INDEX

Attorney responsibility: Read the text carefully before you approve it

Acting as European patent attorneys on behalf of our clients, we appreciate the importance of carefully studying and understanding the content of all communications of the European Patent Office (EPO) sent to us as representatives of our clients.

A recent decision from the EPO underlines the importance of our responsibility, also in cases in which the EPO made the error. The decision relates to a case in which a patent was issued, but without any drawings. The applicant did not address this error in due time, and therefore, the error could not be corrected.

Prior to grant of a European patent application, the applicant must approve the text on the basis of which the EPO intends to grant a patent. The legal basis can be found in Rule 71(3) EPC. According to Rule 71(5) EPC,  the text is deemed to have been approved by payment of the grant fee and by filing of translations of the claims. Thus, the applicant should carefully study the text on the basis of which the EPO intends to grant a patent and request any corrections at the latest at the same time as responding to the Communication under Rule 71(3) EPC.

Recently, the Boards of Appeal of the EPO published a decision, T 0265/20, that relates to a situation where the Examining Division issued a Communication under Rule 71(3), requesting the applicant’s approval of the text within a four months deadline.

The text mentioned in the Communication under Rule 71(3) was approved, the patent was granted, and subsequently the patentee realised that the text approved was  incorrect,  the drawing sheets not being indicated by the Examining Division in the Communication under Rule 71(3). The drawing sheets were included in the application as filed and had not been changed during the prosecution of the application.

The patentee filed a request for correction and an appeal against the grant of the patent, requesting that the patent be granted on the basis of the text mentioned in the Communication under Rule 71(3) with the addition of the drawing sheets.

The patentee requested inter alia that the decision under appeal be set aside and the case be remitted to the Examining Division.

The main arguments of the patentee were that the text intended for grant indicated in the Communication under Rule 71(3) EPC was not the text on the basis of which the Examining Division intended to grant a patent. Given that the application documents forming part of the original application as filed contained drawing sheets 1/4 to 4/4, that the file history did not indicate the removal of any drawings, and that the references to the drawings still formed part of the description of the granted patent, it was clear that the drawings were intended to be part of the granted patent. The granted version therefore did not correspond to any text submitted by the appellant, nor did it correspond to any text agreed to by the same.

The patentee also argued that Rule 71(5) only applied when the applicant was in fact informed of the text that reflected the true will of the Examining Division.

The decision from the Boards of Appeal can be summarised as follows:

BA decision on a European patent application pursuant to Article 97(1) EPC complies with Article 113(2) EPC when it is based on a text submitted to the EPO or agreed by the applicant. Before the examining division decides to grant the patent, it shall inform the applicant of the text on the basis of which it intends to grant the patent (Rule 71(3) EPC). According to Rule 71(5) EPC, if the applicant pays the fee for grant and publication and files the translations of the claims in the other two official languages within a period of 4 months, the applicant shall be deemed to have approved the text communicated under Rule 71(3) EPC.

The concluding step in establishing the final text for grant is thus the approval of the text by the applicant. Without the applicant’s approval of the text intended for grant, there is no grant of the patent.

In the present case, it is undisputed that the applicant/appellant, upon receipt of the Communication under Rule 71(3) EPC indicating the text intended for grant, in which drawing sheets 1/4 to 4/4 were missing, made no comments. Instead, the applicant paid the fee for grant and publication and filed the translations of the claims in the other two official languages within the 4 months period.

Thus, the Board of Appeal concludes as follows:

  1. The appellant is adversely affected by the decision to grant a patent in the present case, as all of the drawing sheets as requested are missing from the text of the granted patent.
  2. It is not the content of the text intended for grant which triggers the deemed approval under Rule 71(5) EPC, but rather the applicant paying the fee for grant and publishing and filing the translations according to Rule 71(5) EPC. Thus the “true will” of the members of the examining division when editing the communication pursuant to Rule 71(3) EPC is of no relevance.

 

INDEX

New EU fund to support SMEs in protecting their IPR

Small and medium-sized enterprises (SMEs) based in the European Union are crucial for the European economy, and the COVID-19 pandemic affects the competitive position of these SMEs.  Accordingly, a fund under the European Commission’s new IP Action Plan was set up in December 2020 to help SMEs manage their IP assets.

There will be five application windows with different deadlines, however, it is recommended to apply as soon as possible since each application window will close as soon as the available budget is reached.

The first application window, covering reimbursements of up to a maximum of EUR 1,500 for IP pre-diagnostic services (IP scan) and/or trademark and design applications, opened Monday and closes on 31 January

The IP scan service may help SMEs decide what IP rights to apply for, how to develop their IP portfolios if they already have registered rights, and how to plan their strategies for the future.

Trademarks and designs can be applied for at one of the national intellectual property offices of the EU (national level), in the Benelux Office of Intellectual Property (covering Belgium, The Netherlands and Luxembourg; regional level), or with the EUIPO (covering all the Member States of the EU).

More information about the deadlines and general guidelines can be found here https://euipo.europa.eu/ohimportal/en/grants-sme-fund#call-for-proposals.

You are welcome to contact us for further advice on what service(s) to apply for.

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Meet European Patent Attorney Marianne Johansen – celebrating her first year with aera

Since Marianne Johansen in 1989, when working in a research group at the University of Copenhagen, came across the world of patents, she has been hooked on IP:

“After my Ph.D., I worked as an associate professor at the University of Copenhagen, Department of Pharmaceutics. During my research, I was part of a research group working with drug delivery systems, and we invented a drug delivery system based on dextrans. We wrote and filed a patent application and contacted companies that could have an interest in taking the project further. During this work, I experienced the contrast between scientific papers and legal documents like patent applications – a difference that I had not previously been aware of. Moreover, the huge amount of knowledge hidden in patent documents was a big surprise to me.

It created my curiosity for IP, and one of my friends held a position at an IPR firm and talked with passion about her work – thus, when a position became available, I applied for it – and I was caught with the same passion. The work is highly interesting, you work with highly skilled people and it never becomes routine. Your work is in front of the technology, and the IP regulation and practice change. All in all, you need to be alert” she explains.

With more than 30 years of IP work on her back, Marianne is one of aera’s most experienced attorneys, and looking back on that period, she enjoys the development of the focus on the business aspect within IPR:

“When I started working with IP, it was more or less only engineers who became patent attorneys, and the work was based primarily on relationships between foreign associates and the IP firm. Incoming work from local companies was sparse. In general, IP firms were not oriented towards the businesses of their clients.

At that time, I believe that the only IP firm that employed people with another scientific background and where local clients and their businesses were important was the firm where I was employed. In that firm, the innovative aspects of the IP business were top priorities and I believe that today, most of the IP firms in Denmark have more or less realised the importance of bringing business and IP together.”

This is in Marianne’s opinion central if you aim to become a good attorney:

“I believe the most important skills lie in the interface of business skills, technology skills, language skills, legal skills, and communication skills. Working in this interface is challenging and always exciting. I also believe that my background as an associate professor, working with research projects and researchers, gives me an excellent basis for discussions with inventors and for applying legal framework to technologies. Moreover, in my mind a patent application is not just a piece of technology put into a legal frame – it is an important business opportunity that must be seen as a tool for obtaining a desired business strategy.”

Marianne works for all kinds and all sizes of companies within the Life Science field. Naturally, her main focus is on patents, but synergies within all areas of IPR and strategy also play a big role in her work:

“My main interest has always been patents, but I value the importance of the synergies between all kinds of IPR in order to obtain the best possible IP protection. Thus, my interest is in the interface between IPR and exclusivity, and in the advantages obtainable using patents, designs, trademarks, etc. in combination.”

Another area is the strategic aspect – it concerns every aspect of IP and any time period within the development process. Due diligences, e.g. in connection with mergers, acquisitions or IPO’s, and freedom to operate evaluations are also important and enjoyable tasks.

“When a client’s IP is turned into a business success and the client realises the value of its IP, I find my work both meaningful and satisfying.”

During her career, Marianne has held several CEO positions, so we were extremely happy that she chose to continue her IP career at aera when she joined our company last January.

Here she explains why:

“aera is a relatively new IP firm established by a highly innovative and business-oriented team of European patent attorneys. I have worked with several of them in my previous positions and know that they have the right spirit and the talent to make aera an important player on the international scene of IP. I believe that aera has the ability and the will to be more than a traditional IP firm. My colleagues fully understand the importance of providing our clients with the best possible service, irrespective of whether it relates to IP in Denmark, Europe, the USA or other countries.”

Visit Marianne Johansen’s profile to learn more or get in touch.

 

 

 

INDEX

The CRISPR priority decision is out

ALL the applicants of a priority application must be named in a subsequent EP application

As discussed in a previous post, there were oral proceedings before EPO Board 3.3.08 on 13-17 January 2020 in appeal number T 844/18 in one of the so-called “CRISPR cases”. The written decision, which concluded that the patentee did not claim a valid priority, is now online. In the decision, the board confirmed the EPO’s use of the so-called “all-applicants approach” (in a simplified version):

  • A and B are applicants on the priority application.
  • A filed the subsequent application claiming priority from the priority application.
  • The priority is invalid because not all the applicants of the priority application were named on the subsequent application.

The board discusses in detail the meaning of the term “any person” in Article 87(1) of the European Patent Convention (EPC)/Article 4 of the Paris Convention (PC). The conclusion is that the term is not clear, but that it is established practice to require all applicants on the priority application to also be named on the subsequent application. Hence, abandoning the “all-applicants approach” would disrupt current practice, which in turn means (according to the board) that the patentee was faced with a heavy burden of proving the current practice wrong. The board found this burden not to have been lifted.

The board also considered the purpose and spirit of the Paris Convention as discussed in T 15/01:

  1. The right of priority is generally regarded as one of the cornerstones of the Paris Convention and was already incorporated in the original text of 1883 (cf Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property as Revised at Stockholm in 1967, 1969, Article 4, Section A(1), point (a); Ladas, Patents, Trademarks, and Related Rights, Vol. I, 1975, p. 456). Its basic purpose is to safeguard, for a limited period, the interests of a patent applicant in his endeavour to obtain international protection for his invention, thereby alleviating the negative consequences of the principle of territoriality in patent law.
  1. In the course of the revisions of the Paris Convention, several amendments were made to its priority provisions in order to enhance their flexibility and thereby ameliorate the legal position of patent applicants. It was considered that overly strict solutions would hardly be in accord with the spirit of the Union treaty which is aimed at fostering and encouraging inventive genius (cf Actes de la Conférence réunie à Washington du 15 mai au 2 juin 1911, Berne 1911, p. 45). In particular, the Paris Convention in its present version (Stockholm Act) explicitly recognises the possibility of claiming multiple and partial priorities (cf Article 4F) and guarantees the right to divide patent applications while preserving the benefit of the right of priority also for the divisional application (cf Article 4G Paris Convention). The same principles are reflected in the corresponding provisions of the EPC, ie Articles 76(1), second sentence, and 88(2) and (3).
  2. In the light of the above, the board disagrees with the view expressed in decision T 998/99 (point 3.1), according to which the international priority provisions contained in the Paris Convention have to be regarded as a body of exceptional rules which should be interpreted strictly. Rather, they have to be construed in a manner which ensures that the general purpose they serve, namely to assist the applicant in obtaining international protection for his invention, is fulfilled as far as possible.

The board agreed with these remarks but found that the Paris Convention does not aim to help others than the correctly determined “any person” and that it therefore did not help the patentee’s case.

The board also addressed whether it was competent to assess whether it was the correct (legal) person who had filed the subsequent application claiming priority. The board distinguished between the formal naming of applicants on the priority application and whether these applicants were in fact entitled to be named as priority applicants. The board found the EPO to be competent to assess the former and that the latter was not relevant for their decision.

Article 87 EPC also refers to a “successor in title” of the priority applicant. The board stated that the EPO requires evidence of succession in title, but that since no succession in title was alleged by the patentee, they did not have to review it. What remains unclear is what would constitute sufficient evidence (and what succession is in fact meant since the EPO is not required to assess entitlement to the priority application per se).

The board did not address the so-called “co-applicants approach” in their decision since it was not relevant for reaching the decision. Hence, the decision still leaves open a number of issues concerning the right to claim priority.

Further appeal cases that may clarify the EPO’s position on the right to claim priority are T 2749/18, T 1837/19, and T 477/19 (Aera is representing the patentee in the latter appeal). A decision in any of these cases is unlikely to be available for at least another couple of years.

INDEX

Meet US Patent Attorney Dan Fischer – our new colleague from New York

Last week Dan Fischer joined the aera team, bringing the total number of employees up to 24. Dan comes from his position as Partner at the IP firm Knobbe Martens, and is now settling in at his new home in Vesterbro, Copenhagen.

Dan grew up in Naperville, Illinois, close to Chicago, before he moved to California for law school where he finished his education and began working for Knobbe Martens. In 2017 he moved to New York City where he helped open and build Knobbe Martens’ new office near Time Square. This year showed another big change for Dan, moving to Europe and joining aera:

“I love to take on new challenges and opportunities and coming to aera just felt like the right type of opportunity. While I have great memories of the States, I am excited to get to know a completely new continent! I think it is important to experience new places to gain a fuller perspective of the world” he says, and continues:

“I first took a Scandinavian trip when I was in law school, where I visited Finland, Sweden, Norway, and Denmark. In fact, when I moved out here in September, I stumbled past the same bar I vividly remember from my law school trip!  Outside of that one trip, I admit I probably do not know Scandinavia too well… outside of IKEA of course.”

His interest in IP began after he graduated with an engineering degree: “I really enjoy learning all sorts of new technology and being a patent attorney allows me to see so much of that!  IP also allows me to use the many technical skills I developed in college, especially allowing me to understand the complex technology that these brilliant inventors come up with. I have worked in a number of different IP areas in my career, but I think medical devices are fascinating.  I relish being involved in such cutting-edge technology, especially when it comes to improving people’s lives.  In fact, at one point I thought about becoming a doctor before deciding on the law” he explains.

His best IP experience was also connected to his high interest in medical devises: “I found out that someone I knew had undergone a medical procedure using technology that I had helped do patent work on. I thought that was a crazy coincidence and made me feel like I was truly helping to make a difference!”

Overlooking his new city through the window from the aera office at the 18th floor, which of course is a big change from his former office in Manhattan: “Copenhagen is a beautiful city and quite a change from NYC. Everything feels a bit slower, in the best possible way. I have already purchased a bicycle and I love how bike friendly everything is with the dedicated bike lanes.  O, and I cannot wait to check out Tivoli” Dan says with a big smile on his face.

INDEX

No to Peppers – but you can keep Tomatoes and Broccoli

Yesterday, the Enlarged Board of Appeal of the European Patent Office issued opinion G 3/19 (Pepper) and in conclusion, plants and animals exclusively obtained by essentially biological processes are no longer patentable.

In a much-awaited decision, the Enlarged Board of Appeal of the European Patent Office yesterday settled several issues concerning both lawmaking and interpretation of the law. It adopted a dynamic interpretation of the exception to patentability under Article 53(b) of the European Patent Convention (EPC) and held that the non-patentability of essentially biological processes for the production of plants or animals also extends to plant or animal products that are exclusively obtained by means of an essentially biological process, thus closing a short-lived and highly controversial window of opportunity for patenting these products. A decision that will be applauded by most in the Plant-Breeders’ Community.

The Enlarged Board held the referral by the President of the European Patent Office to be admissible. The referral was made under Article 112(1)(b) EPC and concerned the interpretation of Article 53(b) EPC in view of legal and other developments occurring after decisions G 2/12 (Tomatoes II) and G 2/13 (Broccoli II), and in particular in view of new Rule 28(2) EPC in light of decision T 1063/18 which held that new Rule 28(2) EPC had no impact on the interpretation of Article 53(b) EPC.

It found that a particular interpretation which has been given to a legal provision can never be taken as carved in stone, because the meaning of the provision may change or evolve over time. Thus, decisions G 2/12 and G 2/13 did not settle the meaning of Article 53(b) EPC once and for all.

In summary, after the introduction of new Rule 28(2) EPC, Article 53(b) EPC is to be interpreted to exclude from patentability plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process.

Still, in order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board further ruled that the new interpretation of Article 53(b) EPC given in G 3/19 had no retroactive effect on European patents containing such claims which were granted before 1 July 2017, or on pending European patent applications seeking protection for such claims which were filed before that date. In practical terms, if priority was claimed, the priority date is the date deciding if a pending application is exempt from Rule 28(2) EPC (point XXIX of G 3/19).

Read more:

The opinion

The non-legally binding press-release

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One (US) size does not always fit all

Most applicants seeking patent protection do not wish to limit themselves to obtaining a patent in just one country or region. It is therefore necessary to be aware of the practice not just in your own country or region, but also in other countries around the world. Even though many of the overall principles behind the patent laws around the world are the same, they can be implemented very differently.

A prominent example is added matter. The principle behind it is simple: the applicant should not be allowed to patent something that was not already disclosed to the public when the application was filed. However, the European Patent Office (EPO) is notoriously strict in applying this principle. When the EPO makes the assessment of whether subject-matter has been added to the original application, it uses the so-called “Gold standard” of direct and unambiguous disclosure.

This standard is much stricter than the standard applied at the US Patent and Trademark Office (USPTO). American applicants at the EPO can therefore be caught by surprise when amending their patent claims. One example of this is recent decision T 1362/15.

In this decision, a board of appeal of the EPO found added matter in claim 10. Claim 10 combined the features of the original claims 13, 14, 15, and 17. However, the problem was that the claims were drafted with a claim dependency where claims 14 and 15 depended from claim 13, and claim 17 depended from claim 15. This would, even under the EPO approach, without a doubt have been considered a direct and unambiguous disclosure of the combination of features from claims 13 and 14 on the one hand and the combination of features from claims 13, 15, and 17 on the other hand. But not, regrettably for the applicant, of the combination of all the features of claims 13, 14, 15, and 17.

This approach may be considered harsh, but it is one that applicants need to be prepared for. Ironically, the claim dependency of the original application was drafted in what might be called “US style” in that American practitioners tend not to draft claims with multiple dependencies (which results in higher fees at the USPTO), whereas European practitioners tend to draft dependent claims as depending from “any one of the preceding claims” (which does not result in higher fees at the EPO). Had the original claims in T 1362/15 been drafted in the “European style”, they would have complied with the strict EPO criterion.

The point here is that when we draft patent applications, we need to be aware of practice not only in our own jurisdiction, but also of practice in other jurisdictions where we may eventually file our application. Added matter is the most prominent example of when US applicants may be caught by surprise, but not the only one (priority, which was covered in this article, is another one).

It is of course not one-way traffic. European applicants often find that inventions already granted in Europe are found obvious at the USPTO by combining a high number of prior art documents (which is not done at the EPO). Another example is patent applications for inventions in the field of diagnostics. Patenting of these inventions in the US is tricky, to say the least. The advantage for Europeans, though, is that these problems do not necessarily have to be addressed already at the time of filing the original application.

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Is your priority a priority?

Most of the people who have been in contact with the patent system will be familiar with the concept of claiming priority from a previously filed application. Most of them will also be aware that it is the subsequent application that claims priority (and therefore an effective filing date) from the first application. However, claiming priority can be much more complicated than that. This is illustrated by one of the so-called “CRISPR” cases that over the past few years have drawn headlines in the world of IP.

The IPKat recently warmed up to the oral proceedings before EPO Board 3.3.08 on 13-17 January 2020 in appeal number T 844/18 by discussing the need for clarity on the so-called “co-applicants approach” when claiming priority at the EPO. The “co-applicants approach” is briefly explained by the following situation:

  • A is applicant on the priority application.
  • A and B file a subsequent application claiming priority from the priority application.
  • Since A and B are co-applicants on the subsequent application, they are allowed to claim (together) the priority right belonging to A.

This is, however, not the only issue surrounding priority that could use more clarity from the Boards of Appeal of the EPO. Indeed, the issue at hand in T 844/18 is actually the opposite of the “co-applicants approach” (in a simplified version):

  • A and B are applicants on the priority application.
  • A filed the subsequent application claiming priority from the priority application.
  • The patentee in T 844/18 (The Broad Institute et al. – “Broad”) argues that “any person” in Article 87(1) EPC should be interpreted to mean that any of A and B may claim the subsequent priority.

Decision T 788/05 and some subsequent decisions contradict Broad’s position. This is acknowledged in the preliminary opinion issued by the Board in T 844/18 (paragraph 38). However, the Board also acknowledges (paragraph 39) that allowing A to claim priority may actually leave B in a better position, since a lack of priority potentially leads to revocation (and hence nothing for B to reclaim), whereas a valid priority (and therefore, potentially, a valid patent) would let B recover his/her part in the patent. The preliminary opinion further seems to acknowledge that a strict formal approach to claiming priority could go against the spirit of the Paris Convention (on which the EPC’s priority system is based), which is supposed to make it easier to file patent applications worldwide.

Imagine the following situation:

  • A and B together file a priority application covering aspects X and Y of the invention.
  • A and B have a mutual (non-written) understanding that A owns X and B owns Y.
  • A year later, they therefore file two different applications, both of which claim priority from the priority application: A files an application directed to X, and B files an application directed to Y.
  • Under the approach of T 788/05, the priority could be considered invalid for both the subsequent applications.

Evidently, if A and B had done their homework and signed an assignment document, they would relatively easily be able to provide the necessary proof under the approach of T 788/05 that they are each other’s “successors in title” for X and Y, respectively. Another issue concerning the transfer of priority is that the transfer must be done before claiming priority (T 1201/14). Hence, A and B cannot assign retroactively. If, for whatever reason, A and B did not have time to complete the assignment before filing the subsequent application, another possible “fix” would be to file the two subsequent applications together and then assign each of the two subsequent applications according to their (non-written) understanding.

Bottom line is that under existing case law, it is a guide in “100 ways of getting priority wrong”. In that sense, claiming priority is a lot more unforgiving than other formal acts that must be completed in order to obtain a European patent. As an example, most missed deadlines under the current EPC can be cured by filing a request for further processing (Article 121 EPC) with payment of the appropriate fee. If the 12-month deadline for claiming priority is missed, only Re-establishment under Article 122 EPC is available, and it must be proven to the satisfaction of the EPO that the deadline was missed despite all due care under the circumstances (which is interpreted strictly).

Some even  argue that the “co-applicants’ approach” is too lenient on applicants and that only A and B (or their successors in title) may claim priority from a priority application filed by A and B. Hence, if A, B, and C were to claim the priority, they would argue that priority is invalid. Derk Visser (of Annotated European Patent Convention textbook fame) argues that T 1933/12, which introduced the “co-applicants approach” in case law, is poorly substantiated and that following T 788/05 would result in only A and B being able to claim the priority (since A and B are considered a legal unit for the priority right).

This is in our opinion in stark contrast to the realities facing patent applicants, as well as the purpose and spirit of the Paris Convention. T 15/01 concerned the issue of exhaustion of priority, but also contained remarks on the purpose of the priority right under the Paris Convention:

  1. The right of priority is generally regarded as one of the cornerstones of the Paris Convention and was already incorporated in the original text of 1883 (cf Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property as Revised at Stockholm in 1967, 1969, Article 4, Section A(1), point (a); Ladas, Patents, Trademarks, and Related Rights, Vol. I, 1975, p. 456). Its basic purpose is to safeguard, for a limited period, the interests of a patent applicant in his endeavour to obtain international protection for his invention, thereby alleviating the negative consequences of the principle of territoriality in patent law.
  1. In the course of the revisions of the Paris Convention, several amendments were made to its priority provisions in order to enhance their flexibility and thereby ameliorate the legal position of patent applicants. It was considered that overly strict solutions would hardly be in accord with the spirit of the Union treaty which is aimed at fostering and encouraging inventive genius (cf Actes de la Conférence réunie à Washington du 15 mai au 2 juin 1911, Berne 1911, p. 45). In particular, the Paris Convention in its present version (Stockholm Act) explicitly recognises the possibility of claiming multiple and partial priorities (cf Article 4F) and guarantees the right to divide patent applications while preserving the benefit of the right of priority also for the divisional application (cf Article 4G Paris Convention). The same principles are reflected in the corresponding provisions of the EPC, ie Articles 76(1), second sentence, and 88(2) and (3).
  2. In the light of the above, the board disagrees with the view expressed in decision T 998/99 (point 3.1), according to which the international priority provisions contained in the Paris Convention have to be regarded as a body of exceptional rules which should be interpreted strictly. Rather, they have to be construed in a manner which ensures that the general purpose they serve, namely to assist the applicant in obtaining international protection for his invention, is fulfilled as far as possible.

This decision was cited by Broad in T 844/18 and acknowledged in paragraph 39 of the preliminary opinion of the Board. It seems difficult to reconcile with the more formalistic approach in T 788/05, and it will be interesting to see which balance is struck by the Board in T 844/18. After January 17, more clarity is hopefully achieved, but there is no guarantee. In the meantime, it is important for applicants to be aware of and comply with the formalistic approach as much as possible.

A further issue raised by Broad, but not addressed explicitly in the preliminary opinion by the Board in T 844/18 is whether the EPO is competent at all to assess the entitlement to priority. When a European patent application is filed, the EPO does not require proof of entitlement to priority from the applicant under Article 88 and Rule 52 EPC, not even if the European application is filed in a different name than the priority application. Indeed, the legislator explicitly rejected this possibility when the EPC was prepared.

Therefore, from a strict fairness perspective (which is not a legal standard per se), it begs the question why the EPO should assess priority 10-15 years later when a third party with no real interest in the priority right (other than to see the patent revoked) could oblige the EPO to make that same assessment that it was not allowed to make at the point in time (i.e. upon filing) when the applicant most easily would be able to provide the necessary proof.

It is unclear whether the Board will actually address this fundamental issue, which was not dealt with directly by a board before. Since, in the existing case law, nobody asked whether the EPO (of which the boards are a part – Article 15(f) EPC) was in fact competent, the boards dealt with issues for which they may not be competent. A parallel is Article 60 EPC, which concerns the right to the European patent application. The EPO is very explicitly not competent to deal with the issue of right to the European patent application, which issue is a matter left for national courts under the Protocol on Recognition.

Further appeal cases that may clarify the EPO’s position on the right to claim priority are T 2749/18, T 1837/19, and T 477/19 (Aera is representing the patentee in the latter appeal). A decision in any of these cases is unlikely to be available for at least another couple of years.

INDEX

Possible changes in recovery of costs in Danish patent litigation

On 29 August 2019, the Danish Eastern High Court issued a decision that partially relates to the recovery of costs of a winning party in the Danish Maritime and Commercial High Court.

In its decision, the Court reversed a decision on the recovery of costs in a patent litigation case relating to a preliminary injunction and an invalidation suit, the Court increasing the recovery from 8% to approximately 50% of the documented costs of the winning party. What is interesting about this decision is that the Court decided that the winning party would recover 100% of the costs incurred for a European Patent Attorney assisting the winning party.

The decision further recognized that the “standard” hourly rate of a specialized Intellectual Property Attorney is higher than that of a general Attorney-at-law. This is in line with recent decisions made by the Court of Justice of the European Union. The decision of the Danish Eastern High Court may be seen as a precedence-setting decision as the Court is a higher instance than the Maritime and Commercial High Court.

The decision on cost recovery will hopefully encourage companies to look again towards the use of the Danish courts for future patent litigation after a long period of significant reduction in patent litigation within the Danish legal system.

Read more here

INDEX

New EPO decision on personalized medicine

Decision G 2/08 firmly established the patentability of new medical uses at the EPO under the revised European Patent Convention. Among other things, it was also established that this applies to treatment of a new patient group even if the same compound was previously known for treatment of the same disease in a different patient group.

 

What was still missing was clarity on the situation where the only difference resides in the presence (or absence) of biomarkers in the treated patients. In such cases, the patient group defined by certain biomarkers (e.g. presence of a certain genetic mutation, elevated blood levels of a certain compound etc.) typically overlaps with the patient group known to be treated with the same compound. In fact, the compound would typically already be known for treatment of the general patient population, which overlaps with all patient subgroups.

A recent decision from technical board of appeal 3.3.09 addresses this issue. The Headnote of T 694/16 states:

If a claim is directed to a known compound or composition for use in a therapeutic method of treatment or prevention of a disease, and the claim specifies that the subject to be treated displays a clearly defined and detectable marker, which is not displayed by all subjects affected by or likely to develop that disease, then the purposive selection of the patients displaying the marker for the specified treatment is a functional feature characterizing the claim.

 

We would highlight the terms “clearly defined and detectable” and “purposive selection”. The purposive selection is further highlighted in point 5.14 of the Reasons:

For this reason, the issue of whether patients displaying the markers of claim 1 were present among a population of previously treated patients and were already “inevitably” or “inherently” treated is irrelevant for assessing novelty in the present case. The only thing which counts is that D1 and D3 do not disclose a method whereby a patient or a group of patients displaying the relevant CSF markers, but not affected by dementia, was purposively and selectively targeted for carrying out the preventive treatment defined in claim 1. (emphasis in the original)

 

This decision provides a very welcome clarification for innovative companies working on personalized medicine. It means that it is possible for the innovative companies to be rewarded by the patent system for targeting treatments to the needs of specific individual patients, based on the characteristics of each patient.

INDEX

INDEX

A Guide to Foundations for SME’s and Start-up’s

We have made a list of some of the foundations and programs that we believe are interesting for many of our clients and people working in the start-up environment.

These types of applications usually contain a mandatory part concerning IP and patents – we have experience in scoping and adding value here. Contact any of our attorneys directly or at for an informal discussion about the options.

The deadlines for applying for these innovation and research programs and foundations are approaching fast – so get started and good luck!

EC Horizon 2020: SME instrument

To Whom: One of more European SMEs
How much: 50.000 – 2.5 M € in two phases over 6 – 24 months.
When: Next deadline is 3 April 2019.

Read more her:

https://ec.europa.eu/programmes/horizon2020/en/h2020-section/sme-instrument

EC Horizon 2020: Fast Track to Innovation (FTI)

To Whom: 3-5 European entities.
How much: up to 3 M €, close-to-market innovation.
When: Next deadline is 28 February 2019.

Read more her:

https://ec.europa.eu/programmes/horizon2020/en/h2020-section/fast-track-innovation-pilot

EC Horizon 2020: Future and Emerging Technologies (FET) Open

To Whom: at least 3 entities
How much: 0.5 – 3 M € for radically new technologies.
When: Next deadline is 28 September 2019.

Read more her:

https://ec.europa.eu/programmes/horizon2020/en/h2020-section/fet-open

You can find an overview of some of the EC programs her: http://ec.europa.eu/research/eic/pdf/eic_instruments_table.pdf

The EU has also initiated Eurostars for the development of research projects with high-tech SMEs in international partnerships.

Eurostars SME

To Whom: The funding options are different from country to country. In Denmark is the focus up to 75% of actual costs to salary, travel and material. Other costs must be defined and approved.
How much: 300.000 € if one Danish partner participates, 500.000 € if there are two or more Danish partners.
When: Next deadline is 28 February 2019.

Read more here:

https://www.eurostars-eureka.eu/countries/denmark

For Denmark there are also more focused foundations in 2019. These include:

Innovationsfondens “InnoBooster”

To Whom: Innovative SMEs and startups.
How much: 50.000 – 5 M DKK.
When: Next deadline is 19 February 2019.

Read more here:

https://innovationsfonden.dk/da/programmer/innobooster

Innovationsfondens “Grand Solutions”

To Whom: Larger projects with focus on research, development and/or commercialization in a wide variety of technological areas.
How much: 5 – 30 M DKK
When: Ongoing evaluations from 1 February 2019.

Read more here:

https://innovationsfonden.dk/da/programmer/grand-solutions