Friday, June 24, 2016

EPO makes changes to speed up Opposition procedure

From 1 July 2016, the EPO is introducing changes to speed up their Opposition procedure. Opposition may be filed up to 9 months after the grant of the patent by anyone who is aware of facts that render the patent invalid. It is a valuable alternative for filing national invalidity lawsuits in different EPC contracting states because the decision is taken centrally before a single body and affects the scope of protection in all EPC states.
However, opposition can currently take 2-3 years to get a final decision (and even longer if one of the parties appeals). By introducing changes, the EPO hopes to reduce a typical opposition to less than 18 months. In general, they are reducing the number of formal requests for parties to respond to each others comments, being more strict on extending time limits, and making oral proceedings the focus of the procedure:

  1. After oppositions are filed, the grounds, facts, evidence and argumentation are forwarded to the proprietor who has a few months to file a response. Previously, the EPO gave 4 months and extensions of the time to reply to 6 months were granted routinely, However, with the new procedure, any extensions to 6 months will only be granted in exceptional circumstances.
  2. After the response of the proprietor has been received, it was normal practice to forward the comments to all opponents, giving them 4 months to file their responses. In the new procedure, they comments will still be forwarded, but no formal time limit will be set to respond. The opponents may still respond of their own initiative, and their comments will still be entered into the proceedings.
  3. The opposition division will then invite all parties to oral proceedings - this is already the case in most opposition cases, so there is no change in practice. However, the summons will always now give at least 6 months notice, and all parties must supply additional comments and facts at least 2 months before the hearing (previously this was 1 month).
  4. The text of the patent at the end of oral proceeding will be considered the final text.
  5. Additionally there have been improvements made in the handling times at the EPO to further reduce delays.   
An overview of the new procedure is found here.
Clipart: (c) CanStockPhoto - 

Tuesday, December 29, 2015

Useful on-line PCT references

The WIPO recently published in their PCT Newsletter (Practical Advice) an overview of useful PCT on-line references.

We have slightly modified the list by separating the basic and advanced user resources, adding some extra references and including some comments. Our version is available here.

This is very useful for anyone wanting to learn more about PCT.

Thursday, July 16, 2015

EPO improves its procedures for maintaining the lists of professional representatives

Over the past couple of years, the EPO has been clarifying the procedures around maintaining the entries on the list of professional representatives (European Patent Attorneys), and the registration of associations.

The latest overview mentions:

  • The Legal Division should be informed without delay of any changes
  • Changes in nationality or business address are particularly important because they affect eligibility - both a business address in an EPC state and nationality of an EPC state are required, although an exemption from the nationality can be requested from the EPO.
  • Requests for (re-)entry on, changes in or deletion must be sent in writing to the Legal Division 
  • If the request is for (re-)entry, the original must be filed. All other requests can also be filed by facsimile or online. Requests filed by electronic mail only are not valid 

The recommended forms and further details on each procedure are not easy to find on the EPO website - they are only available via the search page to find a professional representative.

Wednesday, July 8, 2015

From 1 July 2015 - "PCT Direct" service available with EPO as ISA extended to other receiving offices

In the Official Journal of June 2015  (OJ EPO 2015, A51, "Notice from the European Patent Office dated 22 June 2015 concerning the processing by the EPO as International Searching Authority of informal comments on earlier search results ("PCT Direct")"), the EPO announced that, as of 1 July 2015, the PCT Direct service will be extended to the other receiving Offices than the EPO only.

Monday, July 6, 2015

Use the EPO to find out earlier what you have

Recently, the quality of patents issued by the EPO was rated excellent or very good by 62% of private practice patent attorneys and lawyers who use them, compared to less than 35% for the other major patent offices.

One of the reasons patent professionals rate the EPO so highly is the quality of their search and examination.

Their databases far exceed the PCT minimum documentation set, searching in many full-text patent applications, English abstracts of foreign patent applications and non-patent literature databases.

They also use state-of-the-art tools to search, and the search quality is the same whether it is a European direct filing or a PCT application.

So applicants get a very good idea what their application is worth at an early stage, before decisions on subsequent filings or national entries need to be made.

The EPO has an open system, so anyone world-wide can file a European patent application directly and request a search.

It is also possible for anyone world-wide to get an EPO search under PCT early in the international phase, by either:
  • specifying the EPO to be the ISA (where permitted by the Receiving Office), or
  • requesting a Supplementary International Search (SIS) at the EPO, or
  • by using an Applicant-Of-Convenience when filing 
The EPO has also greatly improved its examination under PCT, providing a higher chance of a positive International Preliminary Report on Patentability before national entry is due.

Wednesday, July 1, 2015

From 1 July 2015 - possibility to waive the right to receive a further Rule 71(3) EPC communication (intention to grant)

When the Examining Division is willing to grant a European patent application, it sends an 'intention to grant' (Rule 71(3) communication) with the text intended for grant ('Druckexemplar'). Currently, applicants may respond by:
  1. approving the text intended for grant,
  2. disapproving the text intended for grant, or
  3. disapproving the text currently intended for grant and filing amendments or corrections.
In the situation under 3, the Examining Division reviews the amendments or corrections and if it has no objections a second intention to grant is sent, such that the text on which the decision to grant will be based is unambiguously defined by a single document. Otherwise, it will resume the examination proceedings.
Since the introduction of this procedure in April 2012 the EPO has found that the issuance of a further intention to grant is not always efficient. In an effort to increase procedural efficiency it has introduced a new option for applicants: waiving the right to receive such a further intention to grant.

The waiver

The new option is designed to speed up the procedural steps in the granting process in cases where applicants are filing relatively simple amendments or corrections, that would not lead to resumption of the substantive examination proceedings (e.g. if they relate to mis-spelled words, use of incorrect words, incorrect reference drawings or the like).
The waiver makes it possible for the Examining Division to immediately consent to the amendments or corrections, without sending a new intention to grant. Instead, the Examining Division publishes a new EPO Form 2004W in the European Patent Register informing the applicant and the public of the allowance of the amendments or corrections. Subsequently the decision to grant the European patent is issued, and about one month later the mention of the grant is published in the European Patent Bulletin.

Friday, April 10, 2015

Only pay the invoices sent by your patent attorney

Photo: <!-- HTML bronvermeldungs-code voor Can Stock Photo--> <a href="">(c) Can Stock Photo</a>
The problem of misleading invoices continues world-wide. The latest example detected by the WIPO is very convincing. They even use a very similar logo and give WIPO contact details at bottom: WORLD INTELLIGENT PROPERTY OFFICE

The only clue you have (apart from the name) is that the beneficiary is a bank in Bosnia & Herzogovenia (IBAN code begins with BA and 5-6th letters in SWIFT code are also BA).

  • Patent offices do not charge separately for publication of the application - you pay for this when you file the application.
  • These misleading invoices can appear 18 months after the earliest priority claim when application is published officially by the patent office with the names and addresses of all applicants and inventors
  • If in doubt, contact either the patent office, or a patent attorney, or check the links below
  • If you have appointed a patent attorney, all official communications from the patent office are sent to him/her
In many cases, payment of such an invoice is requested for a subscription to include your application in an on-line database. For example WORLD PATENT & TRADEMARK ASSOCIATION.
But all patent offices make the applications available to the public automatically if you pay the required fees on filing.

Other examples are here:
    A good rule to remember is - only pay the invoices sent by your patent attorney
    Photo:  ©