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Monday, 22 June 2009

A tricky European patent question

A friend of the IPKat has been pondering a particularly tricky question relating to European patent law, which has so far eluded a straightforward answer, even from the EPO. Any trade mark practitioners can look away now.

The question relates to what happens when an international application is objected to by the EPO acting as the international search authority (ISA) on grounds of lack of unity. Before the International Search Report (ISR) is established, the applicant is 'invited', under PCT Article 17(3)(a), to pay additional search fees to cover other inventions that have not been searched, giving a very tight one month deadline for paying the fee(s), under Rule 40.1. According to Annex D of the PCT Applicant's Guide, the EPO charges 1700 Euros for every search, which means that doing this can get very expensive for some applications.

Until last year, it didn't really matter whether any additional search fees were paid during the international stage, because extra searches could always be paid in the European regional phase. Following the implementation of Rule 164(2) EPC, however, this is no longer possible. Instead, it is now only possible to pursue inventions not searched during the international phase by filing a divisional application. Filing divisional applications at the EPO can also be a very expensive business.

The question is then what happens when an applicant is no longer interested in the invention searched by the ISA but wants to pursue another invention in the European regional phase that was not searched, and for which no additional search fees were paid. Is the applicant required to file a request to enter the European regional phase, meeting all the requirements of Rule 159 EPC for the claims he doesn't want, and then file a divisional application for the claims he does want? Is it possible instead to file the request for the parent application, but not pay any fees, and file the divisional before the fees become due? Is it possible just to file the European request as a divisional application and not bother with the parent? Or is there some other clever solution that has not been considered?

The IPKat does not have a clear answer, so would very much like to hear from any of his readers who might have ideas or, more preferably, who have done something in this situation that actually works. All contributions, preferably only by means of the comments facility so that all can obtain the benefit (anonymous/pseudonymous, if necessary), would be gratefully received.


Anonymous said...

If it is necessary to enter the European regional phase and then file a divisional, one option might be to pay the fees on entry into the regional phase, file the divisional, and then withdraw the parent. The EPO would then refund the examination fees on the parent (and the search fee if there was one, depending on the ISA), provided that search/examination has not started, so you would get virtually all of the fees back for the parent. This seems safer than never paying the fee on the parent. (I have not done this but I have withdrawn Euro applications before examination and got the fees back fine).

Anonymous said...

Since the examination and designation fees are only payable six months after the publication of the ISR, the applicant can enter the Regional Phase relatively cheaply during this period and then file a divisonal application therefrom.

Gobhicks said...

Well, the question surely is whether there is a European Patent Application pending at the time of filing the divisional (Rule 36).

Art 153

(2) An international application for which the European Patent Office is a designated or elected Office, and which has been accorded an international date of filing, shall be equivalent to a regular European application (Euro-PCT application).

(5) The Euro-PCT application shall be treated as a European patent application and shall be considered as comprised in the state of the art under Article 54, paragraph 3, if the conditions laid down in paragraph 3 or 4 and in the Implementing Regulations are fulfilled.

Rule 160

(1) If either the translation of the international application or the request for examination is not filed in due time, or if the filing fee, the search fee or the designation fee is not paid in due time, the European patent application shall be deemed to be withdrawn.

On that basis it seems pretty clear that a PCT application designating EP is to be treated as a pending European application for the purposes of Rule 36. This is supported by the fact that the EPO actually allocates European application numbers to PCT applications without any action on the part of the applicant, and that EPO form 1201 (Entry into the European Phase…) says that “the European patent application shall be deemed to be withdrawn” if the necessary acts are not carried out by the 31 month deadline. If the application is going to be deemed as withdrawn then it must have been pending already, no?

I’ve never done it, but it seems to me that you should be able to file a divisional application on a Euro-PCT application, at least up to the 31 month deadline, without having to pay any EPO fees on the parent application.

patently said...

My understanding is that you will need to enter the regional phase in order to file the divisional. As the fee is needed in order to do so, you will need to pay at least some fees.

Given that, the scenario is such that there will have been an EPO ISA, so there will be no need to pay a search fee. All claims after the 15th could amended out without prejudice, so no claims fees. Then, Anon 6:49's suggestion could be used to get most or all of the exam fee back, so the total loss would be the filing fee and the designation fees - €680 max, and not much more that the difference between the normal €1050 search fee and the €1700 search fee for additional searches in the international phase. (Suspiciously similar, in fact!)

Cosmictrout said...

You can't enter the EP regional phase as a divisional (cf the US, where you can file a continuation of a PCT which itself has not entered the US nat phase) - a divisional can only be filed once the PCT application enters the regional phase.

That's what the EPO think, anyway - see GL A-IV 1.1.1:

"In the case of the parent application being a Euro-PCT application, a divisional application can only be filed once the Euro-PCT application is pending before the EPO acting as a designated or elected Office, i.e. the Euro-PCT application must have entered the European phase."

By analogy with the treatment of PCTs for A.54(3) purposes, 'entering the regional phase' might just mean payment of filing fee and filing of translation. But the EPO probably think it means fulfilling all requirements of R.159 - i.e. translation, payment of all the fees, requesting exam etc.

Arguably, however, there is no legal basis for saying that a European divisional application can't be filed from a (non-entered) Euro-PCT, since a Euro-PCT is supposed to have the same effect as a European direct application, as from its filing date (A153(2)EPC).

There appears to be no case law confirming this - does this mean noone has dared to try? I'd be interested to hear from anyone who has...

Chris H said...

There is another solution for getting claims of a second invention searched in the European phase when only those of the first invention were searched during the international phase, without messing around with divisionals.

Rule 164(1) specifies that a supplementary search report is drawn up for the invention FIRST mentioned in the claims.

Therefore if you swap the order of the claims, such that those of the second invention are now first, the EPO is obliged to provide a search report for the claims of the second invention.

I haven't had reason as yet to try it myself, but was informed of the above by a member of the EPO giving a talk on EPC2000 a year or two ago - he said the EPO didn't promote it for the obvious reason that it may be subject to abuse.

Does anyone have experience of this?

Anonymous said...

Chris H, that idea only works if all the claims have been searched in the International Phase. If no further search fees are paid, the application is limited to the claims searched under R. 164(2).

David said...

Also, bear in mind that no supplementary search report is drawn up for applications where the EPO was the ISA (see OJ EPO 1979, 4, Corr. 50, OJ EPO 1979, 248 and OJ EPO 1995, 511). According to the EPO, a divisional application is the only way to obtain a search for parts not already searched by the time the supplementary search has been drawn up. If the EPO was ISA, the opportunity to rejig the claims on regional phase entry to pursue claims that were not searched has already been lost. See the EPO FAQ on EPC2000 here.

Anonymous said...

Anonymous at 2.10pm - I have spoken to the EPO and they basically said that they don't care what was searched in the ISR if they are performing a supplementary search, i.e. Chris H is correct and the first mentioned invention will be searched regardless of whether it was searched by the ISA or not.

Similarly, even if you had 3 inventions searched by the ISA (when not the EPO), you are still limited in the EP-PCT application to the first mentioned invention that was searched in the Suppl. search report.

Does anyone have any experience contrary to this?

I appreciate David's comment though that in his scenario the EPO is the ISA.

Anonymous said...

What is really annoying at the moment is the EPO practice relating to PCT-EP applicationa which have been awaiting the supplementary search for the last 5 years or so. With the new rules, the search report is being banged out on the first set of claims only, with no chance to pay a further search fee. A transitional arrangement whereby the applicant is asked which set of claims should be searched would have been more customer oriented.


Anonymous said...

Do you not think Art. 153(5) EPC is relevant here? (You quote it yourself, but you don't seem to refer to its conditions. Or I am missing something.)

If for an application to be "pending", it is necessary that the EPO "treats" it as a European patent application, then it seems necessary that the filing fee under R. 159(1)(c) EPC has been paid (and a translation is filed with the EPO, if necessary). See R. 165 EPC, which implements Art. 153(5) EPC. On the other hand, R. 165 EPC only refers to the Euro-PCT application becoming part of the state of the art under Art. 54(3) EPC, so it could be argued that payment of the filing fee is not required for the Euro-PCT application to be treated as a European patent application...

Furthermore, the filing fee is only due 31 months after the filing or priority date (R. 159(1) EPC). This could also be used to argue that payment of the filing fee is not (yet) required for the Euro-PCT application to be treated as a European patent application before the expiry of the 31 month period.

However, also Art. 23 PCT (in combination with Art. 150(2) EPC) seems important. The EPO (as designated office) shall not process the international application (as a European application) before expiry of the 31 month period, unless expressly requested. So if the applicant intends to file a divisional before the expiry of the 31 month period, he should at least expressly request early processing. For this, I suppose it is sufficient to file the regular form 1200.

Without an express request for early entry, it seems that at expiry of the 31 month limit the international application becomes a European patent application, but is immediately deemed to be withdrawn. So this would probably not leave any time to file a divisional.

However, if the outcome of G 1/09 ("pending application") is that a divisional can be filed until the date that a refusal of the parent becomes final, it could very well be argued that a divisional can also be filed until the date that the "deemed to be withdrawn" status of the parent becomes final, i.e. until the 2 month period to request further processing runs out...

To stay on the safe side, I would advise to request early entry, pay (only) the filing fee, and file the divisional before the expiry of the 31 month period.

Gobhicks said...

@anon 12:04

Good points.

As regards R.159, this refers to “Requirements for entry into the European phase”:

1) In respect of an international application under Article 153, the applicant shall perform the following acts within thirty-one months from the date of filing of the application or, if priority has been claimed, from the priority date: …

According to A. 153(2), the international application is already treated as “equivalent to a regular European application (Euro-PCT application)” simply by virtue of having been accorded an international filing date. The plain reading of that is that a pending international application is to be treated in all respects as a regular pending European application.

R.160(1) also clearly implies that a European patent application is pending up until the 31 month deadline, by explicitly stating that if either the translation of the international application or the request for examination is not filed in due time, or if the filing fee, the search fee or the designation fee is not paid in due time, the European patent application shall be deemed to be withdrawn.

As regards R.165, the plain reading is that the condition of paying the filing fee is only for the purposes of A.54(3) – A.153(2) already says that the Euro-PCT application is equivalent to a regular European application.

A.153(5) is a thornier question. Given the unequivocal wording of A.152(2), I would argue it has to be read with the emphasis on the first AND as regards the IF:

“(5) The Euro-PCT application shall [A] be treated as a European patent application [as provided by paragraph (2)] AND shall [B] be considered as comprised in the state of the art under Article 54, paragraph 3, IF the conditions laid down in paragraph 3 or 4 and in the Implementing Regulations are fulfilled [this IF applying to [B]].

PCT A.23 is an interesting point
(1) No designated Office shall process or examine the international application prior to the expiration of the applicable time limit under Article 22.
(2) Notwithstanding the provisions of paragraph (1), any designated Office may, on the express request of the applicant, process or examine the international application at any time.

Does treating an international application, as of its filing, as equivalent to a regular European application amount to processing it? I don’t think so. Accepting a divisional filing based only on the existence of the international application as its parent does not require processing the international application.

Anonymous said...

The patent application that survives three examinations by different authorities is potentially stronger as a patent than one that only goes through one. Several European applicants only file a European application as the first application, or they file a PCT as the first and use the EPO as ISA.
For this reason I invariably use the Swedish Patent Office as ISA. This way I obtain a national search, a Swedish ISA and WR, and later a regional supplementary search by the EPO. They all have different views of the technical world (and the US a fourth!).
For this reason I believe that I am able to side-step the issue of the present problem that is unilaterally and unreasonably created by EPC2000. The simplification that a PCT application designating EP is regarded as a filed European application and hence given the entitlement to Further Processing if all steps are not complied with at 31 months is not sufficient compensation for the search problems created.

Refer to me as "PRV proponent" if my comment is worthy of further comment.

Anonymous said...

It would be lovely to designate another office as the ISA (as suggested by the PRV proponent) but unfortunately for British PCT applicants the EPO is the only available ISA (I believe this is true for a number of other countries too).

Gobhicks said...

There’s another good point, prompted by PRV Proponent: further processing.

A.121 (1) If an applicant fails to observe a time limit vis-à-vis the European Patent Office, he may request further processing of the European patent application.

If the PCT application is not already a pending European application prior to the 31 month limit, how can further processing apply?

Anonymous said...

(I'm the anon of 12:04)

If the PCT application is not already a pending European application prior to the 31 month limit, how can further processing apply?

One explanation is that, without an express request for early processing, the Euro-PCT application becomes pending (Art. 23(1) PCT) and immediately deemed to be withdrawn (R. 160(1) EPC) at the expiry of the 31 month period. Interestingly, R. 160(2) EPC prescribes that R. 112(2) shall apply "mutatis mutandis"! (Note that current R. 160(2) was R. 160(3) before 01.04.2009.)

As I noted earlier, a surprising outcome of G 1/09 might possibly imply that a divisional can be filed during the period for filing the request for further processing. I think this is pretty unlikely, but not completely unthinkable.

To come back to Art. 153(5) EPC, in your interpretation the first part ([A]) would add nothing to Art. 153(2) EPC and thus be meaningless. I don't think that is correct. I would say the IF applies to both [A] and [B]. Whether this means that R. 165, contrary to its wording, also applies to [A] I don't know. Of course this leaves open the possibility that "treated as" in Art. 153(5) has nothing to do with the application becoming "pending"...

Anonymous said...

(Anon of 12:04 again)

In addition to my previous post: it seems certainly possible to refer to a "European patent application" (as Art. 121(1) does) without the application being pending. Otherwise, Art. 121 EPC would already imply that the application is pending during the period that further processing "of the European patent application" can be requested. This seems unlikely to be correct.

Another point of view. Art. 7 of the Revision Act and its implementing decision of the Administrative Council also refer to European patent applications "pending at the time of their entry into force". This might also shed some light on the issue, provided that "pendency" of a European application has the same meaning in both R. 36(1) EPC and in the Revision Act. I would say it does, since Art. 175(2) EPC (both old and new) already mentions this term. It makes sense that all uses of "pending" in regard of European patent application have the meaning it has in Art. 175(2) EPC. (Side question: can Art. 175(2) EPC help in resolving the meaning of "pending application"? It at least seems to imply that any "gap" in pendency, e.g. between a refusal and the filing of an appeal, is at least retroactively cancelled (or non-existent, which would answer G 1/09 in the affirmative), so that divisionals filed during the gap become valid.)

Art. 7(1), 2nd sentence, Revision Act might be interpreted to imply that a Euro-PCT application is "pending" already before entry into the regional phase. Otherwise, the transitional provisions in the decision of the AC could not apply to such applications: it only applies to European patents already granted and to European patent applications pending on 13.12.2007. However, Art. 1(6) of that decision applies to international applications pending on 13.12.2007 which I'm sure means pending in the PCT-sense, i.e. including Euro-PCT applications that had not yet entered regional phase on that day.

Maybe there is more that could be deduced from the transitional provisions, e.g. an indication that "pending" in these provisions does have a different meaning than in R. 36(1) EPC...

At the moment I tend to think that a European patent application is "pending" in the sense of Art. 175(2) and Art. 7(1) Revision Act from the filing date until the date it is granted or cannot be revived in any way. The remaining question is then whether R. 36(1) EPC, despite its wording, refers to the pendency of the European patent application, or to the pendency of EPO grant proceedings.

Gobhicks said...

@anon 12:04
What I meant about 153(5), really, was that given 153(2), the natural reading of 153(5) is that it’s “all about” 54(3).

RE: it seems certainly possible to refer to a "European patent application" (as Art. 121(1) does) without the application being pending.

Certainly, a European patent application can exist in a state other than pending, (withdrawn, deemed to be withdrawn, refused). But surely, once it first comes into existence, it must be pending until something happens to change that status. For a Euro-PCT application, assuming all PCT requirements are met and it is not withdrawn, its status at the EPO cannot change until the 31 month date. Or is the Euro-PCT application, prior to entering the regional phase, supposed to exist only in some strange, Schrodinger-style virtual/limbo state?

Afraid I don’t have time to delve into the nuances of the Revision Act etc….

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