inovia's Foreign Filing Blog

European Patent Office: Changes to Multiple Independent Claims Practice

We recently gave a brief summary of the impending 1 April 2010 changes to European rules.

New Rule 62A: Independent Claims
Today, we're going to go into a little more detail about the changes to management of independent claims in Europe under the new regime.

Current practice
Under current European practice, typically only one independent claim is allowed in each claim category (apparatus, method, etc).

However, there are some exceptions:

• Inter-related items (for example, a plug and socket; gene, gene construct, host, protein, medicament; intermediate and final chemical product).

• Multiple different inventive uses of a product or device (for example, different second or further medical uses).

• Examples of alternative solutions to a problem (for example, groups of chemical compounds; two or more processes for manufacturing a compound).

At the moment, the EPO searches all claims, and then raises an objection during examination if it is considered there are too many independent claims in each category.

Under new Rule 62a:
The EPO will no longer search all independent claims in each category. Instead, the new procedure will be to invite the applicant to select which claim in each category should be searched (and therefore examined).

The subject matter of the remaining independent claims may need to be made the subject of a divisional application if it cannot successfully be argued that an exception (such as one of those listed above) is appropriate.

If no claim is selected, the EPO will automatically search only the first claim in each category.

Which applications are affected?
For various technical reasons, the new rules will only affect cases where the International Search Report was not prepared by the EPO.

The rule applies to all applications where the European search report issues after 1 April 2010.

What needs to be done?
For PCT applicants entering the regional phase in Europe, there is an opportunity to amend the European claims either at regional phase entry, or following issuance of a rule 161 communication (we'll post about that soon). This is the last opportunity to get the most appropriate claims on file before the search process begins.

Need more information?
Our European agents, Kilburn & Strode, have prepared briefing papers summarising the main impending changes to European practice. The papers can be downloaded from their website.

“What countries does Europe cover?”

We get this question fairly often.

Sometimes clients (even experienced patent attorneys) make the mistake of assuming the EPO is simply the patent office that caters to the countries of "Europe". It's actually a bit more complicated than that.

Without any additional context, the word "Europe" is generally used as shorthand for the European Union (the "EU"). The EU is a group of 27 member states that form a political and economic union with limited powers delegated to a central European parliament.

However, "Europe" for the purposes of patents is different. The member states of the European Patent Convention (the "EPC") include a number of countries that aren't members of the EU, such as Switzerland and Turkey.

Further complicating things is the fact that new countries are periodically added, either as full members of the EPC, or indirectly by becoming an extension state (extension states will be explained in another posting).

Simply looking up the list of EPO Member States on the EPO's website can potentially be misleading. This is because (for a PCT application) whether a particular country is covered by a European regional phase filing is based on the International Filing Date rather than when the regional phase is entered.

Interestingly, the Norwegian patent office experienced an unexpected fall-off in national phase filings immediately after 1 January 2008 when it became a member state of the EPC. Maybe it was the financial crisis that was in full swing by that time, but it's also possible some applicants made an incorrect assumption about Norway being included in all European regional phase filings after 1 January 2008.

So, what's the easiest way to determine whether a particular country will be included in a European regional phase application from a particular PCT application?

Look at the PCT bibliographic cover sheet, and find the field headed "(84) Designated States". After the word European, there is a bracketed list of country codes. This is the list of countries that will be covered by a European filing coming from this PCT application. If you don't already know it, look up the country code for the country of interest, and see whether it's in that list.

 

5 Reasons to file in New Zealand

(This is the first of a series of posts about particular countries.)

Five good reasons for filing a New Zealand Patent application:

1. New Zealand is a relatively inexpensive country in which to get patent protection.

2. The New Zealand Patent Office provides fast, good quality examination. You can often use what you learn during New Zealand examination in other countries.

3. The New Zealand market is an ideal testing ground for new products and services. New Zealand consumers are sophisticated, well-educated, and relatively affluent - and readily accepting of new products and services.

4. New Zealand IP rights are robust. They are predictable and can be enforced at considerably lower cost than in many other markets.

5. Once a patent application is allowed by an examiner (and providing no opposition is filed), the grant process is quick, simple and cheap.

Thanks to Ian Cockburn at PIPERS, our agent in New Zealand, for this information; you can reach him online at icockburn@piperpat.com.

April 1, 2010: Substantial changes to EPO procedures

As you may know, the EPO generally implements fee and procedural changes on 1 April each year. I like to think of it as their way of making sure everyone has a little fun every April Fools' Day.

This year there are a number of important procedural changes that will apply to PCT applications entering the European regional phase from 1 April 2010.

We will soon provide greater detail about the changes, but in the meantime, important points to note include:

• A hard time limit on the filing of divisionals will (among other things) bring forward the deadline for divisional filings and remove the ability to file a chain of divisionals from a single parent over an extended time.

• If the EPO was the International Search Authority (ISA), it will be compulsory for applicants to submit a response addressing the ISR and written opinion.  The deadline for doing this is typically only a few weeks after regional phase entry, so applicants will need to act quickly.

• There will be some changes to how multiple inventions are handled during examination. In some cases (particularly where there are multiple inventive concepts or independent claims), the order in which claim groups are presented for examination will become more important.

• Amendments to the claims at regional phase entry will now need to be accompanied by an explanation, including the location of support for any material in the amended claims that came from the specification.

We'll soon be posting in detail about these points, but please let us know if you have any specific questions in the meantime.

 

Using the PCT - That's more expensive, isn't it?

In theory, PCT application fees should make the PCT route to foreign patent filing more expensive (overall) than direct Paris Convention filings. However, reality isn't always that simple.

First, the additional 18 months the PCT buys allow better assessment of an invention's likely commercial value.

Second, the International Search Report (ISR) issued during this period often provides a reasonable indication of prior art that will be faced during national phase examination.

Via these advantages, the PCT enables applicants to dynamically adjust the average cost per filing in a way that direct Paris Convention filings simply don't allow. For example, PCT applications for inventions of low commercial value can be allowed to lapse, or national phase can be entered in fewer countries. Higher value applications can be filed more broadly.

Finally, if you can keep national phase entry costs low enough (get a free cost estimate via our PCT calculator), the PCT route can be cheaper overall even without taking these factors into account.

Maybe applicants should consider whether they can afford not to use the PCT!

PCT Applications - Top national stage countries for 2009, by industry type

In this earlier blog post, we ranked our top countries for 2009.  We've also broken down the top countries by the Industry type of our client base.  The rankings come out as follows:

Mechanical / Engineering:

1. Europe

2. USA

3. Australia

4. China

5. India

 

Electrical / Electronics:

1. Japan

2. China

3. Korea

4. India

5. Australia

 

Pharma / Biotech

1. Japan

2. Europe

3. Australia

4. Canada

5. India

 

Chemicals / Materials

1. Europe

2. China

3. Canada

4. Australia

5. Brazil

 

IT / Software / Media

1. Brazil

2. China

3. Europe

4. India

5. USA

 

Business / Finance

1. China

2. USA

3. India

4. Europe

5. Australia

 

 

PCT vs. Paris

PCT versus the Paris Convention

While I'm a firm advocate of the PCT (well, I would be wouldn't I?), direct Paris Convention filing will also have a place in the filing strategies of many applicants.

Some advantages of the PCT are:

• A single application can be filed in the applicant's home country, in the local language.

• It delays (by up to 18 months) the need to make a firm decision about the countries where patent protection is to be pursued.

• The PCT International Search Report (ISR) often can help applicants determine how likely it is that the application will proceed to grant in individual countries after national phase entry.

• Even accounting for the additional cost of the PCT application, slightly lower costs for national phase entry as compared with direct filings means the PCT route for more than a couple of countries can actually be cheaper overall.

That said, there are a few advantages that only direct filings can offer:

1. While many applicants want to delay the costs associated with examination and grant of a patent (and the PCT offers this), sometimes fast grant of the patent is desirable. The sooner an application is filed in an individual country, the sooner it can be examined. Direct filings can often proceed to grant significantly faster than those going by the PCT route.

2. Universal coverage: the PCT covers over 130 countries, including the vast majority of major commercial destinations. However, there are a few notable non-PCT countries, including Taiwan and Argentina. If you want coverage in those, it will be necessary to file directly using either the Paris convention (or - as may be the case with Taiwan - an equivalent bilateral agreement with the applicant's country, assuming one exists).

3. Completely different and tailored content for each country. With the PCT, applicants must draft a single patent specification that takes into account the different legal requirements of all countries. While formality issues aren't such a problem, there may be situations where an applicant would prefer different content to file in, for example, Europe and the USA. The sorts of problems that such different content would seek to avoid tend to be industry specific; for example, different approaches to information technology and pharmaceutical patents in certain jurisdictions may make it difficult to provide a "one size fits all" specification that is perfectly tailored to all jurisdictions.

In essence, in many cases it pays to think of PCT and Paris Convention applications as being complementary rather than alternative approaches to foreign filing.

PCT National Phase Entry Deadlines

What's the national phase entry deadline?

It seems a simple enough question, but we hear it often enough that we thought we'd address it.

The deadline by which you need to enter the national phase is either 30 or 31 months from the earliest filing or priority date associated with the PCT application.  The choice of 30 or 31 month period is set by individual countries, and significant numbers of major countries use each period.  For example, the US and Canada are 30 month countries, whereas Europe and Korea are 31 countries.

The 30/31 month periods are measured from:

• the filing date of the earliest patent application to which the PCT application claims priority under the Paris Convention; or

• the International filing date of the PCT, if no Paris Convention priority was claimed.

Unfortunately, this deadline is relatively firm in nearly all countries.  If it is missed, the PCT application usually cannot enter the national stage.  However, there are a number of countries that offer some relief in this respect.

CANADA

Canada offers a generous one year late-filing period.  To use this, it is simply a matter of paying a small additional government fee at the time of filing, any time in the 12 month period following the 30 month deadline.

CHINA

In China, the 30 month deadline can be extended by two months upon payment of a surcharge.  It's important to note that, although the deadline is delayed by two months, it is necessary to file the translation with the rest of the national phase documents.  Care should therefore be taken provide instructions early enough that the translation can be prepared in time.  For a typical 30 to 40 page specification, a month's notice is fairly comfortable

EUROPE

The European patent office allows revival of applications that have failed to enter the European regional phase by the 31 month deadline.  However, this is not a cheap option, as the European patent office adds a surcharge to the official fees of more than 50%.  Given how expensive the European official fees already are, this can make late filing into Europe an expensive proposition.  However, the importance of Europe as a filing destination could make the additional expense worthwhile.

OTHER COUNTRIES

Elsewhere, it might be possible to revive applications that have missed the national stage deadline due to an omission or error in spite of all due care being taken by the applicant and its representatives.  However, given the onerous standards applied by many countries, and the often subjective nature of the decision, this is not an option to be relied upon.

Indeed, some countries offer no revival right at all.  Japan, for example, simply does not have any mechanism by which an application that has missed the national phase deadline can be revived under any circumstances. 

LATE-FILING OF TRANSLATIONS

Assuming an English language PCT application, the majority of translation countries offer a period of one or two months (after either the national phase entry deadline, or national phase entry itself) within which the translation can be filed.  We use these extensions ourselves quite frequently if we can't get instructions early enough to comfortably complete the translation by the deadline.  There's an additional cost (usually $100-200) in most countries for taking this option. 

Please contact us if you'd like more information about national phase deadlines.

Foreign filing into country "X"

Which country / countries should we add next to our pctfiler network?  We're looking for your feedback.

Today we can handle our clients' PCT national stage entry and European validation in 60+ countries (see the list of countries covered by our global agent network).

Which PCT contracting states should we add next, based on your (or your clients') foreign filing needs?

Our shortlist presently includes:

• ARIPO
• UAE
• Egypt
• Chile
• Thailand
  

 

Translation quality for foreign filing

While we presently accept externally-prepared translations in principle, we sometimes find that translations we receive from clients are not of high quality.

Additional costs are then incurred in having our agents "fix" the translation.  Worse (if it's not bad enough), the client may end up paying the full cost again to have it translated from scratch - not ideal if they've already paid for the first one!

You should be able to say the following about a patent translation:

1. It is a true and accurate translation of the source document.

2. The translator is a native speaker of the destination language.

3. The translator is technically skilled in the relevant technology.

4. It takes into account any specialist legal language used by patent attorneys in the destination country, including idiomatic translation of special technical or legal words used in the source document. 

5. It satisfies local formal requirements relating to character set, font size, spacing, margins and so on.

In our experience, translations prepared by anyone other than a specialist patent translator run the risk of significant deficiencies in some or all of the above areas.

For example, it is rare that even a person very skilled in the relevant technical field who writes well in the destination language and has a good understanding of the source language will have any knowledge of the legal language issues, or of the formalities.

The service level agreements we have with our agents require them to satisfy all the above criteria. We also require that the translation either be prepared by a patent attorney or comprehensively reviewed by a patent attorney prior to filing.

In virtually all countries, it is the translation that forms the basis for your rights. Any weakness or deficiency in the translation is a weakness or deficiency in the resultant protection - and worse, it's one you won't know about until it's too late.

If you have thoughts about translations (and particularly the importance of quality), we'd love to hear them.