Third Party Observations in Europe – Part 5 of an 8 Part Series

This is Part 5 of an 8-part series examining post-grant review proceedings, oppositions, and third party observations in the U.S., BRIC and several non-BRIC countries. To see Part 1, Post-Grant Oppositions in Japan, click here. To see Part 2, Third Party Submissions in Russia, click here. To see Part 3, Pre- and Post-Grant Oppositions in India, click here; To see Part 4, Third Party Submissions in the U.S., click here.

Third Party Observations

Article 115 of the European Patent Code (EPC) allows any third party, following the publication of an European patent application, to present observations concerning the patentability of the invention to which the application relates. Specifically, observations can be directed to novelty, inventive step, clarity (which cannot be asserted as a ground during an opposition), sufficiency, industrial applicability, added subject matter and subject matter excluded from patentability. Third party observations (TPO) can be submitted after a pending European patent application publishes, including after an Applicant receives a Rule 71(3) communication (indicating the European Patent Office’s (EPO) intent to grant a patent) up until the date the decision to grant is handed over to the EPO’s internal post service for dispatch (observations submitted after this date will simply be added to the non-public part of the file), as well as during an appeal proceeding.

Observations must be filed in writing in English, French or German and must include a statement of the grounds on which they are based. Documentary evidence, such as patents, published applications and non-patent literature or evidence of prior use (such as affidavits, drawings, brochures) submitted in support of the arguments, may be filed in any language (the EPO may require a translation into one of its official languages within a specified time period). Observations may be filed by paper (such as by mail or fax), electronically or by using the “submit observations” tool from the EPO register which can be found here. There is no fee for filing a TPO.

Although the EPO will acknowledge receipt of a TPO, it will not specifically inform the third party of any further action it takes in connection with the TPO. After filing, the EPO will forward the TPO the Applicant who has the option of commenting if it so chooses. Examiners are required to take a TPO into account during examination and are obligated to provide an opinion on any TPOs filed in the next examination report.

While a TPO can be filed anonymously (such as through a “straw man”), certain advantages are available for third parties who reveal their identity. Specifically, any TPO submitted by a third party that identifies itself will be given priority by the EPO during examination (as part of its “Early Certainty from Search” initiative) and may be admitted during an opposition.

Comparison of TPOs with Third Party Submissions in the U.S.

The below provides a comparison between TPOs in the EPO and third party submissions in the U.S. Patent and Trademark Office (USPTO).

TPO1

TPO2

TPO3

Please note that our final post in this series will compare Inter Partes and Post-Grant review in the USPTO with oppositions in the EPO.

This post was written by Lisa Mueller.

 

 

 

Divisional Practice in the BRICs and Other Countries – Part 9 of a 9-Part Series: A Comprehensive Summary

This is Part 9 of a nine-part series examining divisional practice in the BRIC as well as several non-BRIC countries. To view Part 1 (Divisional Practice in Mexico), click here. To view Part 2 (Divisional Practice in Brazil), click here. To view Part 3 (Divisional Practice in the United States), click here. To view Part 4 (Divisional Practice in India), click here. To view Part 5 (Divisional Practice in Russia), click here. To view Part 6 (Divisional Practice in China), click here. To view Part 7 (Divisional Practice in Canada), click here. To view Part 8 (Divisional Practice in Europe), click here.

In this last post in the series, we at the BRIC Wall are pleased to provide a table summarizing the key aspects of divisional practice in the eight countries surveyed. We hope our readers have found this series to be education and informative.

Divisional Summary Table:  FINALDIVISONALTABLE 2

 

Divisional Practice in the BRICs and Other Countries – Part 8 of a 9-Part Series: Europe

This is Part 8 of a nine-part series examining divisional practice in the BRIC as well as several non-BRIC countries. To view Part 1 (Divisional Practice in Mexico), click here. To view Part 2 (Divisional Practice in Brazil), click here. To view Part 3 (Divisional Practice in the United States), click here. To view Part 4 (Divisional Practice in India), click here. To view Part 5 (Divisional Practice in Russia), click here. To view Part 6 (Divisional Practice in China), click here. To view Part 7 (Divisional Practice in Canada), click here.

Divisional Practice in Europe

Time Periods for filing a Divisional Application

For European patent applications, a divisional application must be filed while a parent application is pending.  In other words, a parent application cannot be granted, definitively refused or definitively withdrawn. A patent application is still considered to be pending:

1.  Until expiry of the deadline for filing an appeal (even if an appeal is not subsequently filed), when the Examining Division has refused a parent application; and

2.  While a patent application is involved in an appeal against a refusal by the Examining Division.

In April 2010, Rule 36 European Patent Convention (EPC) was amended to set strict deadlines for filing divisional applications. Two different scenarios for filing divisional applications were permitted depending on whether a divisional application was a voluntary or mandatory application. Under Rule 36(1)(a), an Applicant could file as many “voluntary” divisional applications as it liked provided that such applications were filed 24 months from the first communication from the Examination Division issued in a parent application. When an application was part of a chain of European parent and divisional applications (for example, when a parent application was itself a divisional application), the two year period began from the date of the first Examining Division communication issued in the earliest application in the chain of applications. Under Rule 36(1)(b), an Applicant could file a “mandatory” divisional application 24 months from the date of an Examining Division  communication containing an objection to the claims as lacking unity, provided such objection was being raised for the first time in the chain of applications of the same family. However, beginning April 1, 2014, this amendment to Rule 36 will be repealed. Therefore, as of April 1st, all that will be required is that a divisional application be filed while a parent application is pending.

Requirements for Filing a Divisional Application

According to Rule 40 EPC, when filing a divisional, the following must be supplied:

1.  A written statement that a European patent is being sought;

2.  Information identifying the Applicant or allowing the Applicant to be contacted; and

3.  A description or reference to a previously filed application (A reference to a previously filed application must state the filing date and the number of the application and the Office in which it was filed. Such reference must indicate that it replaces the description and any drawings).

When an application contains a reference to a previously filed application, a certified copy of the previously filed application must be filed within two months of the filing of the divisional application, unless the reference application was originally filed with the European Patent Office (EPO). If the previously filed application is not in an official language of the EPO (namely, in English, French or German), a translation into one of the official languages will be required within two months of the filing of the divisional application.

The filing and search fee for a divisional application must be paid within one month after filing. The designation fee must be paid within six months of the date on which the European Patent Bulletin mentions the publication of the European search report for the divisional application.

Claims of a Divisional Application

A divisional application may be filed with or without any claims. If a divisional application is filed without any claims, the EPO will set a two month period for the Applicant to provide a set of claims. Alternatively, a divisional application may be filed with the claims as originally filed in the parent or PCT application. However, the claims of a divisional application filed with the same claims of a parent or PCT application will need to be amended at some point during prosecution to ensure that neither the parent or divisional application claim the exact same subject matter from one another.

Double Patenting

The EPC does not explicitly contain any specific provisions prohibiting double patenting (namely, the case of co-pending European patent applications having the same filing date, filed by the same Applicant and claiming the same subject matter). However, the Guidelines for Examination in the EPO (Guidelines) in Section G-IV-5.4 state that “it is an accepted principle in most patent systems that two patents cannot be granted to the same application for one invention.” In fact, the Enlarged Board of Appeal (Board) in decisions G 1/05 and G 1/06 accepted a prohibition on double patenting. The reasoning the Board gave is that an Applicant does not have a “legitimate” interest in proceedings leading to the grant of a second patent for the same subject matter if the Applicant already possesses a granted patent for that same subject matter. According to the Board, it is permissible to allow an Applicant to proceed with two applications having the same description provided that the claims are distinct in scope and directed to different inventions.

In view thereof, substantial overlap between claims has been permitted by the EPO. For example, if claims to a narrow genus are obtained in a first application (such as a parent application), the EPO is likely to allow claims to a broader genus that encompasses the species in a divisional  application. Specifically, the Guidelines in Section G-IV-5.4 state that:

“…in the rare case in which there are two or more European applications from the same applicant definitively designating the same State or States (by confirming the designation through payment of the relevant designation fee) and the claims of those applications have the same filing or priority date and relate to the same invention, the applicant should be told that he must either amend one or more of the applications in such a manner that the subject matter of the claims of the applications is not identical, or choose which one of those applications he wishes to proceed to grant. If he does not do so, once one of the applications is granted, the other(s) will be refused under Art. 97(2) in conjunction with Art. 125. If the claims of those applications are merely partially overlapping, no objection should be raised (see T 877/06). Should two applications of the same effective date be received from two different applicants, each must be allowed to proceed as though the other did not exist” (emphasis added).

Therefore, practically speaking, an Applicant is unlikely to receive a double patenting objection by an Examiner in a divisional application provided that the Applicant can show that the claims in the divisional application do not contain the identical scope of the parent application.

Examination of Divisional Applications

A divisional application is treated as a separate application and is accorded a separate application number, requires separate fees, requires a separate request for examination, will be prosecuted separately from the parent application, and will result in an independent patent from the parent application. The fees for a divisional application are the same as for any parent application. The term of patent for a divisional application is twenty years from the filing date of the very first parent application.

Poisonous Priorities – The Problem of Toxic Divisional Applications

One very unique aspect about divisional practice in Europe involves the “self-collision” between parent and divisional applications that arises as a result of Article 54(3) EPC. Article 54(3) makes no distinction between earlier application filings of “others” or by the same inventor. Specifically, Article 54 EPC states:

1.  An invention shall be considered to be new if it does not form part of the state of the art.

2.  The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.

3.  Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art (which is often referred to as a “whole contents” anticipation).

4.  Paragraphs 2 and 3 shall not exclude the patentability of any substance or composition, comprised in the state of the art, for use in a method referred to in Article 53(c), provided that its use for any such method is not comprised in the state of the art.

5.  Paragraphs 2 and 3 shall also not exclude the patentability of any substance or composition referred to in paragraph 4 for any specific use in a method referred to in Article 53(c), provided that such use is not comprised in the state of the art” (emphasis added).

Thus, under Article 54(3) EPC, the claims of a published divisional child patent application can anticipate or destroy the novelty (but not the inventive step) of the claims of a published pending or granted parent application or the claims of a published parent application can anticipate or destroy the novelty of the claims of a published pending or granted divisional child patent application. Such a scenario is often referred to as a “toxic” divisional or “poisonous” priority scenario.

When do such toxic divisionals or poisonous priority scenarios arise? Typically, problems involving toxic divisionals and poisonous priorities arise when both the parent and divisional application claim priority to the same earlier filed application (such as under the Paris Convention) but one or more of the claims in parent or divisional application is determined not to be entitled to priority to the earlier filed application. The following example illustrates the problem.

1.  On January 1, 2011, Applicant files a patent application in the EPO (priority application). The application describes and claims five compounds.

2.  On December 28, 2012, the Applicant files a second patent application in the EPO claiming priority to the application filed on January 1, 2011 (parent application). The parent application includes additional subject matter, including a description of a broad genus which encompasses the five species described and claimed in the priority application. The claims of the parent application are directed to the broad genus. The parent application is published by the EPO.

3.  On June 28, 2013, Applicant files a divisional application claiming the five species that were claimed in the priority application. The divisional application is published by the EPO.

In this scenario, the claims of the divisional application are likely entitled to the priority date of January 1, 2011. The claims of the parent application are likely not entitled to the priority date of January 1, 2011. Therefore, the subject matter of the claims of the divisional application can be used to destroy the novelty of the claims of the parent application (namely, a species anticipating a genus). The result would not change if the parent application had already issued into a patent. Moreover, the result would not change if the parent application claimed the species (and hence was entitled to priority) and the divisional application claimed the broad genus.

In view of the risks associated with toxic divisionals or poisonous priorities, Applicants should take care when deciding whether or not to file a divisional application and if so, with what claims. Once parent and divisional applications are published or granted, Applicants should take great care to avoid novelty attacks. Applicants should be particularly vigilant to ensure at the claims of a published parent or divisional application do not create novelty problems for the claims of a previously granted divisional or parent application. Such novelty problems could arise in a later filed opposition or subsequent litigation.

Other Important Information Regarding Divisional Applications

Unlike other jurisdictions where divisional applications can only be filed when a lack of unity objection is raised by the relevant Office, European divisionals can be filed at any time (namely, before receipt of the Search Report or issuance of any communication from the Examining Division).

Furthermore, unlike other jurisdictions where divisional applications can only be filed with claims directed to an invention other than the 1st invention identified by the relevant Office, European divisional applications can be filed (subject to the above considerations on double patenting) with claims directed to any subject matter, provided that the subject matter is literally supported by both the European divisional application as originally filed and the parent application(s) as originally filed. In particular, divisional applications can be filed with claims directed to subject matter only disclosed in the description and/or drawings of the parent application even where the claims of the parent application were never directed to such subject matter.

This post was written by Lisa Mueller and Micaela Modiano of Modiano & Partners.

BRIC-a-BRAC: March 14, 2014

1.  As a follow-up to our post on Patent Trolls: A View from Europe, on February 28, 2014, Apple Inc. (Apple) won dismissal of the US $2 billion patent infringement lawsuit brought by IPCom GmBH (IPCom) in the District Court of Mannheim, Germany. Specifically, the Court held that Apple did not infringe the two patents asserted by IPCom (although the reason for the decision was not given). IPCom is appealing the decision. Visit Bloomberg’s article to learn more about this decision.

2.  Is the road to riches for pharmaceutical companies not paved with biosimilars and the BRIC markets? This is the question examined in an article at philly.com. According to the article, it is becoming clear that only a handful of companies may make substantial profits with biosimilars. In fact, some suggest that biosimilars represent “fool’s gold” for many companies. With respect to the BRIC markets, the article notes that the sales in the BRIC countries, which were expected to spearhead pharma’s emerging markets strategy, are not meeting expectations. The reasons include price controls in China, India and Brazil as well as slowing growth in China and the use of compulsory licensing in India. Russia is struggling to keep investors due to the falling ruble and the Russia-Ukraine faceoff.

3.  Will there be a Global Regulatory Supergroup? According to Regulatory Focus (RF), U.S. and international regulators are working to create a new global regulatory organization whose focus would be on leveraging and sharing resources and information among various regulatory authorities. The announcement of the existence of this organization was made on March 6, 2014 by Margaret Hamburg, the Commissioner of the U.S. Food and Drug Administration (FDA), speaking at the Medicines and Healthcare Products Regulatory Agency’s (MHRA) Annual Lecture in London. According to Commissioner Hamburg, “Regulators around the world have begun to collaborate around the formation of an International Coalition of Medical Regulatory Authorities (ICMRA).” While the details of the ICMRA are still in the early stages, Commissioner Hamburg envisions that the organization will be a “high-level, strategic advocacy and leadership entity.” A full transcript of Commissioner Hamburg’s speech can be found here. Please watch the BRIC Wall Blog for further updates on the ICMRA.

Patent Trolls: A View from Europe

Last week’s posting “Patent Trolls:  A Global Perspective” prompted a reader to ask if information could be provided regarding patent trolls in the European Union.   This post is in response to that suggestion. 

Patent Trolls in the European Union 

While there has been a fair amount of patent troll activity in the European Union, it has not risen to the level seen in the U.S. or in Russia.  Three patent trolls that have been involved in several patent litigation actions in Europe include the German based companies of IPCom GmBH (IPCom) and Papst Licensing GmBH & Co. (Papst) and the Luxembourg-based company, High Point SARL (a subsidiary of Inpro Licensing) (High Point).  

IPCom is the owner of several patents relating to mobile telecommunications technology which were acquired from Robert Bosch GmBH in 2007.  IPCom has sued several companies, including Nokia, HTC Corp., T-Mobile GmbH and Apple (seeking US $2 billion in damages – one of the largest damage awards ever sought in German history) for patent infringement in the District Court in Mannheim, Germany.  Many compare the Mannheim District Court to the District Court in the Eastern District of Texas because of its quick resolution of patent infringement cases.  In fact, the courts in Mannheim, Düsseldorf and Munich are well known for their speed in deciding patent infringement cases.  The reason for such speed is Germany’s bifurcated system where patent infringement and validity (revocation) actions are decided on separate tracks in different courts.  This split system allows the German courts proceed very quickly, especially in infringement cases.  For example, a permanent injunction can be obtained by a plaintiff in a successful patent infringement lawsuit in Germany in as little as eight months.  In contrast, a decision on the validity (revocation) of a patent may take anywhere from 18 months to two years.  Additionally, plaintiffs in Germany (including multi-national corporations) enjoy wide-forum shopping latitude because a court has jurisdiction if a patented product is marketed over the internet in its district.  However, patent trolls in Germany have to be careful when bringing patent infringement actions because under German law, the non-prevailing party in litigation must pay the legal fees of the prevailing party in an amount proportional to the estimated value of the case.  Given the estimated value of these patent infringement lawsuits, the legal fees to be paid to the prevailing party can be quite significant.

Papst is the owner of an European patent relating to road pricing systems.  Toll Collect GmbH (Toll Collect) was hired by the German government to develop and place electrical road pricing system for trucks on German roads.  The systems also involved placing terminals in The Netherlands and neighboring countries.  Papst and Toll Collect were involved in patent proceedings in Switzerland and Germany regarding patent infringement and invalidity of the patent and damages.  Toll Collect also brought invalidity proceedings before the Dutch Court.  The Dutch Court partially upheld validity of the patent and found infringement by Toll Collect. 

High Point asserted the Dutch counterpart of EP 0 522 772B1 (relating to mobile communication networks) against KPN (the largest Dutch provider of telecommunications and information technology services).   Ultimately, the Dutch counterpart was found invalid by the District Court in The Hague.  However, High Point sued E-Plus, Ericsson and Nokia Siemens Networks in Germany, Sprint Nextel (and others) in the U.S. and KDDI Corporation (a Japanese telecommunications company that provides mobile cellular services) in Japan.  Interestingly, the German Federal Court upheld the validity of the German counterpart of EP 0 522 772B1.  

Patent Trolls and the Unified Patent Court 

While the U.S. continues to work on measures to avoid or at least reduce the effect of litigation originating from patent trolls, the European Union (EU) institutions are working on the future centralized litigation system known as the Unified Patent Court (UPC).  The agreement setting out the main principles and structure of this future litigation system was signed by the various participating States in 2013; nonetheless, the rules of procedure are still being finalized.  However, this may lead you to wonder what the finalization of the rules of procedure has to do with patent trolls?  Well, the success by which patent troll litigation will be facilitated or prevented in proceedings before the UPC will greatly depend on the wording of the rules of procedure.  In fact, the UPC agreement (UPCA) contains two provisions which are particularly controversial and whose implementation may significantly influence the behavior of patent trolls before the UPC. 

The first provision is contained in the article related to provisional and protective measures (Article 62 of the UPCA).  According to this provision, when requested to grant  preliminary injunctions, seizures or delivery up orders, the UPC may … require the applicant to provide any reasonable evidence in order to satisfy itself with a sufficient degree of certainty that the applicant is the right holder and that the applicant’s right is being infringed, or that such infringement is imminent.”  Because of the inclusion of the term “may”, this provision confers a near endless degree of discretion regarding the extent to which a Patentee needs to prove its case, especially with respect to proof of infringement, in order to obtain the requested measures.  The concern is that some of the divisions of the UPC will require a very low standard of evidence, making it very simple (perhaps even too simple?) for any Patentee, including a patent troll, to obtain such preliminary measures, with the risk of such measures being granted in cases where they are not truly justified. 

The other provision is contained in the article related to the competence of the first instance of the UPC (Article 33 of the UPCA).  Specifically, this provision establishes that infringement proceedings will generally be brought before the UPC division in the area where the infringer is located or where the infringement occurred (called a “local” division).  If an alleged infringer counterclaims for revocation of the patent, the local division of the UPC handling the infringement action has the option, at its discretion, of referring the counterclaim to another UPC division (the central division, which is competent predominantly in revocation actions), thus resulting in a bifurcation of the infringement and validity determinations, similar to that described above in connection with German patent proceedings.  If a local division of the UPC decides, at its discretion, to proceed with the infringement action, it does not have to wait for the outcome of the counterclaim for revocation.  Therefore, the result of such an action is to nullify the defensive effect of the counterclaim thus increasing the likelihood that the local division will find a potentially invalid patent infringed.  It bears noting that if this option is exercised too freely or frequently, it may enable patent trolls to obtain favorable infringement decisions on invalid patents. 

A sense of just how controversial the above two provisions are can be found in a letter published on September 26, 2013 in the New York Times.  This letter is addressed, inter alia, to the various EU institutions that promoted the enactment of the UPC system and are presently working on the UPC rules of procedure.  The letter alerts these institutions of the risks of the above provisions.  What is significant to note is that the signatories to this letter, including Apple Inc., Samsung Electronics Co. Ltd., BlackBerry Ltd., Cisco Systems Inc., Google Inc., Yahoo! Inc. and Microsoft, are some of the world’s largest corporations with immense patent portfolios and a high number of patent-related litigations worldwide.  The collection of these signatories is even more striking when one considers that some of these companies are parties against one another in several patent-related litigations.  However, despite this reality, these companies felt the need to publicly take a joint position on the UPC.  Additionally, the signatories push strongly for the adoption of rules of procedure that will “allow operating companies to focus on innovation instead of litigation, thereby fostering economic growth and prosperity in Europe.”

When the letter was published, the UPC Preparatory Committee had been working on the 15th draft of the rules of procedure.  Given the comments in the letter, the 16th draft is eagerly awaited.  It will be interesting to see whether or not the 16th draft will include any mechanisms to prevent abuse of the new system by patent trolls, particularly considering that when the EU institutions pushed for passage of the UPCA after its long and arduous 40-year long debate, it most certainly never contemplated a system that might encourage abusive patent litigation.  

This post was written by Lisa Mueller and Micaela Modiano of Modiano & Partners.