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Some Selected Issues Regarding The European Patent System

Some Selected Issues Regarding The European Patent System. Eric-Michael Dokter, Partner Viering Jentschura & Partner. Viering Jentschura & Partner Some Selected Issues Regarding The European Patent System KEA Seminar September 1, 2006. By Adam Bogsch, Partner

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Some Selected Issues Regarding The European Patent System

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  1. Some Selected Issues Regarding The European Patent System Eric-Michael Dokter, Partner Viering Jentschura & Partner

  2. Viering Jentschura & PartnerSome Selected Issues Regarding The European Patent SystemKEA SeminarSeptember 1, 2006 By Adam Bogsch, Partner Eric-Michael Dokter, Partner Viering Jentschura & Partner Munich – Oberhausen – Dresden - Singapore – Los Angeles - Taiwan

  3. Overview • Brief Overview Of The European Patent System And Procedure • EP or National Applications - Basic Decision Factors • EPO’s Position Regarding Software Related Inventions

  4. Viering Jentschura & Partner Brief Overview Of The European Patent System And Procedure

  5. European Patent ConventionBasic Features • Regional Patent System for currently 31 countries (plus 5 “extension” countries) • Free selection („designation“) of countries of interest • Single filing, search, publication, examination & grant procedure for all designated countries • European Patent: a bundle of patents that have the effects of (same rights as) national patents in the countries where effective, and are independent from each other

  6. Prosecution of a EP ApplicationTimeline 0 ~18 ~ 24 ? 0 +3 +9 • EP filing as first filing • Search procedure: ESR, but Extended ESR since 1.7.03 for EP first filings • Publ. of application and search report • Designation of states and Req. for Exam. • Exam. Procedure: Office Action – Response • EP Grant & „National Phases“: Validation in the designated countries of interest • Post-grant Opposition EP EP Designation EP End of filing pub of countries grant Oppo term Request for Exam Search Examination National Phases

  7. Viering Jentschura & Partner European Or National Patent Applications? The Basic Decision Factors

  8. Basic Decision Factors (BDF) • Total costs • Cost/Success risk • Length of time for • Decision about countries • Until patent issued • Patent strength • Unitary scope of protection (?) - Enforcement

  9. EP vs. Nat. Appl.BDFs:Total Costs - 1 • Cost of EP application • High/Low depends on the basis for comparison • Maximum 7 designation fees • Single prosecution costs -„National costs“ are lower • EP vs. national applications - breakpoint: two to four countries • Recovering some costs, if first filing is PCT and EPO was ISA & IPEA • Example: EP costs for 4 countries (e.g. DE, FR, GB & IT) compared with costs of respective national applications in these countries

  10. EP vs. Nat. Appl.BDFs: Total Costs - 2 EP Application 1. Filing phase Filing costs comprising filing fee, search fee, designation fee for four countries and claim fees in case of 15 claims 2. Examination phase Examination costs including examination fee and commenting about and responding to two office actions 3. Grant phase Grant fee including fee for printing the specification 4. National Phases Initiation of national phases in four countries including translation fees from GB into DE, FR & IT 5. Renewal fees for 3 to 5 patent years Total EUR 2,500.00 4,000.00 1,500.00 14,000.00 1,500.00 23,500.00

  11. EP vs. Nat. Appl.BDFs: Total Costs - 3 EUR DE 3,200.00 3,500.00 380.00 7,080.00 GB 2,900.00 5,800.00 350.00 9,050.00 FR 5,800.00 5,700.00 600.00 12,100.00 IT 4,000.00 5,000.00 none 9,000.00 1. Filing phase Including translation costs (language: GB) 2. Examination and Grant phase 3. Renewal fees for 3 to 5 patent years Total Grand total 37,230.00

  12. EP vs. Nat. Appl.BDFs:Cost/Success Risk • EP application: Low Cost/Success Risk • Early & Obligatory Search Report, • 1st filing: eESR! • Designation fees and examination fee are to be paid only after search report is issued • „National cost“ (validation), especially translation costs, are to be paid only after grant of patent • National applications: Higher Risk • High initial costs especially because of translations • Especially higher risk if no earlier indication of patentability • EP is first filing, or • Second filing, but no “prosecution results” in priority application within convention year

  13. EP vs. Nat. Appl.BDFs: Length of Time - 1 • For decision about countries • EP application • About 24 (about 18 plus 6) months from filing (priority) date, if less then 7 designation fees are paid • Until grant, if at least 7 designation fees are paid (inexpensive, therefore advisable) • National applications • 12 month priority term from priority date

  14. EP vs. Nat. Appl.BDFs: Length of Time - 2 • Until issue of patent • EP application • Before Request for Examination can effectively filed at least about 2 years formality phase which cannot be accelerated – but search report may be issued early • „Office action is to be expected within....“ might be „long“ • National applications • Request for examination can, at least in some countries, like Germany be filed immediately • Might have same problem regarding Office Action

  15. EP vs. Nat. Appl.BDFs: Patent Strength - Enforcement • EP patent • Strong patent • Full search & examination • High search & examination standards • Opposition procedure • Same scope of protection in all countries? • At least identical claim language for all countries • Same enforcement results – would be nice! • National patents • Strength depends on country • From registration system (e.g. CH) through mixed system (e.g. FR) to full search and examination system (e.g. DE, GB, AT) • Different examination standards • Different scope of protection & enforcement

  16. EP vs. Nat. Appl.Some remarks • Alternative routes are not always • In case of Euro-PCT applications some countries prohibit national route • Examples: FR, NL • A national application in the “most important country” AND EP application - Parallel prosecution • Possible fast(er) protection in the country of utmost importance • More time to decide regarding other countries • Example: Germany • Faster prosecution, therefore early indication of patentability • Early enforcement • Possibility of co-existent (branched-off) utility model

  17. Viering Jentschura & Partner EPO’s Position Regarding Software Related Inventions

  18. Software InventionsArticle 52 (2) & (3) EPC Article 52(2) EPC: The following in particular shall not be related as inventions.... (a)... (b)... (c)... and Programs for computers; (d)... Article 52(3) EPC: The provisions of paragraph 2 shall exclude patentability of subject-matter or activities ... only to the extent to which ... application or ... Patent relates to such subject-matter or activities as such

  19. Software InventionsThe EPO Practice – Technical Character • “As such” means that invention must have “technical character” • Physical features of a entity or the nature of a (technical or non-technical) activity by the use of technical means provides “technical character” for an invention. • An apparatus and a method involving technical means is supposed to be an invention within the meaning of Article 52 (1) EPC. (T 258/03)

  20. Software InventionsThe EPO Practice – Problem/Solution Approach -1 • Determine closest prior art; • Determine differences of claim to be evaluated and closest prior art; • Determine technical effect(s) that are caused by the differences; • Determine objective problem from the technical effect(s); • Determine whether the claimed solution of the objective problem is obvious in view of the entire prior art. • (e.g. T 1043/03)

  21. Software InventionsThe EPO Practice – Problem/Solution Approach - 2 • When technical and non-technical features are set out in the claim, the non-technical features are not considered when determining the inventive step (T 641/00; T 531/03). • Exception:Non-technical features provide a technical contribution to the state of the art (maybe together with the technical features of the claim).

  22. Software InventionsThe EPO Practice – General comments - 1 • An invention is to be assessed by taking account only of those features which contribute to a technical character. • If an invention is regarded as a mere automation of a non-technical activity it is considered to be routine programming well within the reach of the skilled person (T 258/03). • “Further technical effect” – even technical considerations when making a “non-technical” invention - may be a basis for inventive step

  23. Software InventionsThe EPO Practice – General comments - 2 • An arrangement of menu items or images on a screen may be determined by technical considerations (counting to “further technical effects” making the invention “technical”), even if an evaluation by a user on a mental level is involved. • Thus, such features may be taken into account when evaluating the technical contribution and inventive step (T 643/00; but: T 125/04).

  24. Software InventionsThe EPO Practice – General comments - 3 The presentation of natural language text on a display in a manner which improves readability, enabling the user to perform their task more efficiently, relates to how, i.e. by what physical arrangement of the text, cognitive content is conveyed to the reader and can thus be considered as contributing to a technical solution to a technical problem (T 49/04).

  25. Software InventionsFile with the EPO? - Checklist • Is a technical problem solved by the invention? • Is a technical effect achieved by the invention? • Are technical means used for implementing the invention (more than a common computer)? • Are technical considerations necessary to implement the invention (more than common considerations when implementing the invention on a common computer)? • Are those aspects outlined in the description in detail? Think about adding technical details in description in order to provide support for the above aspects. Important

  26. Viering Jentschura & Partner Thank you for your attention & Kamsa Hamnida

  27. 기업방문 무료 특허교육 신청하기 • 교육내용 : www.ipac.or.kr>자료실>기업방문교육 • 참조 (희망주제 선정) • 시 간 : 5시간 내외(교육인원에 따라 차등) • 10명 ～ 49명 : 1개 주제(2시간) • 50명 ～ 99명 : 2개 주제(4시간) • 100명 이상 : 3개 주제(5시간 내외) • 특허지원센터 지원내역 • 전문가파견비용 및 연사료 • 교육자료 • ※ 교육비용 : 없음 • 신청기한 : 수시접수 • 신청접수 및 문의 • - 문 의 : 02-553-0941(교환 411, 415) • - 신청접수 • 센터 홈페이지 (www.ipac.or.kr>세미나/교육신청) • 접수 • 특허분쟁대응 무료 컨설팅 신청하기 • 신청방법 : www.ipac.or.kr>분쟁대응컨설팅 • 으로 신청 • 특허지원센터 지원내역 • 전문가파견비용 • 문 의 : 02-553-0941(교환 411)

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