James Nurton: What are the advantages of the EPO? How well do you think it is working and how does it compare with filing national patents in Europe?
Niklas Mattsson: The basic advantage of using the EPO rather than national filings is that you are able to centralise and use only one application to reach the 38 member states of the European Patent Organisation. If you are seeking protection in all of those countries then you can streamline and save costs. The EPO is also a large office with well-trained staff; they have professional routines, very advanced online filing tools and online register tools that make it easy for a practitioner to work with them in prosecuting a patent application and opposing patents. It's really the default route for IP practitioners.
JN: Over the years that you have worked with the office has it changed very much, particularly as the number of applications has increased?
NM: The major changes that I have seen are the rule changes and the way the Office has tried to adapt to the ever-increasing amount of applications filed. I haven't seen a big change in the actual quality of work and service.
Fabian Edlund: About 10 years ago, many Swedish companies preferred to file Swedish national applications first and then international filings. Now it's extremely unusual to file in Sweden and most of my clients in electronics and software file almost exclusively in the EPO first. For clients from outside Europe, the European patent system has been popular for some time but there was a significant increase in popularity with the London Agreement when the costs for validation were significantly reduced. We now only have very specific strategic situations where filing nationally is required.
The fairness of translations
JN: Has the London Agreement made the European system very cost-effective?
NM: My clients that are start-up biotech companies have definitely adapted their choice of countries for validation of a European patent based on the costs and differences in costs that have arisen from the London Agreement. Countries that are just outside the main market are included if it's cheap to validate there, but not if it's expensive.
JN: A number of the countries that haven't joined the London Agreement have argued that it's important for patents to be available in the language of that country so that local researchers can understand them. Do you think that's a reasonable argument?
NM: From the biotech and pharmaceutical perspective, anybody in research or doing business in that research is well-versed in the English language.
FE: It's the same in my field: at small IT start-ups, software and electronics companies, the engineers and developers who are the inventors and involved in assessing the prior art and competitors' inventions work almost exclusively in English.
NM: From a practical standpoint it's not a problem, but there is a legal argument that a citizen of a country shouldn't have to learn another language to learn what he or she cannot do in terms of developing technology. In any litigation though, you are entitled to a full translation so there are safeguards to ensure that nobody falls into the trap of being caught simply because they don't know English, German or French.
JN: The Office under the new head Benoît Battistelli is working with Google on developing some automated machine translations. What do you think of that initiative?
FE: This could be the solution to this problem of having information accessible if it needs to be translated at low cost. It's also an interesting experiment of how good a translation a computer can provide. The plan as far as I understand, is to have an experience-based translation system, not a rule-based translation system. The database of patents translated very accurately by professionals is a goldmine that can be fed into a translation engine system. Hopefully then the computer system will be able provide translations that are almost as good. As an engineer I find that very exciting and as a patent attorney, it could remove some of the hurdles to a more integrated system in Europe.
One application for one invention
JN: What general advice would you have for patent owners or applicants based outside of Europe at the EPO?
FE: The European system is designed to have one application for one invention. The sooner an applicant takes that into consideration in the filing procedure, the better off they will be and the less costly a prosecution they will have. Conditions are different depending on the field: in electronics and software, it is usually possible to plan filings in advance so that there is one invention in each application. I try to encourage my clients in the US, where typically applications are longer with more complex claims, to do this before they file their European patent application and even their PCT application. This is more cost-effective than if they start with one long application that they have to divide later.
NM: This problem also arises in biotech. We frequently see research progressing along a genus to a species timeline, where the applicant has a large set of molecules from which they will ultimately select one, two or three lead candidates to be the final products on the market. They need to file for patent protection for the genus – the whole bunch of molecules – and they will not know which will be final candidates until very costly and lengthy clinical trials have been conducted. The examiner will have to search this large genus of potentially billions of different combinations of chemical groups. This means that a biotech or pharma application of that type is going to have a problem as the applicant has to wait until they know which candidate is the most interesting one: only then can they divide their application. If they run into the problem of the unity of invention and the examiner says there are too many species that don't fit together into this genus then that's a big problem as it would entail paying multiple search fees at a very early stage, which is costly for a very small start-up biotech company. In spite of the high costs, however, I would recommend spending money on extra search fees for the PCT or first European search so everything in the application is actually searched as that will give the applicant maximum freedom along the road rather than being locked into a certain species that might not turn out to be the most relevant or interesting.
JN: Is there anything the office can or should do to address those concerns or is it down to the applicant to adapt their strategies to meet the requirements?
NM: The problem is always going to be there and has been made more difficult by the new rules. The 24-month divisional due date, at least in my field, is too short.
FE: I don't see this being a big problem in electronics and software. Even complex applications are reasonably clear in their contents and it is known at the time of filing which are the relevant concepts. There's still plenty of time after the filing for the applicant to decide if they want to file a divisional or not.
Software and business methods
JN: Do you have any other practical points?
FE: The time limit for responding to office actions in Europe is a maximum six months. If a response is not filed, the application is withdrawn but further processing can be requested. The fee for this is not very high. If the deadline is approaching and for example, a foreign associate needs more time to contact their client, it's useful to know that we can fail to file this response, get some more time for further processing and prepare a good solid response.
JN: One area where there is a notable difference between the US and Europe is in software and business methods. What do you think of the latest developments in Europe in this area?
FE: It's good that we have a decision from the Enlarged Board of Appeal in that we have a decision. We didn't get much advice due to the fact that the questions weren't really addressing the issues that most applicants experience, however it has to be understood that the practice that we have here now is here to stay for at least the next few years. For software, we can get pretty much the same protection in Europe as in the US. The practice in business methods is very harsh, but there are clear rules meaning applicants have a reasonable chance of working out how to protect themselves.
In Europe we make a big distinction between technical and non-technical features. Non-technical features cannot contribute to novelty and inventive step. Problems begin when you start to divide the claims for a patent into technical and non-technical features as they often interact. An applicant may try to argue that a non-technical feature solves a technical problem, but the EPO will comment that it is not solving a technical problem, only circumventing it, and so it's non-technical.
Also, in assessing inventive step, the EPO will typically include at least parts of these non-technical features in the problem that they present to the skilled person to ask whether the skilled person would be able to solve this problem. Technical or non-technical features should not be provided in the technical problem, if they are new features. That's hindsight and to the EPO, apparently, hindsight is fine if it's non-technical. However, most software inventions that are inventions, according to the EPC, will also be patentable and normally don't present too many problems.
Confusing approach to claims
JN: Do you have one or two case studies based on recent filings and lessons learned from them?
NM: I had a European patent application that was an EP regional phase application from a PCT application and handled by the EPO as the international searching authority, so it was the same examiner who examines the same application and probably the same claims. In the first partial search report, the examiner identified several groups of claims and wanted us to pay additional search fees for the ones that weren't covered by the first search fee. This was based on the lack of unity argument which was not entirely clear, but understood by us to be dependent on a certain claim.
Later in the European phase, we removed that claim along with other claims as the claims fees are hefty and we also wanted to be confident that the claims that we had left were covered by the initial search. So we were dismayed when the examiner responded and said that this is not searched subject matter and we couldn't amend the claims to cover this because he had said already in the partial international search report that he wanted more search fees to search this.
We were very confused as we had removed the offending subject matter that the examiner had said was non-unitary. Then when we went back and looked at the actual wording of the examiner's objection, we saw that there was room for another interpretation that took into account the whole claim set and would have made it necessary for us to pay 20 search fees of more than €1500 each which would have been impossible for this small biotech start-up. The only other avenue was to file divisionals for all these new applications, so we are now trying to argue that this unity objection was directed to that offending claim that we have removed and we are hoping that the examiner will remove that unity objection and order a new search.
Filing a divisional application isn't prohibitively expensive but it was complicated in this case as we had already used the first application as a basis for translating claims for provisional protection in several member states. This would have to be done again with the costs for a divisional application, and this would have been really expensive.
Try oral proceedings
FE: I have had several cases where I have been summoned to oral proceedings after reaching the end of the amendments process with an examiner. In cases where it seems a patent will not be granted, these can be a very good way to phrase claims in a way that examiner will accept, and get patent protection without going through an appeal procedure.
When an applicant files a response to an office action, as a precautionary measure, they are entitled to request oral proceedings, meaning that the examiner cannot refuse the application without first summoning the applicant to oral proceedings. The proceedings take place either physically in Munich or The Hague or you can also request proceedings by video conference. They can also be requested at short notice: I had a case where we requested and were granted a video conference one week before the date was set. There are three examiners: the chairperson, the primary examiner and an additional examiner and they usually want to focus on one or two issues, but of course you have to prepare for the full spectrum of rejections from the examiners. This is essential as they will make their decision on the spot.
Oral proceedings are particularly useful when you have an examiner who doesn't really understand the technology of the invention so it's useful to be able to explain how the invention actually works. In those situations there can be long technical discussions on how things work before you even get to discussing the features of the claim.
Changes don't address backlog
JN: What do you make of the EPO changes as a package overall? Do you think they were necessary and delivered the aim intended?
NM: The EPO has shifted the burden of difficulties on to the applicant to a greater extent. They want us as representatives and the applicants to deal with problems at an earlier stage. This is difficult if you are in a business where you don't really know what you need until development and research has progressed.
Some of the changes are more draconian than others: making the applicant respond to objections raised in the international phase within a few months rather than two or three years, as used to be the case, is reasonable and it's even better now that they give us six months rather than one month, which was brief especially if you weren't the representative for the international application. The information disclosure Rule 141 is also not very difficult to comply with: it's reasonable that they would want to know what any foreign patent office that examined similar or identical text thought about it and what prior art was found. As a whole, the rule package addresses some of the problems of the system. I don't think they will reduce the EPO's backlog or amount of work and I think they are going to have to address that in different ways as well.
Niklas Mattsson is a European patent attorney and partner at Awapatent’s Stockholm office.|
He drafts and prosecutes patent applications worldwide, and is often involved in conducting infringement and validity investigations and freedom-to-operate analyses. He has been responsible for major due diligence analyses for investment companies and has built up expertise in the procedures for SPCs (supplementary protection certificates) for pharmaceuticals in Sweden.
Niklas is often called upon to lecture on the subject of biotech patents, both in Sweden and abroad. He is frequently engaged as a technical expert in patent litigation in Swedish courts and has served as an expert witness in European patent law in a patent lawsuit in the United States. Niklas is member of the biotech committee of the EPI.
Fabian Edlund is a European patent attorney and the managing partner of Awapatent’s Gothenburg office.|
He drafts and prosecutes patent applications for many different clients, primarily before the European Patent Office. He acts as a strategic adviser for small and medium-sized IT companies, focusing on software development to help them improve their business with the support of IP.
Fabian is active in Awapatent's practice group for patenting software and business methods, and has given numerous lectures in the US, Japan and Sweden on European practice and the patenting of software inventions in Europe. He is Secretary General and member of the software commission of UNION of European Practitioners in IP.