Category: EPO

EPO related topics

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EPO seminars

As the year draws to a close, the EPO is going to host several interesting seminars, including:

Opposition Matters 2024: According to the EPO, “Opposition Matters is the EPO’s key event for professional users to keep abreast of the latest and most relevant developments in opposition proceedings.”

Litigation Matters 2024: According to the EPO, “Litigation Matters … is devoted to the latest practices of patent litigation in Europe, with particular attention to the UPC litigation.”

Registration is already open. These events represent a great opportunity to catch up with recent developments. Both events are free of charge and organized by the EPO Academy.

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Adaptation of the description in EPO proceedings

It is rare for a Board of Appeal decision to spark widespread interest on (business and/or IP-related) social media. This was different last week, when many patent practitioners enthusiastically posted about T 0056/21 of 04 October 2024.

Datasheet of T 0056/21

The headnote of this decision reads:

“In examination of a patent application, neither Article 84 nor Rules 42, 43 and 48 EPC provide a legal basis for requiring that the description be adapted to match allowable claims of more limited subject-matter.”

Some have suggested that T 0056/21 will significantly change the EPO’s practice when it comes to adaptation of the description. This will remain to be seen.

Roche’s IP department and the counsel handling T 0056/21 deserve praise for seeking clarification on this issue. This even more so, as the adaptation of the description appears to be very dear to some examiners in light of the quality discussions. And Board 3.3.04 is to be applauded for reasons of the decision that are not only comprehensive, but are guided by what the drafters of the EPC had in mind when it comes to clarity.

Not everyone reading the various posts on T 0056/21 might be aware of the fact that the same applicant (Roche) has previously pushed this matter to the Board of Appeal. The previous appeal has resulted in T 1989/18 of 16 December 2021. While the latter decision does not have a headnote, the reasoning in points 4-13 of T 1989/18 reaches conclusions similar to those in the headnote of T 0056/21. T 1989/18 did not appear to do much to alter the EPO’s practice as regards the adaptation of the description. Hopefully, Roche (or other applicants) will continuetheir commitment to resolving the question of whether, and if so to what degree, an adaptation of the description to amended claims is required. At least in US proceedings, all IP stakeholders appear to be comfortable working with a description that is not modified in light of claim amendments during prosecution.

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Search at the EPO

In the September 12, 2024 episode of the EPO’s Talk Innovation podcast, the focus is on patent quality. One highlight is a new step being taken by the European Patent Office (EPO) to improve the thoroughness of search reports. Starting in November 2023, these reports will be shared with members of the upcoming Examining Division and their team manager. This change aims to make sure that the search reports are as comprehensive as possible. The goal is to minimize situations where important prior art is only introduced years into a case, even when the patent claims haven’t changed much.

The episode also discusses other efforts to improve consistency in procedures. For example, the EPO is working to help Examiners better compare their practices regarding the number of communications sent out before a case goes to oral proceedings. These measures are set to enhance the overall quality and efficiency of the patent examination process.

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Claim construction in EPO proceedings

For several years, there has been divergence in the case law of the Boards of Appeal when it came to claim construction: Some Boards have taken the position that, when assessing patentability, the claims are to be construed in light of the description and drawings as a matter of principle. On the other hand, other Boards have taken the position that the description and drawings are to be considered for claim interpretation in EPO proceedings only in certain cases, namely when the claim wording is unclear or ambiguous.

The recent Boards of Appeal decision T 0439/22 has referred this matter to the Enlarged Board of Appeal. The referral questions are as follows:

1. Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?

2. May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?

3. May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?

These questions also affect many pending proceedings.

The president of the EPO has decided that proceedings before the examining and opposition divisions should continue (Notice from the European Patent Office dated 1 July 2024). This serves the proper functioning of the EPO and for legal certainty.

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IP for securing funding

The EPO event “Bringing cleantech innovation to market”, a recording of which will be made available by the EPO shortly, addresses inter alia the EPO’s new economic study shedding light on the challenges faced by companies aiming to bring clean technologies to the forefront. The study was prepared by the EPO jointly with the European Investment Bank (EIB).

One important take-away for me was that the study affirmed how important it is for (young) companies to have IP to secure funding (also from, but not limited to, VC).

Please get in touch if you are in the process of setting up your own firm or have already done so, and want to learn more about the various types of IP that exist as well as existing initiatives available to financially support companies in the process of obtaining IP.

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EPO acceleration of opposition proceedings

The EPO will accelerate opposition proceedings when an infringement or revocation action has been instituted before the UPC. See the EPO News of 22.02.2024 and EPO OJ 2023, A99. The EPO deems that “concluding the EPO parallel opposition proceedings swiftly fosters legal certainty and procedural efficiency, as well as high quality and uniformity in the European patent system.”

I am interested to learn whether divergence between the EPO and the UPC in parallel opposition/revocation proceedings can indeed be avoided going forward.

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EPO administrative fee changes from 01 April 2024

Various changes to the EPO’s fee structure will enter into effect on 01 April 2024. See the EPO’s News Website. Both the reduced fees for SMUs and the increase of some renewal fees have been widely discussed; the visitors of my website will have read about this on, e.g., Juve Patents, the Kluwer patent blog and various LinkedIn posts from valued colleagues working in the patent profession.

One issue that appears to have received less attention is that the EPO’s recent decisions also affect the administrative fees (which tend to receive less attention as compared to the fees associated with filing, search, examination, and renewals). Importantly, the fee for registering a transfer will be reduced to nil provided that the request is filed via MyEPO. See EPO OJ 2024, A5 – fee code 022, item 1.1.

While one might think that the present fee of 120 EUR is not a big deal, the EPO applies this fee per application or per patent, even if the same evidence for the transfer is used in all of the applications/patents. In the case of a merger or demerger of companies, registering the transfer of applications and patents (for the latter the patents during the opposition period or in oppositions) can often result in total administrative fees of several hundred thousand Euros in the currently active administrative fee regime.

It is rare for me to applaud the EPO’s fee structure and the continually increasing fee amounts, which occasionally make me wonder whether the EPO is about to price itself out of the market (in particular when compared to, e.g., the GPTO’s fees). The reduction in the administrative fee for registering a transfer, while triggered by the desire to incentivize the use of MyEPO, is in my view a great step, when considering how much work can be involved in checking the entitlement of the signatories of a transfer declaration (e.g., when a chain of authorisations needs to be verified to affirm the signatory authority of the signatories). The reduction in the administrative fee for registering a transfer, when filed via MyEPO, will make it much easier to convince applicants/patentees that it is generally a good idea to maintain the EPO register data aligned with material ownership when a transfer has taken place.

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EPO validation agreement

A validation agreement between the European Patent Organisation and Georgia entered into force on January 15, 2024. Thus, it is now possible for European patent applications and patents granted by the EPO to be validated in the Republic of Georgia. For more details, see the EPO website.