Welcome to our series of brief weekly articles introducing some of the peculiarities (features?) of the European Patent Office. These articles are intended as a short introduction to each topic, giving a summary of the issue and some practical pointers. Each article is intentionally "short and sweet" and devoid of treatises on case law to hopefully make them an easy read. I am sure many readers will find each piece somewhat basic, but the basics are often key to success and hopefully there are plenty of gems even for the more knowledgeable reader.
Articles in this series
Adaptation of the description no longer required at the EPO
15 October 2024
A new Decision from an EPO Board of Appeal gives applicants strong grounds to resist requests to adapt the description of patent applications to the claims.
Read the full article here
EPO fee increases – 1 April 2023
21 February 2023
The EPO will increase most of their official fees on 1 April 2023, but early payment is possible.
Read the full article here.
Delaying grant & early requests for a unitary patent
16 November 2022
The EPO have announced the start date for early requests for unitary patents, and the ability to delay grant to obtain a unitary patent.
Read the full article here.
The new Rules of Procedure of the Boards of Appeal
5 October 2022
A look at the revised (in 2020) Rules of Procedure of the EPO’s Boards of Appeal and how to work with them. Read the full article here.
Unified Patent Court (UPC) – Opt-Out
22 July 2022
The Opt-Out provisions of the UPC enable patentees to remove patents from the jurisdiction of the UPC. Read the full article here.
Patent description amendments at the EPO (2)
20 July 2022
The requirement to amend the description of European patent applications before grant is continuing to cause challenges for applicants. Read full article here.
Unified Patent Court (UPC) – Unitary Patent & validation scope
18 July 2022
The UPC Agreement also creates the Unitary Patent which will be a single unitary right available for patents granted by the EPO. Read full article here.
Unified Patent Court (UPC) – Application Strategy
11 July 2022
In this first of a series of short articles on the UPC we look at the impact the Court might have on filing and prosecution strategies. Read full article here.
Patent description amendments at the EPO
6 January 2022
The EPO's Board of Appeal has found no legal basis to require amendments to the description in line with the claims. Read full article here.
Oppositions (15) – Petition for review
3 August 2021
A final option available to parties is a petition for review by the Enlarged Board of Appeal. Read full article here.
Oppositions (14) – The Enlarged Board of Appeal
27 July 2021
An appeal to the EPO Boards of Appeal is usually the last level of review, but there are a few situations in which a further review is possible. Read full article here.
Oppositions (13) – The Appeal Oral Proceedings
20 July 2021
The final stage of the appeal is the oral proceedings held in front of the full board of appeal. At the end of the oral proceedings, a final decision is verbally announced. Read full article here.
Oppositions (12) – The appeal preliminary opinion
14 July 2021
Prior to appeal oral proceedings the Board of Appeal usually issues a preliminary opinion setting out its current views on the case, and the topics for discussion at the oral proceedings. Read the full article here.
Oppositions (11) – The Reply to an Appeal
6 July 2021
Each party is entitled to reply to the other party’s appeals, which may be the only chance to comment before a preliminary opinion is issued. Read the full article here.
Enlarged Board of Appeal Decision G4/19
29 June 2021
Is it permissible for the EPO to grant two patents to the same applicant for the same invention? Read the full article here.
Oppositions (10) – Opponent’s grounds of appeal
22 June 2021
An Opponent’s appeal will be seeking revocation of a patent, or maintenance in a form narrower than that allowed by the opposition division. Read the full article here.
Oppositions (9) – Reformatio in peius
14 June 2021
This week we discuss the prohibition against reformatio in peius as adopted by The Boards of Appeal. Read the full article here.
Oppositions (8) – The patentee’s grounds of appeal
8 June 2021
A patentee’s appeal from an opposition decision will be seeking reversal of a decision to revoke the patent, or requesting maintenance in a broader form. Read the full article here.
Oppositions (7) – Grounds of appeal
3 June 2021
The grounds of appeal define an appellant’s full case and are thus a critical stage of the appeal process. Read the full article here.
Oppositions (6) – The decision and appeal
25 May 2021
The written decision is often not received for a few months after it is announced at the oral proceedings. Once received it is time to consider an appeal. Read the full article here.
Oppositions (5) – Oral proceedings
18 May 2021
Oral proceedings are the culmination and conclusion of the opposition process, with a final decision announced at the end of the day. Read the full article here.
Oppositions (4) – Preliminary opinion
10 May 2021
The preliminary opinion is the first time the parties will receive an indication of the opposition division’s view of the merits of the opposition. Read the full article here.
Oppositions (3) – Patentee’s reply
27 April 2021
The patentee’s reply is their first opportunity to comment and, although not as limiting as the notice, it's a critical first-step in defending an opposition. Read the full article here.
Oppositions (2) – Filing the opposition
21 April 2021
An opposition must be filed within 9 months of the date of grant of a patent & must substantiate all objections against the patent being opposed. The initial filing in opposition proceedings is therefore one of the most important elements of a successful opposition. Read the full article here.
Oppositions (1) – Overview
13 April 2021
Having dealt with added matter and excluded subject matter over the last few months, we will now move on to look at the EPO’s opposition process. Read the full article here.
Excluded Subject Matter (12) – Contrary to ‘ordre public’ or morality
In this final article on excluded subject matter we will look at the exclusion of inventions where the commercial exploitation of the invention would be contrary to ‘ordre public’ or morality. Read the full article here.
Excluded Subject Matter (11) – Presentation of information
1 April 2021
We look at presentation of information – one of the categories of subject matter that is considered not to be an invention. Read the full article here.
Oral proceedings at the EPO
24 March 2021
This week we are taking a break from excluded subject matter to look at what is happening with oral proceedings at the EPO, which were thrown into a state of turmoil by the COVID pandemic. Read the full article here.
Excluded Subject Matter (10) – Simulations (G1/19)
16 March 2021
The EPO’s Enlarged Board of Appeal has been considering questions relating to the patentability of simulations in case G1/19 and has recently issued its decision. Read the full article here.
Excluded Subject Matter (9) – Biotechnological inventions
9 March 2021
In principle, biotechnological inventions are patentable under the European Patent Convention (EPC), but there are areas of excluded subject matter to navigate. Read the full article here.
Excluded Subject Matter (8) – Methods of operating medical devices
2 March 2021
This week we discuss the patentability of methods of operating a medical device. Read the full article here.
Excluded Subject Matter (7) – 1st and 2nd medical uses
23 February 2021
1st and 2nd medical use claims are an extremely useful form of protection at the European Patent Office, but only for certain products. Read the full article here.
Excluded Subject Matter (6) – Cosmetic methods
16 February 2021
Cosmetic methods that have a therapeutic or surgical aspect can find themselves excluded from patentability. We discuss when this comes into play. Read the full article here.
Excluded Subject Matter (5) – Diagnostic methods
9 February 2021
We look at the exclusion of diagnostic methods from patentability, is it as broad as it sounds? Read the full article here.
Excluded Subject Matter (4) – Methods of treatment by surgery
2 February 2021
We continue to look at Article 53(c) of the European Patent Convention, this week considering methods of treatment by surgery. Read the full article here.
Excluded Subject Matter (3) – Methods of treatment by therapy
26 January 2021
This week we look at Article 53(c) of the European Patent Convention which considers methods of treatment by therapy. Read the full article here.
Excluded Subject Matter (2) – Software
19 January 2021
Knowing how to navigate the pitfalls of the procedure applied by the EPO can provide predictability and certainty to protecting software inventions in Europe. Read the full article here.
Excluded Subject Matter (1) – Overview
12 January 2021
We kick off 2021 with a look at excluded subject matter, one of the most thoroughly discussed, and controversial, aspects of the European Patent Convention. Read the full article here.
Added Matter (8) – Roundup
22 December 2020
In this last article in the set, we round up some key points on this topic. Read the full article here
Added Matter (7) – Ranges
15 December 2020
A particular type of amendment concerns claim limitations based on numerical ranges. This occurs most commonly in chemistry-related cases but is applicable in nearly every technical area to some extent. Read the full article here.
Added Matter (6) – Disclaimers
8 December 2020
Unlike a positive claim feature, a disclaimer defines what is not covered by a claim. Disclaimers are allowable in principle at the EPO, but only under specific conditions. Read the full article here.
Added Matter (5) – Basis from figures
1 December 2020
The figures of an application form part of the application as filed and hence can be used as basis for amendments. Read the full article here.
Added Matter (4) – Intermediate generalisation
24 November 2020
At some point in almost every discussion of added matter the term "intermediate generalisation" will be used, but the meaning of the term is often not clearly understood. Read the full article here.
Added Matter (3) – Combining features from separate embodiments
17 November 2020
Where a patent application discloses more than one embodiment and each embodiment includes different features, what makes an amendment direct and unambiguous? Read the full article here.
Added Matter (2) – The inescapable trap
10 November 2020
A dramatic title for a situation guaranteed to bring any European Patent Attorney out in a cold sweat as they are faced with the irrecoverable loss of a Patent. Read the full article here.
Added Matter (1) – Direct and unambiguous
3 November 2020
Probably the most infamous feature of the EPO is the added rule. Frequently met with cries of derision and panic, it has been the downfall of many wonderfully clever amendments. A strong understanding of the EPO's approach to added matter is critical… Read the full article here.
