Communications under Rules 161 and 162 EPC
EPO communications under Rule 161(1) and Rule 162 EPC are among those legal changes which entered into force on April 1, 2010 and are intended for realigning the European patent grant procedure. However, these communications and their legal framework seem to require considerable realignment, for several reasons.
In an actual case, the EPO issues a communication under Rule 161(1) and Rule 162 EPC stamped “for the Examining Division” and indicating telephone number +31(0)70 340 4500, i.e. the EPO user support, for enquiries, the communication inviting the applicant to correct the deficiencies noted in the written opinion of the International Searching Author-ity. The applicant’s patent attorne [...]
Programs for computers G3/08, European Patent Office (EPO Enlarged Board of Appeal Opinion), 12 May 2010
- By Ferry van Looijengoed,
for Kluwer IP Cases
The G3/08 opinion concerns the long-awaited view of the Enlarged Board of Appeal (EBoA) on the patentability of computer programs. The EBoA examined various issues regarding Article 112(1)(b) EPC. The EBoA held that positions taken in T1173/97 and T424/03 were clearly contradictory on the question whether it makes a difference whether a computer program is claimed by itself or as a record on a carrier. However, the EBoA concluded that this divergence does not allow a referral by the President of the European Patent Office as defined in Article 112(1)(b) EPC since it qualifies as a development of the case law.
On the question whether a claimed feature must cause a technical effect on a physic [...]
Fastener Device, European Patent Office (EPO Board of Appeal), 9 July 2009
- By Lars de Haas,
for Kluwer IP Cases
The Board considered whether the introduction of the EPC 2000 raised the requirements for a notice of appeal to be admissible. Rule 99(1)(c) EPC 2000 requires that the notice of appeal contains ‘a request defining the subject of the appeal’. Rule 64 EPC 1973 required that the notice of appeal contains a statement identifying ‘the extent to which amendment or cancellation of the decision is requested’. The Board concluded that the requirements had not materially changed. Rule 99(1)(c) EPC 2000 is satisfied if the notice of appeal also contains a request, which may be implicit, to set aside the decision in whole or (where appropriate) only as to part. In the case of an appeal by an applicant o [...]
Schütz v. Werit, High Court of England and Wales, 31 March 2010
Schütz owned two patents relating to the field of intermediate bulk containers or ‘IBCs’, which are large plastic bottles contained in cages and used to transport hazardous liquids. Schütz objected to Werit’s sales of bottles to a company called Delta since Delta incorporated Werit’s bottles into Schütz’s second hand cages. The key question in the case was whether Delta’s acts constituted ‘making’ an infringing product. The Court held that, in these circumstances, the relevant test is to ask whether, when the part (i.e. the bottle) is removed, what is left (i.e. the cage) embodies the whole of the inventive concept of the claim or not. On the facts, the Court held that inventive concept w [...]
Complete response to EP search opinion?
- By Derk Visser, EIP
Since 01.04.2010 an applicant of a European patent application must respond to the search opinion drawn up by the search division as if it was a communication of the examining division (see new Rule 70a EPC). The applicant is requested to correct any deficiencies of the patent application noted in the search opinion. However, in some circumstances, the applicant had better not correct all deficiencies.
Suppose the application is a divisional application and the search opinion gives a non-unity objection. The applicant agrees with the examiner and wants to file a further divisional for the non-unitary subject-matter. However, new Rule 36(1) restricts the filing of divisionals to 24 months fro [...]
Billions of infringing Euro banknotes?
A growing number of decisions illustrate the divergences of solutions which can exist between the various national courts with respect to the various national designations of a same European patent. This possibility of contradictory decisions is one of the consequences of the breaking up of the European patent into a bundle of separate national patents: each national court can be unaware of the decisions made by the other national courts in Europe on the same patent. This unsatisfactory situation is not suitable for the European patent which enjoys an undeniable practical success, as it represents a clear disadvantage for all the companies wishing to develop a uniform economic activity at a [...]
