Denk iP - Davy en Kris Intellectual Property

The Enlarged Board of Appeal of the EPO has given an opinion with respect to G3/08, resulting in confirmation of the previously established caselaw regarding to patentability of computer programs under EPC. The referred questions have been found inadmissible.

Today WIPO celebrates the 10th anniversary of World Intellectual Property Day. Focus is on "Innovation - Linking the world".

The Ministerial Council has allowed the draft law with respect to the implementation of the Treaty on patent law and the Act revising the Convention on the grant of European patents and the amendment of various provisions with respect to patents. This draft law brings the Belgian legislation on patents in accordance with the PLT of 1 June 2000 and with the Act revising the Convention on the grant of European patents.

Albania accedes to the European Patent Convention as from 1 May 2010. The European Patent Organisation will then comprise 37 member states.

The Enlarged Board of Appeal of the EPO has taken a decision in case G4/08. If an international application has been filed and published in one of the official languages of the EPO, it is not possible to change the language of procedure to another official language of the EPO by filing a translation of the application in such a language at entry in the European phase. The EPO may, in written procedures, not use a language different from the procedural language for the application.

The Enlarged Board of Appeal of the EPO has taken a decision in case G1/07, deciding on the exclusion from patentability of an imaging method comprising or encompassing an invasive step representing a substantial physical intervention on the body requiring professional medical expertise to be carried out.

On 6 April 2010 the Intellectual Property Office introduces a number of changes to the fees for applying for patent protection.

From 1 March 2010 it will be possible to extend to Montenegro the protection conferred by EP patent applications and patents. Extended EP patent applications and patents will confer essentially the same protection in Montenegro as the patents granted by the EPO for the now 36 member states of the EPO.

The EU concil agrees on next steps regarding the EU patent. This does not mean that the EU patent is a fact yet, but it is a step forwards. Actual implementation of the EU patent law will require changes to the EPC, hence this may still take quite some time...

The official fees for international patent applications will increase as from 1st of January 2010.

The British Patent Office UKPTO has slightly reduced the filing fee and search fee for online filing.

The EPO sets out its practice followed when citing documents retrieved from the internet and confirms that disclosures on the internet form part of the state of the art. As to the date of publication, unless there are specific indications to the contrary, the date of publication indicated will be accepted as being correct. The relevance of electronic databases, time stamps, “last modified” date, … are also discussed.

Divisional patent applications can only be filed for a limited period of time.

The EPO warns for approaches and requests for payment from firms purporting to register European patents.

Lithuania does not require proprietors of European patents to supply a translation of the patent specification, irrespective of the language in which the Office granted the patent. However, a translation of the claims into Lithuanian is required.

The decision states, amongst others, that Rule 28(c) EPC (formerly Rule 23d(c) EPC) forbids the patenting of claims directed to products which at the filing date could be prepared exclusively by a method which necessarily involved the destruction of the human embryos from which the said products are derived, even if the said method is not part of the claims.

The Government of the Republic of San Marino (SM) has deposited its instrument of accession to the EPC. The EPC will accordingly enter into force for San Marino on 1 July 2009. As from then the EPO will comprise 36 member states.

As from 1 April 2010 it will only be possible to file divisional applications for a limited period of time:

- within 24 months from the first communication in respect of the earliest application for which a communication has been issued, or

- within 24 months from the first objection that the earlier application does not meet the requirement of unity of invention.

As from 1 April 2010, if the EPO has acted as the ISA and, where a demand was filed, also as the IPEA for a Euro-PCT application, it shall give the applicant the opportunity to comment on the written opinion of the ISA or the IPER and, where appropriate, invite him to correct any deficiencies noted in the written opinion or in the IPER and to amend the description, claims and drawings within a period of one month from the respective communication. If the applicant does not comply with or comment on an invitation in accordance with the first sentence, the application shall be deemed to be withdrawn.

This means that, after entering the European national phase of an international application, only a limited period of time will be available to prepare a response to the first communication (which will be equal to the written opinion or to the IPER). Hence it is wise to already prepare this response during preparation of the entering of the EP national phase.

This new rule shall apply to Euro-PCT applications where a communication under Rule 161 has not been issued yet before 1 April 2010.

The Court of Appeals for the Federal Circuit reversed part of the lower court’s ruling that the new rules proposed by the USPTO in 2007 limiting the number of continuation applications and RCE’s, and imposing the duty to conduct a prior art search if the number of claims in an application exceed 5 independent claims or more than 25 total claims, exceeded the authority of the USPTO.

The appeals court affirmed that the limits on continuation applications exceeded the authority of the USPTO, but left intact the other rules in the package, including limits on RCE’s in any single family of applications.

The case is not finally decided. Rather, it will be sent back to the lower court which must now decide on a few remaining issues. Such decision is to be expected later this year.

As from 1 April 2009 it is no longer necessary for an applicant of a European patent application to always provide himself a copy of a priority document. As from that date, the EPO will include in the file of the European patent application, free of charge, a copy of the priority document if such priority document is:

- an earlier European patent application,

- an international application (PCT) filed with the EPO as receiving office,

- a Japanese patent or utility model application,

- a Korean patent or utility model application,

- a US provisional or non-provisional patent application.