since 1908 Raising the Bar, or Baring the Raise - New Strategies for Patent Prosecution in Europe Stefan M. Zech

Contents What was the aim of the EPC 2000 What are the recent changes, and what is to come Continuing to use the EPO What about the National Offices The Community Patent for Europe Summary 07.08.2018

Contents What was the aim of the EPC 2000 What are the recent changes, and what is to come Continuing to use the EPO What about the National Offices The Community Patent for Europe Summary 07.08.2018

What was the Aim of the EPC 2000 In general, the EPC 2000 was conceived to make the application process simpler for the Applicant. In particular, there were numerous significant changes which reduced the chances of an Applicant losing an application by failing to meet a deadline. A great number of deadlines were included in the list of possible cases where “further processing” was allowed, thus giving Applicants a fall back in nearly all cases to revive and maintain an application as pending. Also, relevant case law was often included in the wording of the Articles and Rules, to avoid problems for Applicants unaware of these, often, very important decisions. 07.08.2018

What was the Aim of the EPC 2000 At the same time as bringing in a more relaxed approach to the deadlines set in the convention, the EPC 2000 also introduced a much higher fee schedule in certain areas. The €200 fee for the 16th claim and above, for example, whilst allegedly aimed at speeding up examination and reducing the burden on the Examiner, appears much more likely to have been motivated by revenue generation. This fee, as well as others, penalises the small Applicant; it is the small Applicant whose patent budget will rarely stretch to cover 5 different applications, and who must consolidate several ideas into a single filing. 07.08.2018

The Administrative Council Since the incept of the EPC 2000, the Administrative Council has also implemented a variety of new regimes, which are again billed as being in the interest of the Applicant – more later. The drawback with the Administrative Council being, however, that this is not really concerned with improving the process for, or options available to, the Applicant. Indeed, the Administrative Council is generally made up of the heads of National Patent Offices, most of whom have limited dealings with the Applicant. What’s more, the Administrative Council typically will not consult the EPO on all aspects of its decisions, thus meaning that it can often implement concepts which are well out of line with the needs of both the EPO and the Applicant ! 07.08.2018

The Administrative Council For example: There is a large push to speed up the process of Examining a European Application, and a general desire to avoid people from using the PCT route. The heads of the Patent Offices are of the opinion that this is desirable, and that the Applicant always desires a swift decision (grant or rejection) for all applications. No consideration is given, however, that MANY applications are more valuable when their grant is delayed, and that many Applicants want a delay between filing and grant, to assess the commercial impact of the product, and to monitor competitors ! 07.08.2018

Contents What was the aim of the EPC 2000 What are the recent changes, and what is to come Continuing to use the EPO What about the National Offices The Community Patent for Europe Summary 07.08.2018

The Recent Changes A significant change to the cost of excess claims was introduced, which cannot be seen as anything more than a levy on Applicants. It has been typical practice for many years that Examiners avoided making full comments to each of the dependent claims, this system worked fine and thus claim sets with many claims cannot really have been an excessive burden to the Examiner. Removal of the opportunity to have additional searches performed at European Entry for PCT cases often forced the filing of divisional applications, simply to have subject matter properly searched. This costs a lot more than 1 application with 3 searches… 07.08.2018

Changes in the Pipeline Divisional Applications The introduction of a 24 months deadline after the first communication now limits the options for filing divisional applications. This is to avoid the Applicant from maintaining perpetual applications, and restricting the market. Whilst this aim may appear noble on behalf of the third party, it drastically affects the small and medium sized Applicant, who typically must await the commercial success of applications, before proceeding to file divisionals. 07.08.2018

Changes in the Pipeline Search Report Response: It will soon be compulsive to respond to the search reports provided by the EPO. This also affects PCT applications in which the ISA was the EPO: Direct EP: When request Examination, provide a complete response to all matters raised. PCT to EP: Here a supplementary search report is drawn-up ISA ≠ EPO which also requires a response. PCT to EP: We must comment at the end of the Rule 161EPC ISA = EPO time period: 6-8 weeks after entering Europe. 07.08.2018

Changes in the Pipeline Multiple Independent Claims: At the search stage, if the set of claims comprises multiple independent claims in the same category (two of more apparatus, or method etc.) the search will be limited to ONLY the first group of claims. If the second group of claims were not allowable in light of one of the exceptions given in the EPC, these claims must be deleted from the application. 07.08.2018

Changes in the Pipeline From the Patent Practitioner’s side? In general, it appears that the EPO, and the Administrative Council in particular, have generated new Rules which are not at all in the best interests of the Applicant, and in many cases do not favour the third party either. Many of the changes seem to have been introduced to reduce the amount of work necessary by the EPO, and to increase the costs of actually obtaining a patent. The measures do not, however, seem to have considered how Applicants view the patenting process, nor what they ultimately gain there-from. 07.08.2018

Contents What was the aim of the EPC 2000 What are the recent changes, and what is to come Continuing to use the EPO What about the National Offices The Community Patent for Europe Summary 07.08.2018

Prolonging the Deadline for Divisionals Can be done, to a degree, but it costs… AND: The Applicant must decide upon filing the PCT Application whether or not long term Divisional options are important. If the EPO is not the ISA, a Supplementary Search Report is drawn-up at entry to the Regional Phase. This costs ~€1000. The request for proceeding further in such a file is then due ~3-4 months after transmittal of the Search Report… 07.08.2018

Ì Ì Prolonging the Deadline for Divisionals EPO = ISA EPO ≠ ISA P P 01.08 File 08.10 31 Months 11.10 R161 01.11 1st O.A. 01.13 Divisional EPO ≠ ISA Ì P 01.08 File 08.10 31 Months 11.10 R161 02.11 EESR 04.11 Proc. Further 06.11 1st O.A. 06.13 Divisional 07.08.2018

Managing the EESR – How to cope with R161 EPC PCT to EP: We must comment at the end of the Rule 161EPC ISA = EPO time period: 6-8 weeks after entering Europe. Assuming no Art 19PCT amendments: Transmit the PCT file with the WOISA to your European agents for comment on the situation and for an appropriate proposal. This will ensure that they, and crucially the Applicant, have enough time to review the application and make a full response by the end of the Rule 161EPC deadline. This should be done for all files which will enter the European Regional phase during, or after, February 2010. 07.08.2018

As with the extension to Divisionals, this costs money… Managing the EESR – How to prolong the deadline EPO = ISA Ì P 01.08 File 08.10 31 Months 11.10 R161 01.11 1st O.A. 01.13 Divisional EPO ≠ ISA Ì P 01.08 File 08.10 31 Months 11.10 R161 02.11 EESR 04.11 Proc. Further 06.11 1st O.A. 06.13 Divisional As with the extension to Divisionals, this costs money… 07.08.2018

Only One Independent Claim As is discussed above, the EPO will only search the first independent claim per category. In order to avoid problems with unsearched claims, it is strongly advised to file only ONE independent claim in each category. Of note, however, is that if the second (or more) independent claims fall into one of the exceptions in Rule 43(2) EPC, the Applicant can challenge the finding of the Examiner during examination, and have the remaining claims searched. 07.08.2018

No problems relating to disclosure. What about dependent claims? A dependent claim will ALWAYS restrict the scope of protection. Dependent claims are ignored when determining the scope of a European patent. This means, that their numbers can easily be restricted (thus avoiding claims fees). What is the dependent claim good for? Restriction during opposition in front of the EPO, or Nullity action in front of national offices (opposition period expired). No problems relating to disclosure. 07.08.2018

Free claims anyone? Claims Fees: 1-15: Free 16-50: €200 per claim 51+: €500 per claim Filing and Grant These can, almost always, be fully avoided: 5. The system of any one of the preceding claims, comprising… 6. The system of claim 5, wherein… Can be amended to: 5. The system of any one of the preceding claims, comprising… wherein preferably <insert claim 6> 07.08.2018

Free claims anyone? US – PCT – EPO US priority application typically drafted with many claims, which via the PCT route need not be a major problem: Include all of the claims from the US application into the PCT file. Limit at Rule 161EPC to present one independent claim per category, and a few dependent claims (those likely to actually limit over the prior art). Bearing in mind the WOISA… Claims deleted can form a divisional application, or be used in further amendments as they are originally disclosed. The original PCT claims are part of the original disclosure for Art.123EPC, and can be used as a basis for amendments in the EPO. 07.08.2018

Free claims anyone? US – EPO US priority application typically drafted with many claims, which directly into Europe causes a problem, as these claims are NOT part of a chain of applications in which the claims are included as claims, and would cost a significant amount of money… Present one independent claim per category, and a few dependent claims (those likely to actually limit over the prior art). Add into the description a series of “preferred aspects” (essentially non-claimed claims). 07.08.2018

Article 123 EPC: Disclosure Article 123(2)EPC: The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. Interpreted very strictly, requiring the application to comprise an unambiguous basis for the combination of features being claimed. A method of making beer, wherein… The method according to claim 1, wherein further… This provides support for only the combinations: 1, 1+2 & 1+3 This provides NO support for: 1+2+3… 07.08.2018

Article 123 EPC: Disclosure A beer holder made from a non-permeable material, preferably glass or plastic, wherein the holder is preferably provided with a handle for gripping during drinking which has a length between 10 & 15cm (4 & 6 inches) A beer holder made from a non-permeable material, preferably glass or plastic, wherein the holder is preferably provided with a handle for gripping during drinking which has a length between 10 & 15cm (4 & 6 inches) A – Beer Holder B – Non-permeable C – Glass D – Plastic E – Handle F – Length 10-15cm This description means that we CANNOT form a claim of A alone, without feature B. We also CANNOT form a claim of A + B + E alone, without feature F. Finally, we CANNOT restrict the range of the handle length 07.08.2018

Making Amendments New Rule 137(4)EPC: When filing any amendments … the applicant shall identify them and indicate the basis for them in the application as filed. If the Examining Division notes a failure to meet either requirement, it may request the correction of this deficiency within a period of one month. Always quote the basis from the specification, consider comments above: Art 123EPC “feature combination”. The word “convincing” is not included in this new rule  07.08.2018

Contents What was the aim of the EPC 2000 What are the recent changes, and what is to come Continuing to use the EPO What about the National Offices The Community Patent for Europe Summary 07.08.2018

National Office Route In cases where the Applicant does not want protection in more than two or three European countries, the National office route could be a viable, and even cost sensible, option. Even though most national offices will require a translation for filing of the application documents, the fees for examination and the like are lower than the EPO. In general, the national offices do not have such high penalties for large numbers of claims, and will search multiple independent claims. 07.08.2018

National Office Route Another aspect is that it is only the EPO which has brought in the restrictions on Divisional applications. National offices do not appear, at this stage, to be considering limiting the chances of applying for divisional or continuation applications. In this case, if the Applicant is particularly keen on maintaining a pending application for as long as possible, the use of the National Offices for key countries would appear logical. 07.08.2018

National Office Route - Germany It is also of note that in Germany, it is possible to have both a European and a German application running in parallel. In cases such as this, it is possible to delay the German prosecution until after the EPO has made a final decision on the European application. This will allow for two applications to be prosecuted, with the advantage that the German application can be prosecuted to give different protection from that of the European case. Again, there are no problems with filing a divisional from the German application. 07.08.2018

Contents What was the aim of the EPC 2000 What are the recent changes, and what is to come Continuing to use the EPO What about the National Offices The Community Patent for Europe Summary 07.08.2018

The Community Patent In the same way that we have a Community Trademark and a Community Registered Design, there has been much talk on trying to develop a Community Patent. Since the 1970s there have been numerous attempts to ratify a Europe wide patent, in contrast to the EPO which merely provides a central examination to allow a granted case to split into a bundle of national patents. To date, however, there has been no agreement… however, one never knows what the future may bring ! 07.08.2018

Contents What was the aim of the EPC 2000 What are the recent changes, and what is to come Continuing to use the EPO What about the National Offices The Community Patent for Europe Summary 07.08.2018

Summary It does seem that the recent changes to the EPC have been driven with the desire to make things easier for the EPO, rather than for easing the requirements on the Applicant. In particular, increasing the fees, reducing the search options and restricting divisional applications. With care, however, it is still possible to draft applications which can be more easily prosecuted through the EPO, thus still providing the advantages of the centralised examination. Don’t forget the many national offices, however, which can often provide a much more useful prosecution process. 07.08.2018

Thank you for your attention! Stefan M. Zech 07.08.2018 Chart 35