Let's briefly review EPC 2000

Lorenzo Litta

Only two days to the entrance into force of EPC 2000. I would briefly review with all of you the most interesting aspects of this convention looking for your comments and additions.

The EPC 2000 does not introduce any major changes in substantive patent law, except changes concerning novelty, industrial applicability and priority rights. The EPC 2000 is however a comprehensive revision introducing "a considerable number of smaller amendments".

It is the result of a diplomatic conference held in Munich in November 2000 to revise the Convention on the Grant of European Patents of 5 October 1973, amongst other things to integrate in the EPC new developments in international law, especially those of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement) and of the Patent Law Treaty, and to add a level of judicial review of the Boards of Appeal decisions.

Greece deposited its instrument of ratification on December 13, 2005, and was the fifteenth Contracting State to ratify or accede to the EPC 2000. In addition, since not all the contracting states had deposited their instruments of ratification or accession by September 30, 2007, the EPC 2000 will enter into force on December 13, 2007.

A Contracting State that will not have ratified or acceded to the EPC 2000 at the time of its entry into force, will cease to be party to the EPC as from that time.

Under the EPC 1973, in order to preclude double patenting, the prior art effect of a first European patent application (a so-called "conflicting patent application") filed before the filing date of a second European patent application, but published after said filing date, on the second application is limited to the designated states in common.

The requirements to obtain a date of filing (for a European patent application), laid out in Article 80, have been amended. A reference is now made to the Implementing Regulations, which are now in line with "the wordwide standard laid out in Article 5 of the Patent Law Treaty 2000 (PLT)". In particular, Rule 40 EPC 2000 is relevant. There is no requirement anymore to file claims to obtain a date of filing. In addition the description may be filed in any language. Among the requirements, a reference to a previously filed application may also be used to obtain a date of filing.

The priority rights are extended to filing in or for any member of the WTO, in addition to any state party to the Paris Convention for the Protection of Industrial Property. This amendment has been made to align the European Patent Convention with Article 2 of the TRIPS Agreement.

Article 105a(1) EPC 2000 introduces a procedure for centrally limiting or revoking a European patent. A request for limitation or revocation may be filed at any time throughout the term of the European patent.

Article 112a EPC 2000 introduces a procedure for contesting the decisions of the boards of appeal by filing a petition for review. The petition for review can only be based on a fundamental procedural defect and its purpose is not to obtain a review of the application of substantive law.

Italy defeats France: once more!

Lorenzo Litta

Once upon a time Italy and France were fighting in the Alps with swords and shields. Who does not remember Julius Caesar, Asterix and Obelix? In the Middle Age, Italy and France were still challenging but mostly on arts, from literature to painting. Finally Leonardo da Vinci had probably been the only winner, with no flag, universal genius of humanity for his bright mind.

The sharp intellect of Leonardo invented and forged several instruments and prototypes that are commonly used nowadays. Most of them had to be considered patents.
In the historical struggle between these "cousin-countries", patents have been the new frontier.
Let me explain. Everyone knows what the EPC 2000 is.
For people who are not aware of EPC 2000, they can click here.

Well, we signed it, finally, at the end, almost. Last but not least we ratified it on December, 6, 2007. Exactly one week before the expiring of the terms. The question is: why? The answer is very easy: we want to defeat France once more. In Germany, after the "holy night" of Berlin, no way to win for France. (To be clearer: France ratified EPC 2000 only on December 5...).

Human embryos: no – Human stem cells: yes. EPO vs. USPTO

Olga Capasso

On 25 November 2008, the Enlarged Board of Appeals (EBA) of the European Patent Office issued the Decision G 0002/06, known as the decision of the patentability of human stem cells. The case refers to a patent application filed by WARF (Wisconsin Alumni Research Foundation), rejected by the EPO Examination Division (also) because in conflict with Rule 28(c) EPC. In this short analysis, I only focused on the EBA's interpretation of such rule which, in compliance with art. 6(2)c of Directive 98/44 on the Protection of Biotechnological Inventions, states the unpatentability of biotechnological inventions referring to uses of human embryos for industrial or commercial purposes.

In 2006, the Technical Board of Appeals, having received an appeal petition from the Applicant, decided to submit general and interpretation questions to EBA. Therefore, such decision shall be useful for the purpose of interpretation in connection with pending and future patent applications.

It seems to be worthy reminding the specific content of claim 1 of WARF's patent application that is a cell culture comprising primate (including man) embryonic stem cells, provided with some specific characteristics, as listed in the claim itself.

The EBA decided that the prohibition of patenting products (in this case, human embryonic stem cell cultures) which, at the time of filing the patent application, could be prepared exclusively by a method which necessarily involved the use and consequent destruction of human embryos (as admitted by the applicant), is applicable also to cases in which such method is not specifically included in the claims. The EBA, in fact, pointed out as the mentioned rule does not mention the word "claims", but more generally does refer to "inventions", in the context of their exploitation. Therefore, still according to the EBA, limiting the application of such rule to cases where the use of human embryos is present in the claim wording would be incorrect; it is the technical teaching of the patent application as a whole that is to be considered. Otherwise, the applicability of such rule would be made dependent on claims' formal wording. Therefore, the EBA concluded that the examination to assess patentability according to Rule 28(c) should not focus exclusively on the claimed subject-matter, but should include all aspects which make the claimed subject-matter available to the public.

Moreover, the EBA considered as irrelevant the fact that technical developments were made after the filing date of the patent application, allowing cells to be obtained by methods not involving the destruction of human embryos. The use of human embryos (and their consequent destruction) was considered as an essential part of the industrial and commercial exploitation of the claimed invention. Still according to the EBA, when considering whether an invention complies with the rules providing for unpatentability of human embryos, technical developments which became publicly available only after the filing date cannot be taken into consideration. Any other conclusion would lead to a legal uncertainty. Such EBA way of argumentation is already known and applied, by way of example, when the sufficiency of description requirement is examined: such requirement must be met by the patent application disclosure as filed.

The Decision further examined in closer detail the significance of the use of embryos for the purpose of industrial or commercial exploitation, stating that their use as starting material for the generation of products of industrial application (that is, the claimed human embryonic stem cells) means actually a use for industrial purposes, and thus unpatentable. The wording of art. 6 of Directive 98/44, from which the EPC Rule was taken, has the meaning of considering as patentable only those inventions - for therapeutic or diagnostic purposes - which are applied to the human embryo and useful to it (see Recital 42 of said Directive: Whereas, moreover, uses of human embryos for industrial or commercial purposes must also be excluded from patentability; whereas in any case such exclusion does not affect inventions for therapeutic or diagnostic purposes which are applied to the human embryo and are useful to it).

By such Decision, the EPO provided a substantive interpretation of the exclusion of human embryos from patentability, including cases in which uses of human embryos are specific subject-matter of claims and cases in which they have to be necessarily used for obtaining the claimed matter, as well. The EBA pointed out that the purpose of the Rule in exam complies, in fact, with Directive 98/44, which is directed to specifically exclude human embryos from patentability, thus reaffirming its opposition to any unauthorised uses of the same (the German Bundespatentgericht issued recently the decision No. 3 Ni 42/04 of 5 December 2006 in agreement therewith).

The interpretation of EBA shall be of relevance for pending and future cases: as a matter of fact the restriction to patentability shall not apply to inventions concerning human stem cells (or cell cultures) in general, but only to those obtained by the use and destruction of human embryos. Consequently, inventions concerning human stem cells, not obtained by means of destruction of human embryos, are not excluded from patentability in accordance with Rule 28(c) EPC. This aspect may hopefully have some positive outcome on several EP pending patent applications.

The consequences the above may have on decisions of National Courts can hardly be foreseen.

What about the parallel WARF case in the USA? On 26 June 2008, after a re-examination procedure, the USPTO confirmed the issuance of two WARF patents, of the same family as the EP patent application. The former (US 5,483,780) refers to primate's cells and to a method for obtaining them from primate's blastocyst (the cell organisation stage during embryogenesis before the differentiation between embryo and nutritive tissues and implantation takes place), the latter (US 6,200,806) refers to human embryonic stem cells in pre-implantation phase.
The harmonisation of patent laws governing the biotech sector is still a daydream!

EPC: Italia fuori?

Blogmaster

Come tutti saprete il 13 dicembre 2007 entrerà in vigore la nuova Convenzione Europea - EPC2000. AIPPI ha anche organizzato un piccolo convegno a Roma sul tema, il giugno scorso. I Paesi contraenti che entro tale data non avranno ratificato il nuovo trattato saranno esclusi dalla EPC. Un aggiornamento delle ratifiche e accessioni è al seguente link:
http://www.epo.org/patents/law/legislative-initiatives/epc2000/status.html
L'Italia è tra i Paesi che non ha ratificato ancora, quando mancano ormai poco più di due mesi alla scadenza fatidica. A tutti sono evidenti gli effetti disastrosi qualora tale circostanza si dovesse verificare. Ordine e Collegio dei Consulenti in IP stanno premendo presso i rappresentanti delle istituzioni, purtroppo ad oggi senza esito. La Dottoressa Olga Capasso, cui dobbiamo l’aggiornamento, si sta attivando per coinvolgere anche l’AIPPI, ma i tempi sono strettissimi .

One patent, several savings...

Lorenzo Litta

We have already spoken quite deeply in this weblog about the European Patent Convention 2000. Recently, our brilliant colleague, Olga Capasso, focused the italian patents' landscape at the beginning of 2008. Now it would be interesting to remember that the European Patent Office informed last week that the waiting for the "London Agreement" will finish soon, in particular next May, 1.

The London Agreement is due to come into force in a matter of months after France deposited the instrument of ratification with the German Ministry of Justice on 29 January.

The agreement, which will enter into force on 1 May - the first day of the fourth month following the deposit of the instrument - will make patenting in Europe cheaper by reducing post-grant translation costs.

Under the agreement, which was adopted on 17 October 2000, key EPC contracting states agreed to largely or entirely waive the requirement for translations of granted European patents in their national language.

Countries, such as France, Germany or the United Kingdom, whose national language is also an official EPO language will dispense with translation requirements.

This change is expected to benefit small and medium-sized enterprises in particular.

For further information on London Agreement, please click here.

Ricominciamo dal WORLD IP DAY!

Lorenzo Litta

Iniziamo dalle scuse. Purtroppo in questo mese le feste, il lavoro ed i problemi tecnici hanno preso il sopravvento. E' stato necessario resettare la piattaforma perchè siete diventati in tanti a visitarci e il blog è andato in tilt! E per questo lavoriamo per trasformare ed aggiornare al più presto CATCH US e per dargli un nuovo vestito e renderlo più semplice da utilizzare. Purtroppo tutti gli articoli scritti e pubblicati nell'ultimo mese sono andati persi e mi scuso con quanti hanno contribuito. Vorrei tuttavia citare il Seminario tenutosi a Roma il 13 Aprile sull'EPC 2000 organizzato dalla Dottoressa Capasso che è stato molto apprezzato anche in ambienti milanesi: è ora che a Roma si faccia qualche cosa di più nel meraviglioso mondo dell'IP e ben vengano occasioni come questa che ha visto, peraltro, anche una cospicua partecipazione. In occasione del World IP Day aggiungo che il Master in IP dell'ICE dovrebbe nuovamente partire nei prossimi mesi ed invito chi fosse interessato a monitorare la home page della formazione dell'Istituto per il Commercio Estero. Grazie e buona IP a tutti!

Italia batte Francia... anche sui Ticket!

Lorenzo Litta

Per la serie non c'è due...senza tre! Dopo i Mondiali di Calcio 2006 e la ratifica dell'EPC 2000, l'Italia batte ancora la Francia. Questa volta tocca agli amici Maurizio Borghese e Rossella Giordano difendere i colori nazionali. I due avvocati dello Studio Borghese di Napoli hanno infatti vinto ancora una importante battaglia legale. Questa volta per conto della Repas Lunch Coupon che era stata accusata dalla nota multinazionale francese Accor per l'utilizzo della parola 'Ticket' nel marchio dei buoni pasto denominati "Ticket Laundry".

La Sezione Specializzata in IP del Tribunale di Roma ha infatti rigettato le domande proposte dalla multinazionale francese affinchè fosse dichiarato nullo per mancanza del requisito della novità o in alternativa perchè registrato in 'mala fede' il marchio 'Ticket laundry' di Repas. Per effetto della sentenza la Accor ha dunque perso il monopolio sul marchio 'Ticket restaurant'.