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Patent examination - EPO

EPO

http://www.european-patent-office.org/new_hp/tb_applic/index.htm contains:

The EPO provides a free tool, PatXML to write patent applications.

Writing rules

A European patent must contain:

  • a description,

  • claims,

  • an abstract.

Abstract

According to Article 85 of European Patent Convention, "the abstract shall merely serve for use as technical information; it may not be taken into account for any other purpose, in particular not for the purpose of interpreting the scope of the protection sought nor for the purpose of applying Article 54, paragraph 3".

Rule 33 defines the form and content of the abstract:

  1. The abstract shall indicate the title of the invention.

  2. The abstract shall contain a concise summary of the disclosure as contained in the description, the claims and any drawings; the summary shall indicate the technical field to which the invention pertains and shall be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention and the principal use or uses of the invention. The abstract shall, where applicable, contain the chemical formula which, among those contained in the application, best characterises the invention. It shall not contain statements on the alleged merits or value of the invention or on its speculative application.

  3. The abstract shall preferably not contain more than one hundred and fifty words.

  4. If the European patent application contains drawings, the applicant shall indicate the figure or, exceptionally, the figures of the drawings which he suggests should accompany the abstract when the abstract is published. The European Patent Office may decide to publish one or more other figures if it considers that they better characterise the invention. Each main feature mentioned in the abstract and illustrated by a drawing shall be followed by a reference sign, placed between parentheses.

  5. The abstract shall be so drafted that it constitutes an efficient instrument for purposes of searching in the particular technical field particularly by making it possible to assess whether there is a need for consulting the European patent application itself."

The fifth sub-paragraph relates to the fact that the EPO public site indexes the title and the abstract but not the claims and the description. Therefore you can search for strings in the title or abstract but not in the claims and in the description. On the other hand you can get reliable results in searches for assignee, which is not the case for the USPTO.

Claims

Rule 29 says: "The claims shall define the matter for which protection is sought in terms of the technical features of the invention. Wherever appropriate claims shall contain:

  1. a statement indicating the designation of the subject-matter of the invention and those technical features which are necessary for the definition of the claimed subject-matter but which, in combination, are part of the prior art;

  2. a characterising portion - preceded by the expression "characterised in that" or "characterised by" - stating the technical features which, in combination with the features stated in first sub-paragraph, it is desired to protect."

Description

Rule 27 defines the content of the description:

"The description shall:

  1. specify the technical field to which the invention relates;

  2. indicate the background art which, as far as known to the applicant, can be regarded as useful for understanding the invention, for drawing up the European search report and for the examination, and, preferably, cite the documents reflecting such art;

  3. disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state any advantageous effects of the invention with reference to the background art;

  4. briefly describe the figures in the drawings, if any;

  5. describe in detail at least one way of carrying out the invention claimed using examples where appropriate and referring to the drawings, if any;

  6. indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in industry;

  7. the description shall be presented in the manner and order specified in paragraph 1, unless because of the nature of the invention, a different manner or a different order would afford a better understanding and a more economic presentation."

The description of a European application may contain:

  • An invention title, like in a USPTO application. This title should clearly and concisely state the technical designation of the application and should exclude elaborate names. The maximum number of characters allowed is 250.

  • A technical field, like in a USPTO application.

  • The background art, the same thing as the background information of a USPTO application. Indicates the background art which, as far as known to the applicant, can be regarded as useful for understanding the invention, for drawing up the European search report and for the examination, and, preferably, cite the documents reflecting such art.

  • A disclosure of invention. Discloses the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state any advantageous effects of the invention with reference to the background art.

  • A description of drawings in a USPTO application.

  • A best mode, the same thing as the preferred embodiment of a USPTO application. Describes in detail at least one way of carrying out the invention claimed using examples where appropriate and referring to the drawings, if any.

  • A statement about the industrial applicability of the invention. Indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in industry.

PatXML suggests calling other embodiments "Mode(s) for carrying out an invention".

Prosecution history

Consult the patent search page to see how to display the prosecution history of a European patent.

You should get something like this:

Date

Documents for publication number EPxxxxxxx

2004-03-24

Means of redress

2004-03-24

Grounds for the decision (Annex)

2004-03-24

Decision to refuse the application (Article 97(2) EPC)

2004-02-09

Annex to the communication

2004-02-09

Despatch minutes oral proceedings

2004-02-08

Consultation by phone/personal

2004-02-08

Result of personal/telephone consultation

2004-01-06

Letter pursuant to Rule 71a EPC and all other letters during oral proceedings

2004-09-28

Summons to attend oral proceedings

2004-09-28

Annex to the communication

2004-09-18

Preparation for oral proceedings

2004-05-13

Reply to examination report

2004-05-13

Description

2004-05-13

Claims

2004-05-12

Documents concerning the inventorship

2004-03-26

Annex to the communication

2004-03-26

Examination report

2004-02-24

Request to communicate correct address of inventor

2004-02-13

Request to communicate correct address of inventor

2004-02-11

Communication regarding amendment/payment of CLMS (Rule 109 EPC)

2004-02-10

Letter which had not been notified

2004-01-28

Letter which had not been notified

2004-01-28

Info on forthcoming publication bibliographic data

2003-07-18

Request to enter regional phase (EPCT)

2002-12-05

International publication pamphlet

2002-12-05

Copy of the International Search report

2001-05-30

General authorisation

This prosecution history is actually a merger of two prosecution histories.

As you can see many entries relates to procedures (inventor names, fees). In the case above the examiner made objections in his examination report. Then the applicant amended the claims and description and replied to the examination report. The examiner found that either the applicant answer did not properly address the report objections or that amended claims raised new objections. Next the EPO scheduled oral proceedings. The applicant failed then to convince the examiner. The examiner refused the application.

Search

In Europe the applicant does not have to cite relevant prior art. The EPO lists references in a search report, which is a prerequisite for the examination. This search report is not established and a "Declaration of Non Establishment of International Search Report" is issued if the subject-matter of the application is excluded from patentability under Article 52:

"1 European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.

2 The following in particular shall not be regarded as inventions within the meaning of paragraph 1

  • discoveries, scientific theories and mathematical methods;

  • aesthetic creations;

  • schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

  • presentations of information.

3 The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such."

Note:

3 means that you cannot patent a software or a business method invention only when its subject matter is a program, scheme, rule and method for performing mental acts.

"The European search report is drawn up on the basis of the claims with due regard to the description and any drawings. It mentions those documents available to the EPO at the time of drawing up the report which may be taken into consideration in assessing novelty and inventive step."

A report is a table with three columns:

  1. The category. The most important categories are X that means "document of particular relevance: the claimed invention cannot be considered novel or cannot be considered to involve an inventive step when the document is taken alone" or "particularly relevant if taken alone" and Y "document of particular relevance: the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more search documents, such combination being obvious for a person of the art" or "particularly relevant if combined with another document of the same category".

  2. The citation, for instance a patent number, the section and the page(s) in the patent specification or the URL of a document on the Web.

  3. Relevant to claims no., which lists the claims for which this prior art is relevant.

You may feel that a search report with Xs and Ys is a kind of first non-final rejection, X meaning most of the time a rejection for lack of novelty and Ys paving the way for a rejection for obviousness over Y1 in view of Y2, Y3... When he receives the search report, the applicant can:

  • withdraw his application, or

  • file a preliminary amendment to the description, claims or drawings, and / or

  • file substantive comments on the search report.

However "the European search report does not contain reasons and expresses no opinion whatever as to the patentability of the invention covered by the application." The examiner does not have to follow the search report and he can find other prior art. He also has to give reasons and to express opinion about the patentability of the invention.

Publication

The article 67 (1) of the European Patent Convention says:

"A European patent application shall, from the date of its publication under Article 93, provisionally confer upon the applicant such protection as is conferred by Article 64, in the Contracting States designated in the application as published"

where article 64 says:

"A European patent shall [...] confer on its proprietor from the date of publication of the mention of its grant, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State"

and article 93 says:

  1. "A European patent application shall be published as soon as possible after the expiry of a period of eighteen months from the date of filing or, if priority has been claimed, as from the date of priority. Nevertheless, at the request of the applicant the application may be published before the expiry of the period referred to above. It shall be published simultaneously with the publication of the specification of the European patent when the grant of the patent has become effective before the expiry of the period referred to above.

  2. The publication shall contain the description, the claims and any drawings as filed and, in an annex, the European search report and the abstract, in so far as the latter are available before the termination of the technical preparations for publication. If the European search report and the abstract have not been published at the same time as the application, they shall be published separately."

So the publication of a European patent application is not correlated to the search or to the examination result. It may happen before or after the search and before or after a patent has been granted. Article 64 shows an interesting aspect of EPO: European law does not replace the patent law of member states [litigations are still ruled by the courts of member states]. In the EPO framework a State only has to agree to confer to European patents the same rights as it confers to its national patents. Publication is important for two reasons:

  1. It allows other parties to analyze the application. They have sufficient time to prepare an opposition.

  2. It confers to the applicant a provisional protection.

Article 93 talks about the date of priority. This date is described in article 88 of the EPC, which says:

"An applicant for a European patent desiring to take advantage of the priority of a previous application shall file a declaration of priority, a copy of the previous application and, if the language of the latter is not one of the official languages [English, French, German] of the European Patent Office, a translation of it in one of such official languages. The procedure to be followed in carrying out these provisions is laid down in the Implementing Regulations.

The applicant may file its application in his national patent office. Then the priority document is made of a form filled by the national patent office that says that the application was filed at a certain date and of this original application. For an American application that is extended to European countries the process is essentially the same. The priority document is made of the first application (for instance a provisional application) and of a form filled by the USPTO that says that this first application was filed at a certain date.

Examination

When he received the search report the applicant files an examination request. This request starts the examination procedure. The guiding principle of this procedure is that a decision on whether to grant a patent or refuse the application should be reached in as few actions as possible.

When the examiner has objections to the application, he sends reasoned communications (written opinions) inviting the applicant to file his observations and, if necessary, to submit amendments to the description, claims and drawings. Reasoned communication is described by the communication with the applicant article of the examination procedure (VI.2.4), which reads: "Taking into account the documents (if any) cited in the search report and any further documents found as the result of the search referred to in VI.2.3 above, and taking account also of any amendments proposed, or comments made, by the applicant, the examiner should identify any requirements of the EPC which, in his opinion, the application does not satisfy. He will then write to the applicant giving reasons for any objections he raises and inviting the applicant within a specified period to file his observations or submit amendments."

When the applicant has replied, the examiner will then re-examine the application. If re-examination shows that there are good prospects of bringing the proceedings to a positive conclusion, i.e. in the form of a decision to grant and there are still objections to be met, the examiner must consider whether they can best be resolved by a further written communication, a telephone discussion or a personal interview. When the telephone is used to settle outstanding matters, a note must be made in the prosecution file, giving particulars and identifying the matters discussed and any agreements reached. Any matters on which agreement was not reached should also be noted and the arguments adduced by the applicant should be summarised. Such telephone discussions and personal interviews are informal procedures to not confuse with oral proceedings.

The applicant may at any time request oral proceedings. Article 116 EPC says: "Oral proceedings shall take place either at the instance of the European Patent Office if it considers this to be expedient or at the request of any party to the proceedings." The conduct of oral proceedings is described in the examination guidelines III.8.

The rest of the examination procedure is well described in the Part one of the Guide of applicant (http://www.european-patent-office.org/legal/guiapp1/pdf/g1en_net.pdf) which reads:

  • "[161] The examiner may seek the advice of other members of the examining division whenever he sees fit. At the latest he will refer the application to them when a decision [grant or refuse) has to be taken."

  • "[162] If the examining division is of the opinion that a European patent cannot be granted, it will refuse the application." The decision is issued by the examining division and not by the examiner only.

  • "[163] If the application and the invention to which it relates meet the requirements of the Convention, the examining division will decide to grant a European patent provided that the requisite fees have been paid in due time and a translation of the claims in the other two official languages of the EPO has been filed in due time."

Note:

Now applicants also have the option of foregoing detailed preliminary examination. In such cases, the same examiner will carry out the search and the examination and the written opinion will be based on the examiner's search notes. The written opinion will therefore confine itself to core issues of novelty, inventive step and industrial applicability. The applicant will, however, have the opportunity of requesting a more detailed international preliminary examination if it chooses and this can be done up to the date for responding to the written opinion.

We list now the most important objections.

Amendment objections

The article 123 EPC says:

  1. "The conditions under which a European patent application or a European patent may be amended in proceedings before the European Patent Office are laid down in the Implementing Regulations. In any case, an applicant shall be allowed at least one opportunity of amending the description, claims and drawings of his own volition.

  2. A European patent application or a European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.

  3. The claims of the European patent may not be amended during opposition proceedings in such a way as to extend the protection conferred."

Note:

Part C VI.5 of the Guideline for examination describes amendments. The most interesting section is VI.5.3 Additional subject matter, which says:

  • "There is normally no objection to an applicant introducing, by amendment, further information regarding prior art which is relevant; indeed this may be required by the examiner (see II, 4.3 and II 4.18). Nor will the straightforward clarification of an obscurity or the resolution of an inconsistency be objected to."

  • "An amendment should be regarded as introducing subject-matter [...], and therefore unallowable, if the overall change in the content of the application (whether by way of addition, alteration or excision) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application, even when account is taken of matter which is implicit to a person skilled in the art."

Obviousness objections

"Determining whether or not the invention involves an inventive step depends on the specific details of each patent application and in particular the subject-matter of each claim. According to the circumstances, various factors are taken into account, such as:

  • the unforeseen technical effect produced by a new combination of known elements,

  • selection of particular operating conditions within a known range,

  • the degree of difficulty the person skilled in the art must overcome when combining several known documents,

  • and secondary considerations such as the fact that the invention solves a long-standing technical problem which there have been many attempts to solve."

The examiner uses a "problem-and-solution approach". In this approach, there are three main stages:

  1. determining the 'closest prior art',

  2. establishing the 'objective technical problem' to be solved, and

  3. considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.

"The closest prior art is that combination of features, disclosed in one single reference, which constitutes the most promising starting point for an obvious development leading to the invention. In selecting the closest prior art, the first consideration is that it should be directed to a similar purpose or effect as the invention or at least belong to the same or a closely related technical field as the claimed invention. In practice, the closest prior art is generally that which corresponds to a similar use and requires the minimum of structural and functional modifications to arrive at the claimed invention."

The objective technical problem means the aim and task of modifying or adapting the closest prior art to provide the technical effects that the invention provides over the closest prior art. This problem may not be what the applicant presented as "the problem" in his application. To establish the technical problem to be solved the examiner studies the application, the closest prior art and the difference, also called "the distinguishing feature(s)" of the invention, in terms of features (either structural or functional) between the invention and the closest prior art. Features which cannot be seen to make any contribution, either independently or in combination with other features, to the solution of a technical problem are not relevant for assessing inventive step.

The examiner can reject an application just because its distinguishing features contribute to the solution of a problem in a field excluded from patentability. This means that it is not enough for an application to belong to a patentable field. The delta between the application and the closest prior art must also belong to a patentable field.

To check if the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person, the question to be answered is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage. This is called the Could-would approach.

Chapter IV of the Examination guidelines gives "Examples relating to the Requirement of Inventive Steps". These examples are illustrative, their list is not exhaustive and examiners are said to "avoid attempts to fit a particular case into one of these examples if it is not clearly applicable." These examples are entitled:

  1. Application of known measures? An inventive step is recognized when a known working method or means when used for a different purpose involves a new, surprising effect or when a new use of a known device or material involves overcoming technical difficulties.

  2. Obvious combination of features? An inventive step is recognized when the combined features mutually support each other in their effects to such an extent that a new technical result is achieved.

  3. Obvious selection? An inventive step is recognized when the invention involves special selection in a process of particular operating conditions within a known range, such selection producing unexpected effects in the operation of the process or the properties of the resulting product.

  4. Overcoming a technical prejudice? There is an inventive step if the prior art leads the person skilled in the art away from the procedure proposed by the invention.

Novelty objections

With the problem-and-solution approach lack of novelty is usually the special case in which the invention is identical to the closest prior art. However this is not always true.

The content of European patent applications filed prior to the date of filing or priority date and published on or after that date is considered as comprised in the state of the art and therefore prejudicial to novelty but not for inventive step. The content of the earlier application(s) as disclosed is referred to for assessing novelty but is not considered in deciding whether there has been an inventive step in the later application.

Opposition

A document entitled EPO OPPOSITIONS reads: "The European Opposition system provides a central inter partes revocation mechanism for revoking, or limiting, European patents in all designated states, after grant. [...] An unsuccessful Opposition does not usually close the possibility of a further attack in each designated state, but a successful Opposition is final and cannot be overturned in the designated states." The opposition procedure is described in the part V of the European Patent convention.

Within nine months from the publication of the mention of the grant of the European patent, any person may give notice to the European Patent Office of opposition to the European patent granted. There can be more than one opponent. Opponents are parties to the opposition proceedings as well as the proprietor of the patent. In that respect inter partes re-examinations are like oppositions.

In the event of an opposition to a European patent being filed, any third party who proves that proceedings for infringement of the same patent have been instituted against him may, after the opposition period has expired, intervene in the opposition proceedings, if he gives notice of intervention within three months of the date on which the infringement proceedings were instituted. The same shall apply in respect of any third party who proves both that the proprietor of the patent has requested that he cease alleged infringement of the patent and that he has instituted proceedings for a court ruling that he is not infringing the patent [Art 105(1) EPC].

Grounds for opposition are listed in the Article 100 EPC:

  1. "the subject-matter of the European patent is not patentable within the terms of Articles 52 to 57 [patentability];

  2. the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art [enablement];

  3. the subject-matter of the European patent extends beyond the content of the application as filed, or, if the patent was granted on a divisional application or on a new application filed in accordance with Article 61, beyond the content of the earlier application as filed. [~ adequate written description]"

The opponent gives notice of opposition in a written reasoned statement that states at least one ground for opposition under Article 100 and indicates the facts, evidence and arguments presented in support of the ground. After receiving the notice of opposition, the EPO communicates it to the proprietor and checks that it is admissible. Then the patent proprietor is invited to file observations and, where appropriate, amendments. The opposition works the same way as the examination with differences related to the fact that instead of two parties (the applicant and the examiner) an opposition involves at least three parties (the proprietor, the opponent and the examiner):

  • The examiner, opponent and the proprietor send reasoned communications (written opinions).

  • The proprietor may submit amendments to the description, claims and drawings.

But

  • Informal procedures such as telephone discussions and personal interviews are forbidden. Parties can only use the formal oral proceeding procedure.

  • Amendments are allowed only if they are occasioned by grounds for opposition, including grounds not invoked by the opponent.

At the end of the opposition procedure, if the Opposition Division is of the opinion that

  1. the grounds for opposition prejudice the maintenance of the European patent, it revokes the patent;

  2. the grounds for opposition do not prejudice the maintenance of the patent un-amended, it rejects the opposition;

  3. taking into consideration the amendments made by the proprietor of the patent during the opposition proceedings, the patent and the invention to which it relates meet the requirements of this Convention, it maintains the patent as amended.

Appeal

The appeal procedure is described in the part VI of the European Patent convention. Appeals are handled by a Board of Appeal whose members are independent. There are actually different types of board of appeals:

  • The technical boards of appeal are responsible for appeals against decisions of the examining divisions concerning the refusal of European patent applications or the granting of European patents and for appeals against decisions of the opposition divisions. They normally consist of three members (two technically qualified and one legally qualified).

  • The legal board of appeal deal with appeals against decisions of the Receiving Section and the Legal Division. They consist of three legally qualified members.

  • The Enlarged Board of Appeal deal with cases referred by the other boards of appeal to ensure uniform application of the law and rule important points of law.

Any party to proceedings [the most important proceedings being the examination and the opposition] adversely affected by a decision may appeal. Any other parties to the proceedings shall be parties to the appeal proceedings as of right [in case of opposition appeal the proprietor and the opponent are parties to the appeal] [Article 107 EPC]. Notice of appeal must be filed in writing at the European Patent Office within two months after the date of notification of the decision appealed from. Within four months after the date of notification of the decision, a written statement setting out the grounds of appeal must be filed. An appeal has suspensive effect, which means that the contested decision does not yet become final and its effects are suspended.

In the examination of the appeal, the Board of Appeal invite the parties, to file observations. Like examination and opposition appeals are mostly conducted by written procedure prompting parties to send reasoned communications.

Burden of proof

The general rule is that "if a material fact is not or cannot be proven, a decision is taken on the basis of who carries the relevant burden of proof: the fact that the real position cannot be established operates to the detriment of the party which carries the burden of proof for this fact."

It means that:

  1. In examination proceedings, if the applicant showed sound reasons for doubting whether a cited document belonged to the state of the art, the examiner should not pursue the matter further when any further investigation did not produce evidence sufficient to remove that doubt.

  2. In opposition proceedings, "the patent proprietor is given the benefit of the doubt if the parties make contrary assertions regarding facts barring patentability which they cannot substantiate and, furthermore, the EPO is unable to establish the facts of its own motion.”

  3. In appeal proceedings, "the party's status as opponent makes no difference when it comes to assigning the burden of proof." So while in opposition proceedings, “the burden of proving that the objections [...] have been substantiated lay with the opponent [...], once the opposition division had decided to revoke the patent, the burden shifted to the proprietor of the patent, who had to demonstrate on appeal that the reasons for revoking the patent were not sound."

Divisional application

"The usual reason for filing a European divisional application is that the parent application does not satisfy the requirements as to unity of invention and the applicant is not content with limiting it [Guide for applicants 199].”

"A divisional application may be filed only for subject-matter which does not extend beyond the content of the parent application as filed. [...] It is deemed to have the same date of filing and priority date as the parent application [Guide for applicants 199]."

Differences with USPTO

Unity of invention

Rule 30 says "Where a group of inventions is claimed in one and the same European patent application, the requirement of unity of invention referred to in Article 82 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" shall mean those features which define a contribution which each of the claimed inventions considered as a whole makes over the prior art."

Rule 29 further says "Without prejudice to Article 82, a European patent application may contain more than one independent claim in the same category (product, process, apparatus or use) only if the subject-matter of the application involves one of the following:

  1. a plurality of inter-related products;

  2. different uses of a product or apparatus;

  3. alternative solutions to a particular problem, where it is not appropriate to cover these alternatives by a single claim.

This means in practice that European patent applications have fewer claims than their American counterparts and typically only one independent claim. If an application has unrelated independent claims the search examiner finds it, performs a prior art search only for the first independent claim and suggests to the applicant to file divisional applications if he wants to protect the subject matter of the other independent claims.

Inventorship

The American law endorses the principle that inventions are made by people and not by companies. An American patent lists inventors, their city and state but the assignee name and address are not necessarily the name and address of the company. They are commonly the name and address of the patent attorney. In Europe inventions are made by companies rather than by people. In a European patent the name of the company is necessarily correct. The list of inventors is usually as good as an American inventor list because European patents are usually also filed as PCT applications designating USA, and therefore include the inventor list that will be later used in USA.

Prior art disclosure

In USA the applicant must list the prior art (patents, printed publications) relevant for the application. Even if the examiner may find other prior art, this is important because (1) "while the presentation at trial of a reference that was not before the examiner does not change the presumption of validity [see 35 USC 282], the alleged infringer’s burden may be more easily carried because of this additional reference" (2) a missing reference can raise a substantial question of patentability and therefore allow a re-examination to be ordered. So an alleged infringer can more easily demonstrate that the patent is invalid if the applicant omits relevant prior art in his reference list. Furthermore "patent applicants owe a duty of candor and good faith to the patent office and this duty exists throughout the entire prosecution of the patent. Breaching this duty may constitute inequitable conduct, which includes affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intention to deceive."

In Europe the prior art is listed in a search report produced by the patent office. So the applicant does not have to disclose the result of his prior art search. However, at the same time, the outcome of his application prosecution depends essentially on the closest art found by the office and on the difference between this closest prior art and his application.

Objective technical problem

A European examiner must establish the objective technical problem solved by the invention. The objective technical problem means the aim and task of modifying or adapting the closest prior art to provide the technical effects that the invention provides over the closest prior art. The objective technical problem is made of the distinguishing features and represents the remaining novelty of the invention. The objective technical problem may be the ground of two types of objections:

  1. objections because the distinguishing features contribute to the solution of a problem in a field excluded from patentability;

  2. obviousness objections.

In the American system there is no equivalent to the former type of objection. For obviousness the European and the American systems are quite similar. The American examiner also determines the remaining novelty. Then the European examiner uses a could-would approach, not very different from the Graham-Mc Deere test, to determine if the invention is obvious: "the question to be answered is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage."

Refusal or grant

The article 97 of EPC says:

  1. "The Examining Division shall refuse a European patent application if it is of the opinion that such application or the invention to which it relates does not meet the requirements of this Convention, except where a different sanction is provided for by this Convention.

  2. If the Examining Division is of the opinion that the application and the invention to which it relates meet the requirements of this Convention, it shall decide to grant the European patent for the designated Contracting States..."

In Europe the decision to refuse a patent application or to grant a patent is taken by the examining division. In USA the examiner can issue a final rejection or a notice of allowance but this is not exactly the same thing. In Europe like in USA, there is an appeal procedure to cancel a refusal / final rejection but the American applicant also has several continuation procedures to continue a prosecution after a final rejection.

Opposition / re-examination

In EPO wording a re-examination is the task performed by the examiner after an applicant has replied to a written opinion / reasoned communication. The EPO procedure that is the closest to a USPTO re-examination is the opposition. However the European opposition and the American re-examination are different.

"The European opposition system is adversarial, initiated by any third party, usually a competitor. The patent may be challenged on any patentability grounds: novelty, inventive step, or industrial application and there is no limit on the kinds of evidence admissible.” A European opposition is actually a peer review, which almost automatically (oppositions are more likely to be filed against important patents) ensures that the appropriate effort is made to check the quality of patents. It is not necessarily worth spending a large amount of time on each application when most will not be used and a patent office has limited resources (time, prior art databases...) to appreciate the novelty and inventiveness of a patent application. A European opposition has to be filed shortly after the patent grant (9 months) and its proceedings delay litigations. The idea is that a patent that faced oppositions and whose oppositions failed is almost necessarily a good quality patent.

"Any person may, at any time during the period of enforceability of a patent, file a request for reexamination by the Patent and Trademark Office of any claim of the patent on the basis of prior art patents or printed publications." But as you can see in the examples below of ex parte re-examinations (PanIP and Eolas) the requester role is just to raise substantial new questions of patentability notably based on prior patents and printed publications that were not discussed or that were improperly presented in the examination. The only admissible evidence is prior patents and publications and the requestor cannot challenge a decision of the examiner (for instance in the Eolas re-examination, the requestor could not reuse the OLE patents and prior art). A re-examination may happen after a court decision. Then the requestor cannot challenge this decision either (for instance, again in the Eolas re-examination, the requestor could not reuse a Wei browser that could have anticipated the invention.) Then only the patent owner and the USPTO participate to the re-examination [ex parte re-examination].

About this issue you may also read

Litigations

The EPO system looks superior. However, to put things in perspective I must briefly mention trials. The USPTO system is weaker partly because it has a strong litigation back end. The EPO has a very different background. In Europe:

  • patent litigations are ruled by the courts of the member states according to their national law;

  • a trial is much cheaper than in USA and usually passes unnoticed;

the plaintiff, who does not expect to be awarded substantial damages, aims to stop the alleged infringer from using the patented invention.

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