A Primer to European Patent Law by Vinita Radhakrishnan
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A Primer to European Patent LawVinita Radhakrishnan
RevisionPatentability RequirementsUS Patent lawPatent searching and Drafting
European Patent LawIP and BiotechnologyPatent Drafting specific to Biotech/pharma inventions
About EuropeEurope: Bundle of statesEuropean Union (EU): Economic and political union of 27 member statesSingle Market free trade free movement of people, goods, services and CapitalWhat about IP?
What about IP?Each country has its own lawCommunity TMCommunity DesignCommunity Patent????EPC
EPCConvention on the Grant of European Patents of 5 October 1973 (Revised in 2000)Multilateral treaty Instituted the European Patent OrganizationProvides legal framework for granting of European patent Single harmonized grant procedureNot a unitary right
Bundle of rightsBundle of patents :Essentially IndependentNationally enforceableNationally RevocableThe grant procedure undertaken before the European Patent Office
EPOrgPublic international organization Created in 1977 to grant patent under EPCSeat in MunichAdministrative and financial autonomyNot legally bound to EUHas 2 organs:Administrative councilEPO
Administrative councilSupervisory body of the organizationMade up of members of the contracting states Responsible for overseeing the work of the European Patent OfficeBudgetAppoints presidentApprove EPO presidents ActionsAmends the Rules and some particular provisions of the Articles of the EPC
EPOExecutive body of the organizationDoes not have a legal entityDirected by president
Main office: MunichBranch offices: Hague, BerlinOfficial language: English, French and German
EPO (Departments)Receiving SectionExamination DivisionOpposition DivisionBoard of Appeal (final instance in granting and opposition)Enlarged board of Appeal (to ensure uniform application of Law)
MembersContracting States: 36Extension States: 5
EPO Member states
Contracting statesAustriaBelgiumBulgariaSwitzerlandCyprusCzech RepublicGermanyDenmarkEstonia
LiechtensteinLithuaniaLuxembourgLatviaMonacoFormer Yugoslav Republic of Macedonia Malta
Extension States: Albania, Bosnia and Herzegovina, Montenegro, Serbia
Legal BasisEuropean Patent Convention EPCArticles & RulesGuidelines for ExaminationCase law Board of Appeals (BOA's) decisions Enlarged BOA decisions
Patentability RequirementsRequirements for Patentability: Art. 52 (1) EPCEuropean patents shall be granted for any inventionswhich are susceptible of industrial application which are new andwhich involve an inventive step
Art 52(2)The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
(a)discoveries, scientific theories and mathematical methods;
(c)schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
(d)presentations of information.
Art 52(4)Not inventions:Methods for treatment of the human or animal body by surgery or therapy Diagnostic methods practised on the human or animal body
This provision shall not apply to products, in particular substances or compositions, for use in any of these methods.
Art 53 (Exceptions to patentability )European patents shall not be granted in respect of:
(a)inventions the publication or exploitation of which would be contrary to "ordre public" or morality, provided that the exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States;
(b)plant or animal varieties or essentially biological processes for the production of plants or animals; this provision does not apply to microbiological processes or the products thereof.
Patentability RequirementArticle 52 (1) EPC Requirements industrial applicability: Art. 52(4) novelty: Article 54 inventive step: Article 56 Invention: no positive definition; definition by exclusion (Art. 52(2)) implicit requirement: technical character
Self-evident requirement of IP lawYou cannot take from the public what is already theirsAlso in copyright and trademark law Historically undisputed, unlike inventive step!An absolute requirementNo such thing as a little bit novel...a straightforward requirementNormally easily established ... and easily overcome!
Article 54(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, of which the dates of filing are prior to the date referred to in paragraph 2 and which were published under Article 93 on or after that date, shall be considered as comprised in the state of the art.
(4)Paragraph 3 shall be applied only in so far as a Contracting State designated in respect of the later application, was also designated in respect of the earlier application as published.
(5)The provisions of paragraphs 1 to 4 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 52, paragraph 4, provided that its use for any method referred to in that paragraph is not comprised in the state of the art.
Novelty: Article 54 EPCArt. 54 (1) defines what is considered to be "new.... something which does not form part of the state of the art
What is the State of the Art?defined by Art. 54 (2)also Art. 54(3) & (4) for EP applications
What is state of the art?Everything made available to public by means of :
State of Artbefore the filing date of application
What is the "State of the Art"?Conflicting applications
Art. 54 (3) EPC ... European patent applications [filed] prior to the date referred to in paragraph 2 [filing/priority date application] and ... published ... on or after that date, shall be considered as comprised in the state of the art.
Art. 54 (4) EPC [Paragraph (3) only for overlapping states]Against double patentingAlso for PCT applicationsFor novelty only. Not for inventive step!Must be pending
Filing and PriorityFirst Filing priority State AState BState CState D12 MonthsEntitled to use the priority date as the first filing dateNOT entitled to use the priority date as the first filing
Art 56An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.
If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents are not to be considered in deciding whether there has been an inventive step.
Article 56 EPCAn invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.
PHOSITACompare to imaginary "man in the street", "man on the Clapham omnibus", "man on the Underground" from, especially, British law.Person skilled in the art is peculiar to patent law.
PHOSITAAn ordinary practitionerAware of what is common general knowledge in a particular technical field (the art in question) at the relevant date.Has access to everything in the state of the art.Has normal capacity for routine work, but has no inventive skills.In some fields the skilled person can be equated with a team, rather than with a single person.
How do we decide onobviousness?Various tests in different national systems.One of the tests used by the German office was that every invention is a solution to a technical problem.In the very first case heard by the Board of Appeal the problem and solution approach was used to determine the question of inventiveness.
The problem and solutionapproach (PSA)1. Determine the closest prior art2. Based on this, establish the objective technical problem to be solved3. Consider whether the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to a skilled person.
Stage 1Identify the Closest Prior Art (CPA)The item of prior art (normally a written disclosure) disclosing technical effects, purpose or intended use most similar to the invention.Often it has the greatest number of features in common with the invention.
Stage 2Establish theobjective technical problem
How to modify or adapt the closest priorart to achieve the technical effect(s) whichthe invention provides over the closestprior art.
Stage 3Decide on obviousnessIs there an indication in the prior art thatwould prompt the skilled person to solvethe objective technical problem by modifying or adapting the closest prior artto arrive at the claimed invention?
The problem and solution approach(PSA) - five questions (1)1. (Stage 1) What is the closest prior art?2. (Stage 2) What is the difference, in terms of the claimed technical features, between the claimed invention on the one hand and the cpa on the other?3.What technical effect is caused by thisdifference?
The problem and solution approach(PSA) - five questions (2)4.What, therefore, is the objective technical problem underlying the claimed invent