Category: EPO

EPO related topics

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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.

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Bidding farewell to the EPO’s 10-day-rule

The EPO’s 10-day-rule will be abandoned from 1 November 2023. A safeguard mechanism will be effective in case a document is received late (more than 7 days late), with the burden of proof in case of disputed notifications being with the EPO. The new regulation applies to documents notified on or after 1 November 2023. See OJ EPO 2023, A29 for more details and some examples.

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Enlarged Board of Appeal on transfer of priority right

The recent decisionby the Enlarged Board of Appeal G1/22 and G2/22 has made it easier to demonstrate a valid transfer of priority right. This is good news for patent applicants and patentees who may have struggled with the previous requirements for demonstrating a valid transfer. According to the EPO’s summary of the key considerations, “entitlement to priority is presumed to exist if the formal requirements for claiming priority are fulfilled. This presumption is justified because (i) all parties involved normally have an interest that an application may benefit from a priority right, (ii) there are no formal requirements for the transfer of priority rights, and (iii) the applicant of the priority application has to provide support to the applicant claiming priority (e.g. by providing unpublished documents).”

However, it is important to note that the time of transfer must still pre-date the subsequent filing. This means that while the process of demonstrating a valid transfer may be easier, the timing of the transfer is still crucial. More details can be found in the many comments that were already published on these decisions. See, e.g., the DeltaPatents Blog on decisions G1/22 and G2/22.