News


Changes in European patent law effective as from April 1, 2010 – Nov. 2009

As of April 1, 2010 a number of changes will be introduced at the European Patent Office in an effort to further
streamline the proceedings.

1. Subject-matter searched
As of April 1, 2010, the newly inserted Rule 62a EPC and amended Rules 63 and 64 EPC will introduce changes
regarding the search procedure.

New Rule 62a EPC deals with cases where an application contains a plurality of independent claims in one claim
category (product, process, apparatus or use), which are not linked in such a way that they form a single general
inventive concept. Currently, the European search is carried out if the application fulfils the unity requirements;
no formal objection to the number of independent claims in each claim category is raised at the search stage.

According to new Rule 62a EPC, however, the search division will invite applicants to indicate the claims on the
basis of which the search is to be carried out (time limit: two months). If the applicant does not respond to this
invitation, the search will cover the first claim in each category. Furthermore, later on in the proceedings, the
examining division will invite the applicant to restrict the claims to the subject-matter searched unless it finds that
the objection raised by the search division is unjustified.

According to the practice of the European Patent Office there is no dialogue between the applicant and the search
examiner so that arguments against the limitation of the search will only be taken into consideration during the
substantive examination.

Rule 135(2) EPC has been amended to exclude further processing for the time limit under Rule 62a EPC!

Furthermore, in the case of a lack of unity objection raised by the search examiner, it will no longer be possible to
pay an additional search fee for each further invention/group of inventions. This might have severe consequences
during the examination proceedings since according to new Rule 137(5) EPC amended claims may not relate to
unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to
form a single general inventive concept. Therefore, it is absolutely necessary to file a response to any communication
under new Rule 62a(1) EPC so that the most preferred embodiments are searched and, thus, can form part of the
granted patent. To be on the safe side, it might be rec-ommendable to arrange the claims in such a way that the most
preferred embodiments appear first, or perhaps even to draft the claims to include all, or at least the most important
embodiments in a single claim, listing them as preferred alternatives.

At present, if the search division is of the opinion that no meaningful search is possible, the applicant receives a
reasoned declaration to that effect. Alternatively, the search examiner himself decides which subject-matter is to be
searched and prepares a corresponding partial search report. The declaration or the partial search report will then
be considered, for the purposes of subsequent proceedings, as the European search report.

As of April 1, 2010 the applicant will then receive an invitation to indicate the subject-matter to be searched
(time limit: two months). If the applicant fails to respond, the “old” procedure will be followed.

It should be kept in mind that if a partial search report has been drawn up, the examining division will invite the
applicant to restrict the claims to the subject-matter searched. Also in this case, arguments against the limitation
of the search will only be taken into consideration during the substantive examination.

Further processing will not be available!

2. Response to objections raised in a search report
New Rule 70a will make it obligatory for applicants to respond to any objections raised in a search report established
by the European Patent Office. European search reports are accompanied by a preliminary opinion on patentability.
For search reports issued up to March 31, 2010, this European search opinion is a “ser-vice” by the European Patent
Office and can be used as the basis for an informed decision as to whether the application should be pursued further
or not. Moreover, a reply to the opinion may shorten the further procedure. For search reports issued as of April 1, 2010
there will be a time limit for filing arguments and/or amendments addressing the objections raised.

For European patent applications, this time limit will be six months from the date of publication of the search report
(i.e. the same time limit as for paying the examination and designation fees). This period cannot be extended.

For EuroPCT applications, the time limit will expire at the same time as the time limit for declaring the applicant’s
desire to proceed further, which is two months from the date of the respective invitation.

If no response is filed to the search report, the application will be deemed to be withdrawn.

3. Amendments to Euro-PCT applications
Presently, applicants have the possibility of amending an international application upon entry into the European
phase or within a one-month time limit from the Communication pursuant to Rules 161 and 162 EPC.

This procedure will change for EuroPCT applications for which the Communication pursuant to Rules 161 and 162 EPC
has not been issued by March 31, 2010.

As regards international applications for which an international search report was drawn up by an authority other than
the European Patent Office, the old procedure will continue to apply. However, as has been outlined in Section 2.,
supra, a response to the supplementary European search report is mandatory.

However, with respect to PCT applications for which the European Patent Office has acted as the International
Searching Authority and, where a Chapter II Demand was filed, also as the International Preliminary Examining
Authority, the applicant has to comment on the written opinion of the International Searching Authority or the
International Preliminary Report on Patentability within an inextensible (!) one-month period. If no response is filed,
the application will be deemed to be with-drawn.

For this reason, we strongly advise you to send us orders for EuroPCT applications as early as possible to give us
sufficient time to study the application documents and the prosecution history and to prepare a suitably reply as well
as revised appli-cation documents should this be necessary in the light of the Written Opinion of International
Searching Authority or the International Preliminary Report on Patent-ability.

4. Time limit for amendments
Rule 137 EPC will also be amended as from April 1, 2010. As before, it will not be possible to file amended application
documents before receipt of the European search report. Amendments may be filed only once, together with the response
to the European search opinion. Further amendments are subject to the consent of the examining division. Furthermore,
it will become obligatory to identify any amendments made and to indicate the basis for the amendments in the application
as filed (a practice which we are following already now). Amended claims may not relate to subject-matter not searched.

5. Divisional applications
Divisional applications are filed in order to obtain protection for subject-matter excised from the parent application
deliberately or out of necessity in order to comply with the European Patent Convention. Currently, a divisional application
may be filed as long as its parent application is still pending.

As of April 1, 2010, a non-extensible time limit of 24 months from the notification of the first office action in substantive
examination will be introduced. In case a non-unity objection is raised at a later stage of the proceedings, the 24-month
time limit will run from the notification of the non-unity objection. Please note that a search report is not considered to be a
communication from the examining division al-though a response to any search report will become mandatory as of
April 1, 2010 (cf. section 2. supra).

This new time limit applies to all generations of divisional applications, i.e. also to divisional applications filed in
relation to a divisional application.

There will be a transitional provision for all applications for which the new time limit has already expired on April 1, 2010
or will expire shortly afterwards – the cut-off date for filing divisional applications in these cases being October 1, 2010.

If you are of the opinion that a divisional application should be filed for any of your pending European patent applications
(including divisional applications), we would ask you to inform us as soon as possible.

We hope that you find the above information helpful.

If you have any questions regarding the changes to the Implementing Regulations of the EPC and the strategy to be
pursued in view of new provisions, please feel free to contact us any time.

Act for Simplification and Modernization of Patent Law in Germany – Oct. 2008

On October 1, 2009, the Act for Simplification and Modernization of Patent Law en-tered into force. The key elements
of this act are modifications regarding nullity pro-ceedings, which are intended to improve and expedite formerly very
time consum-ing proceedings. Furthermore, the fees for filing patent applications have changed, and some bureaucratic
barriers concerning the German Law on Employee Inventions (ArbnErfG) have been removed.

The changes in detail:

Patent Law:

In nullity proceedings, in which the validity of a patent is verified, the court will henceforth be bound to explicitly
point out to the parties questions of decisive relevance, so that all facts are put on the table from the very beginning
and not, as hitherto, be unveiled by surprising submissions of the parties. The patent court has the possibility to set
a deadline for the parties' final statements, such deadline being extendable only when good cause is shown.
With the consent of all parties, a decision can be made without oral proceedings.

Besides, the appeal proceedings shall also be abbreviated. The appeal, as a rule, is not a new trial court anymore.
Henceforth, the court of appeal shall only focus on the discussion of mistakes in the application of legal norms in the
first instance, and not renegotiate discussions of the facts. That is to say, contrary to previous practice, in appeal
proceedings, only a judicial review of the decision of the first instance takes place. The parties and the public shall
thus know faster whether or not a matter or an object is patented.

As of October 1, 2009, when filing a German patent application, claims fees are payable for the 11th claim onwards.
The fee for electronic filing is EUR 40.00; for the 11th claim and each subsequent claim, a claims fee of another
EUR 20.00 is due. In case the application is filed on paper, the fees rise to the 1.5-fold, respectively.

German Law on Employee Inventions (ArbnErfG):

Claiming an employee (service) invention becomes the rule and is considered to be automatically effected,
if the employer does not explicitly release the invention within four months upon receiving the report of the service
invention. Furthermore, the categorization between making a limited and unlimited claim to a service invention
does not apply anymore. Thus, in future, each claim will be equivalent to an unlimited claim. In case the invention
does not become free, the employer is under a duty to apply for an industrial property protection and to pay a
compensation. This new provision applies to all inventions reported as of October 1, 2009.

On passing the Law on Simplification and Modernization of Patent Law, the German Bundestag has also adopted
some substantial amendments to the trademark law. They have also entered into force on October 1, 2009:

Trademark Law:

1. Opposition Proceedings
Up to now, it was possible to challenge registered trademarks within three months from their publication by an
opposition solely on the basis of older trademark applications or registrations. This possibility – pursuant to the
Provisions of the European Community Trademark Regulations - has now been enlarged, so that an opposition
may also be raised on the basis of older other rights, e.g. domestically known trademarks, even if the goods and/or
services are not similar, notoriously known trademarks or unregistered marks or commercial terms.

This has the advantage that, on the basis of such rights, it is now also possible to proceed against new trademark
registrations before the Office; whereas until now, the only way was by filing a court action.

2. Legal Remedies
In proceedings before the patent office, it is now possible, instead of a reconsideration request, to directly appeal
to the German Federal Patent Court (BPatG). In case you are interested in obtaining a fast decision, it is thus
recommendable to challenge the first Examiner's decision not by a reconsideration request, but directly by an appeal.
In doing so, proceeding times will be reduced.

3. Electronic file
The German Federal Ministry of Justice is now allowed to regulate when the Federal Patent Court and the Federal
Court of Justice (Bundesgerichtshof) may keep their files electronically. This entailed amendments to the Patent and
the Design Acts, so that the proceedings will soon be fully electronic.

Changes of the German Trademark Act as of October 1, 2009 – Sept. 2009

The German Parliament has passed the Act for the Simplification and Modernisation of Patent Law, which also
contains some substantial changes to the Trademark Act, which have entered into force on October 1, 2009.

1. Opposition proceedings
In Germany, registered trademarks can be challenged within three months from their publication by an opposition.
Up to now, oppositions could be based on older trademark applications or registrations only. Analogously to
provisions in the European Community Trademark Regulation, an opposition can now also be based on other
older rights, for example on well-known trademarks, in cases where the goods/services are not similar, on well-known
marks in the sense of Art. 6bis of the Paris Convention, on non-registered marks or on commercial names.

This has got the advantage that such older rights can now be enforced already in opposition proceedings, instead
of in costly litigation.

2. Legal remedies
Instead of the so-called reconsideration request, which takes an opposition case to another trademark Examiner
within the German Patent and Trademark Office, it is now possible instead to directly appeal to the German
Federal Patent Court. In cases where you are interested to receive a fast decision, it is thus recommendable to
challenge the first Examiner's decision not by a reconsideration request, but directly by appeal.

3. Electronic file
The German Federal Ministry of Justice is now allowed to regulate when the Fed-eral Patent Court and the Federal
Court of Justice (Bundesgerichtshof) may keep their files electronically. This entailed changes in the Patent and in
the Design Act, so that it is expected that the proceedings may soon be fully electronic.

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