Recent changes to the European Patent System. Update concerning Italian Patent Law
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1 Foreign Department: Viale Lancetti n. 17 Phone: Facsimile: Matteo Baroni E- mail: Recent changes to the European Patent System Update concerning Italian Patent Law
2 Introduction 1. EPC London Agreement 3. Searches for Italian Patent Applications
3 Entry into force in 1977 European Patent Convention Main objectives: 1) European co-operation in patent protection single procedure for grant of patents 2) European Patent Convention A VIEW OF THE EPC 2000
4 REASONS FOR EPC 2000 A VIEW OF THE EPC 2000 Since EPO grown considerably, now 34+4 member states This requires organisational adjustment in terms of: - changes to the organisational structure - substantive patent law changes
5 European Patent Organisation - Member States
6 A VIEW OF THE EPC 2000 The contracting states The following states are currently members of the European Patent Organisation: Austria; Belgium; Bulgaria; Croatia; Cyprus; Denmark; Estonia; Finland; France; Germany; Greece; Iceland; Ireland; Italy; Lithuania; Latvia; Luxemburg; Malta; Monaco; Norway; Netherlands; Poland; Portugal; United Kingdom; Czech Republic; Romania; Slovakia; Slovenia; Spain; Sweden; Switzerland/Liechtenstein; Turkey and Hungary. Extension states States recognising European Patents: Albania; Bosnia and Herzegovina; the former Yugoslav Republic of Macedonia; Serbia (legal successor of the former State Union of Serbia and Montenegro) States invited to accede to the EPC States which have been invited to accede to the EPC: the former Yugoslav Republic of Macedonia
7 EPC Reasons for change A VIEW OF THE EPC 2000 A) To take into account developments in international patent law (TRIPS, PLT, PCT) B) To respond to users' needs/expectations C) To bring text in line with case law of the Enlarged Board of Appeal D) To transfer details from Articles to Implementing Regulations to ensure greater flexibility
8 A VIEW OF THE EPC 2000 EPC 2000 entered into force on December 13th, 2007
9 A VIEW OF THE EPC 2000 Major Changes MAJOR CHANGES 1. Request for limitation or revocation 2. Priority Right 3. Date of filing 4. Exceptions to patentability 5. Protection of compounds for medical use 6. Conflicting prior art 7. Protocol on the Interpretation of Art Petition for review 9. Further processing 10. Re-establishment of rights
10 A VIEW OF THE EPC 2000 New Article 105a NEW Article 105a - Request for limitation or revocation (1) At the request of the proprietor, the European patent may be revoked or be limited by an amendment of the claims. The request shall be filed with the European Patent Office in accordance with the Implementing Regulations. It shall not be deemed to have been filed until the limitation or revocation fee has been paid. (2) The request may not be filed while opposition proceedings in respect of the European patent are pending
11 A VIEW OF THE EPC 2000 New Article 105a Request for limitation or revocation - European Patent Office shall decide to limit or revoke the European patent in accordance with the Implementing Regulations. Otherwise, it shall reject the request. -The decision to limit or revoke the European patent shall apply to the European patent in all the Contracting States in respect of which it has been granted. - Limitation fee: 1000 Euros - Revocation fee: 450 Euros
12 A VIEW OF THE EPC 2000 New Article 105a Request for limitation or revocation - Limitation request can not be filed pending an opposition; - Limitation request can be filed several times; - Examination of request will consider Art. 84 and Art. 123 (2)(3).
13 A VIEW OF THE EPC 2000 Article 87 Article 87 - Priority right (1) Any person who has duly filed, in or for (a) any State party to the Paris Convention for the Protection of Industrial Property or (b) any Member of the World Trade Organization, an application for a patent, a utility model or a utility certificate, or his successor in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application
14 Priority right may be re-established, but the request must be filed within 2 months from deadline of Art. 87(1) EPC if all due care required by the circumstances has been taken A VIEW OF THE EPC 2000 Article 87
15 Date of filing A VIEW OF THE EPC 2000 Date of filing (1) The date of filing of a European patent application shall be the date on which the documents filed by the applicant contain: (a) an indication that a European patent is sought; (b) information identifying the applicant or allowing the applicant to be contacted; and (c) a description or reference to a previously filed application.
16 A VIEW OF THE EPC 2000 Date of filing [Continued] (2) A reference to a previously filed application under paragraph 1(c) shall state the filing date and number of that application and the Office with which it was filed. Such reference shall indicate that it replaces the description and any drawings. (3) Where the application contains a reference under paragraph 2, a certified copy of the previously filed application shall be filed within two months of filing the application. Where the previously filed application is not in an official language of the European Patent Office, a translation thereof in one of these languages shall be filed within the same period.
17 Exceptions to patentability A VIEW OF THE EPC 2000 Exceptions to patentability Art. 52(4) EPC 1973 has been transferred to Art. 53(c) EPC 2000 as a new exception to patentability (treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body) requirement for publication has been deleted from Art. 53(a); (inventions the commercial exploitation of which would be contrary to "ordre public" or morality) added that invention falls under Art. 53(a) only if it is exploited commercially
18 Protection of compounds for medical use A VIEW OF THE EPC 2000 Protection of Compounds Art. 54(4) EPC 2000 corresponds to Art. 54(5) EPC 1973 (first medical use) Art. 54(5) EPC 2000 provides for the possibility to have protection for further, more restricted purposerelated product protection (second or further medical use) of a substance already known to be used in medicine
19 A VIEW OF THE EPC 2000 Conflicting Prior Art Conflicting prior art Validly published earlier application belongs to state of the art under Art. 54(3) for later application: EPC 1973 only for validly designated states in common if designation fees for common states for earlier application have been paid EPC 2000 for all EPC member states regardless of designation
20 A VIEW OF THE EPC 2000 Protocol on interpretation of Art. 69 Protocol on the Interpretation of Art. 69 New Art. 2 of Protocol: "For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims."
21 Petition for review - new Art. 112a A VIEW OF THE EPC 2000 New Article 112a Enlarged Board of Appeal given competence to decide on petitions for review Only fundamental procedural defects can be basis for petition for review Petition for review is no means to review the application of substantive law Petition has no suspensive effect
22 Petition for review - new Art. 112a A VIEW OF THE EPC 2000 New Article 112a Grounds: Wrong composition of the Board of Appeal Member took part in decision in breach of Art. 24(1) EPC or despite being excluded under Art. 24(4) EPC Board of Appeal included person not appointed as member
23 Petition for review - new Art. 112a Grounds (continued): Fundamental violation of Art. 113 EPC occurred A VIEW OF THE EPC 2000 New Article 112a Any other fundamental procedural defect defined in the Implementing Regulations occurred Criminal act may have had an impact on decision
24 Petition for review - new Art. 112a Two stage examination A VIEW OF THE EPC 2000 New Article 112a EBOA consisting of two legally and one technically qualified member examines petition and decides whether it is rejected as clearly inadmissible or unallowable Those allowed: EBOA consisting of four legally and one technically qualified member decide on petition
25 Petition for review - new Art. 112a A VIEW OF THE EPC 2000 New Article 112a If petition is allowed: EBOA shall set aside Board of Appeal's decision, and Re-open proceedings before the Boards of Appeal
26 A VIEW OF THE EPC 2000 Article 121 Article Further processing of the European patent application (1) If an applicant fails to observe a time limit vis-à-vis the European Patent Office, he may request further processing of the European patent application. (4) Further processing shall be ruled out in respect of the time limits in Article 87, paragraph 1, Article 108 and Article 112a, paragraph 4, as well as the time limits for requesting further processing or re-establishment of rights.
27 A VIEW OF THE EPC 2000 Article 121 Further processing of the European patent application Ruled out for (not exaustive): - Further processing - Re-establishment of rights - Maintenance fees - Priority deadline - Appeal filing - Petition for review - Filing biological material number - Filing of priority document - Opposition procedure - Translation of application in EPO language not filed in time
28 Re-establishment of rights (Art. 122) A VIEW OF THE EPC 2000 Article 122 Not available for: - deadline for re-establishment of rights; - if further processing available.
29 London Agreement LONDON AGREEMENT Basic object: reduction of post-grant costs due to translations
30 London Agreement At present: in each Country in which the granted European patent has to be validated, it is necessary to pay a local fee and to file a translation in local language According to the London Agreement: In Countries which ratified or accessed the London Agreement, it will be no more necessary to file a complete translation into the local language
31 London Agreement The London Agreement will enter into force on May 1st, 2008
32 Italian Update ITALIAN PATENT LAW: UPDATE The Italian Patent and Trademark Office has reached an agreement with the European Patent Office according to which the European Patent Office will carry out prior art searches for Italian Patent Applications filed on or after July 1st, 2008.
33 Italian Update Applicant Italian PTO EPO SEARCH EPO Italian PTO Applicant
34 Italian Update Translation of the claims into one of the official EPO languages (English, German, French) can be provided by the Applicant. Otherwise, upon payment of a surcharge, the translation can be carried out by the Italian PTO.
35 Italian Update If a European Patent Application is filed later, a discount of the search fee is envisaged.
36 Thank you Matteo Baroni BUGNION S.p.A. Intellectual Property Consultants - Viale Lancetti, Milan ITALY
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