoppel Even in Europe, Courts are not harmonised (yet) despite the harmonisation of patent law in 1979 (30 years!) There are fundamental differences between US and European practices which will be more difficult to harmonise than patent law
Claim drafting - European approach The invention is claimed in general terms, with nested subclaims directed to aspects of the embodiments. Possibly uses functional language. like concentric circles. The broadest claim, on the outside, has the widest coverage. Increasingly narrow claims nestle within the circle.
US approach Some nesting, but more claims directed to distinct embodiments more like viewing the same object from different angles
When an amendment is forced by the prior art Imagine prior art exists which anticipates the broadest claims, but not certain embodiments. EP claims: no problem, nested claims provide plenty of fallbacks. But amendment is essential. In EPO: the broadest protection possible can be defined. In the US: no claim survives unamended; implications for scope during infringement proceedings US claims: Again, no problem. Several embodiments are novel. In US: Some claims are amended or deleted. Key claims survive unamended. In EPO: no basis to support broadest possible claim.
The problem Even best practice in Europe or the US may not deliver ideal results in the other jurisdiction. In addition, there are procedural differences Claim numbers: EPO 15; US PTO - unlimited Independent claims: EPO 1/category Divisional v Continuation practice Linear v. iterative prosecution Unity of invention v. restriction 1 st to file v. 1 st to invent US filing dates; 102e Added subject matter Enablement/sufficiency
Trilateral projects Cooperative projects between the USPTO, EPO and JPO, set up in 1983 Worksharing project one of its activities Includes PPH, PDX, Comparative studies Several studies look at differences in substantive law Inventive step/obviousness study Over 90 pages long Fundamental differences in how inventive step is assessed: JPO comparison with prior art EPO problem/solution analysis US PTO Graham v. John Deere, KSR v. Teleflex
Prosecution highways 95% of PPH applications in the USPTO are granted where the OFF is the JPO Non-PPH applications have a 45% allowance rate 70% allowance rate for PPH applications in the JPO where USPTO is OFF.
Why? A European patent in Europe is a better IPR than a US patent in Europe; and vice versa. A US patent in the US is a better IPR than a Japanese patent in the US. Potential advantages: Cost Speed Disadvantages Scope Enforceability
Handling excessive workloads - deharmonisation at the EPO? REAL KNOWLEDGE REAL EXPERIENCE REAL RESULTS
The EPO are implementing changes that will severely impact Applicants The EPO needs to reduce its workload and is implementing its own changes to try to address it Many (all) of the changes are not favourable Some of these changes impact filing cost and filing strategy Applicants need to plan and budget ahead more than ever to take account of these changes to try and minimise their impact on European filing strategy
Some of the changes Excess claims fees (changes already implemented) Rules relating to the time limits for filing divisional applications (changes will be implemented 1 April 2010)
Excess claims fees These are fees that fall due for each claim over a certain number The first 15 claims are free Claims 16-50 cost 200 Euros per claim Claims 51 and beyond cost 500 Euros per claim! Deep pockets are now needed for European patent applications with lots of claims
Counting the cost of excess claims fees Number of claims Before 1 April 2008 On/After 1 April 2009 15 225 200 25 675 600 55 2,025 1,800 100 4,050 3,600 0 2,000 1,700 9,500 8,500 32,000 28,500
Can filing strategy reduce costs? Sometimes it is necessary to file more than 15 claims or more than 50 claims to cover the full scope of an invention File a single application or multiple applications with fewer claims in each? 45 claims 15 claims 15 claims 15 claims Is one of these strategies more cost effective?
Single application 70000 60000 50000 Cost (Euros) 40000 30000 20000 10000 0 15 30 45 60 75 90 105 120 Number of claims
Multiple applications 70000 60000 50000 Cost (Euros) 40000 30000 20000 10000 0 15 30 45 60 75 90 105 120 Number of claims
Single application vs multiple applications Filing a single application vs multiple applications may derive a cost saving Starting with around 50 claims per each of the multiple applications can begin to achieve a cost saving The saving only starts to have an impact when applications contain large numbers of claims (>90) Attorney charges for each of the applications may erode the cost saving Disharmony of practice?
Changes to divisional applications
An important tool A divisional application is an application that is divided from a parent application and retains the date of filing of the parent. Can form a very important part of a filing/prosecution strategy Flexible tool All change on 1 April 2010 (or 1 October 2010)
Current EPO practice File application Day before publication of mention of grant Divisional application(s)
1 April 2010 File application First Examination Report on earliest application or First Lack of Unity objection 2 Years Time limit for filing divisionals
1 April 2010 Examination Report or Lack of Unity objection must be from the EPO Examining Division PCT/EESR does not trigger the time limit The Examination Report is the Examination Report issued on the earliest application no more sequences of divisionals No extension of time no Further Processing What about those applications on which the time limit has already expired or is already running on 1 April 2010?
Transitional provisions New rules only apply to applications filed on or after 1 April 2010 If the time limit has already expired on 1 April 2010, a divisional may still be filed within 6 months - up to 30 September 2010 For any applications pending on 1 April 2010 and on which the time limit has already been triggered, the time limit will not expire before 30 September 2010 Earliest deadline for filing divisional applications will be 30 September 2010 unless the application is granted before then
Fundamental change in EPO practice These changes will have a big (negative) impact on Applicants Portfolio review is essential Refusal of application will need to be taken to appeal Will this change reduce the EPO s workload? Further disharmony?
Summary Significant progress has been made, but slowly; EPC, PCT, trilateral, London agreement, PPH The are very few advantages for the user in pursuing harmonised legal models for patent protection at present No significant cost reduction No significant advantages in speed Risks in scope and enforceability The manner in which patent offices manage increasing workloads is inconsistent and leads to disharmony of practice
Contact details Tony Maschio Partner t: +44 (0)20 7556 4258 e: amaschio@eapdlaw.com John Lloyd Associate t: +44 (0)20 7556 4255 e: jlloyd@eapdlaw.com
IP Law Harmonisation: Beyond the Statute Harmonisation of the statutes Harmonisation of Patent Office practice Harmonisation of Court practice Dealing with increasing workloads Tony Maschio & John Lloyd REAL KNOWLEDGE REAL EXPERIENCE REAL RESULTS