Category Archives: European Practice

The Essentiality Test – Falling Out of Favour at the EPO?

Author: Katherine Banks Ph.D.
Editor:  Hazel Ford Ph.D.

The European Patent Office (EPO) has a notoriously strict approach when considering amendments to patent applications.  If an amendment extends the subject matter beyond the content of the application as filed, then the amendment is unallowable under Article 123(2) EPC.  This is assessed based on the “gold standard” test, which examines whether the skilled person would regard the amended subject-matter to be directly and unambiguously derivable from the application as originally filed.  Continue reading

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The Short-Lived Ailment of Poisonous Divisionals

The Short-Lived Ailment of Poisonous Divisionals

Author: Leythem A. Wall
Editor: Eric P. Raciti and J. Derek McCorquindale

After four years of the European Patent Office (EPO) ruling that a parent application can lack novelty over its divisional application, and vice versa, the EPO Enlarged Board of Appeal (EBA) in their decision G1/15 has finally put an end to this familicidal practice. Continue reading

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EPO Enlarged Board of Appeal Finds the Cure For Poisonous Divisionals

Author: Leythem Wall
Editor: Adriana L. Burgy

At the end of 2012, a European Patent Office (EPO) Board of Appeal decision sent shockwaves through Europe; it concluded that a European divisional patent publication could be novelty destroying to the European parent patent from which it is derived, the so called “poisonous divisional.”

The reasoning behind the “poisonous divisional” is that the parent claims are not entitled to priority, whereas the anticipatory subject matter in the divisional publication is entitled to priority. In fact, the problem works both ways, i.e., the publication of the parent could also be novelty destroying against a divisional application whose claims are not entitled to priority. Continue reading

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Britain to Ratify the UPC Agreement?

Author: Hazel Ford
Editor: Adriana L. Burgy

In a move that has surprised many, the UK government has announced that it is pressing ahead with its preparations to ratify the Unified Patent Court Agreement (UPCA).

The UPCA is an agreement between most of the European Union member states to establish a single patent right covering those member states (the Unitary Patent, UP), and a new, centralized court (the Unified Patent Court, UPC) ,which will eventually have sole jurisdiction to decide on disputes arising from both Unitary Patents and European patents in those member states.  One of the branches of the Central Division of the UPC is to be located in London, handling most cases relating to the validity of patents in the life sciences and chemistry areas.  Continue reading

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Stricter Rules for Patent Assignments in Europe

Author: Hazel Ford Ph.D.
Editor: Stephanie M. Sanders

Many patent offices, including the USPTO, will record a transfer of rights on the basis of a document that has been signed only by the assignor. The European Patent Office (EPO) has traditionally followed the same practice, as long as the document is filed with the EPO by the assignee or the assignee’s representative.

In a change of approach, the Legal Division of the EPO has decided that this practice is inconsistent with Article 72 EPC, which states that “[a]n assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract”. The EPO will therefore now require assignment documents to be signed by all parties to the agreement. An assignment document that has been signed only by the assignor will no longer be acceptable for recordal of a change of ownership at the EPO.

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