Tag Archives: EPO

New EPO Rules For Patenting Plants and Animals

Author: Hazel Ford Ph.D.
Editor:  Martin D. Hyden

The EPO has clarified its approach to the patentability of plants and animals by making changes to its rules.

Article 53(b) EPC derives from an EU Directive (Article 4(1) of Directive 98/44 EC) and excludes from patentability “essentially biological processes for the production of plants or animals”.  According to the EPO’s Enlarged Board of Appeal, this excludes from patentability any process that contains the steps of sexually crossing the whole genomes of plants and then selecting the desired progeny plants.  However, the Enlarged Board concluded in decisions G 2/12 and G 2/13 that the exclusion only applies to process claims, and not to the plants that are produced by those processes.  Until recently, the EPO had followed this practice during examination and in post-grant oppositions. Continue reading

Tagged , , , , , , ,

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

Tagged , , , , , , , ,

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

Tagged , , , , , ,

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.

Continue reading

Tagged , , ,

EPO Practice: Early Certainty From Oppositions

Author: Daryl Penny
Editor: Adriana L. Burgy

The European Patent Office (EPO) recently announced a new, streamlined procedure for oppositions under its ‘Early Certainty for Oppositions’ initiative. In particular, from 1 July 2016, straightforward opposition cases should now be decided at first instance within 15 months from the end of the nine-month opposition-filing window. This not only represents a shortening of the opposition procedure by around a year compared with current average timescales, but also benefits third parties by helping to provide legal certainty in a more timely manner. It, however, places additional pressure on patent proprietors who may need to prepare their defenses more quickly.

What opposition are applicable?

The new procedure will apply to ‘straightforward’ oppositions, but not to oppositions of a more complex nature, e.g., those with more than one opponent or those where evidence of public prior use is submitted in attacking the patentability of the claims. Since the majority of oppositions are by a single opponent and arguments over public prior use are rare, most cases will be processed under the streamlined procedure.

Continue reading

Tagged , , , ,