On March 9, 2017 the German Parliament passed two pieces of draft legislation required for the new European Unitary Patent System.
The draft legislations of February 19, 2013 in relation to the agreement on a Unified Patent Court, as well as in relation to the adaption of the provisions of the patent law on the basis of the European patent reform have been unanimously approved by the Parliament. This sets the course to implement the European patent with unitary effect as well as the Unified Patent Court under national law.
The European patent with unitary effect can come into force once at least 13 member states have accepted the treaty on a Unified Patent Court. The acceptance of Germany, Great Britain and France is mandatory. Up to now 12 nations, including France, have ratified the agreement. Italy`s ratification of February 10, 2017 is the most recent one and, should Germany ratify, the number of ratifications would go up to 13. As already reported in January, the British government announced to also be willing to ratify legislation for the Unified Patent Court despite the Brexit vote. This was just recently re-confirmed to the President of the European Patent Office, Benoit Battistelli, by the new British Minister of State for Universities, Science, Research and Innovation, Jo Johnson, when Battistelli lastly visited London on March 8.
On the one hand, it is now up to the British whether or not they will take the final step and, after ratification, also Germany still needs to lodge the ratification certificate.
Hence, it is still possible that the Unified Patent Court commences business on December 1, 2017.
We will keep you informed of any further progress.
Should you have any questions in relation to this topic, please do not hesitate to contact one of our attorneys, or Jürgen Feldmeier LL.M., patent attorney (firstname.lastname@example.org).
The European Patent Office (EPO) has provided a long-awaited clarification regarding the question of “partial priority”. Whether a partial priority is valid may arise in cases where a claimed subject-matter of a European patent application has been generalized over the disclosure of its priority document.
Diverging case law at the EPO emerged in the past on this question. One group of decisions refused to acknowledge partial priority in cases where the claimed generalized terms in the subsequent application could not be clearly divided into alternatives. Thus partial priority could be accorded only if distinct alternative embodiments were defined in the claim; this often is not possible in view of added-matter issues. Critical generalizations in this respect are for example the broadening to a generic chemical formula or to generalized chemical compositions, the broadening of numerical parameter ranges, or other generalizations without a clear specification of OR-alternatives.
In the past, such failure to claim partial priority had led to fatal “self-collision” situations in the relationship between EP priority and subsequent EP applications, or between EP parent and divisional applications (circumscribed as “poisonous” priority or divisional respectively). If one of the concerned pair could not enjoy partial priority right due to the generalization, the respectively other could, and depending on the case was, held novelty-destroying against it.
In its present decision G 1/15 published in February 2017 the Enlarged Board of Appeal of the EPO found that in case of generalizations over previous narrower terms, it is not necessary to explicitly define the alternative embodiments in the claim. For a partial priority to be valid, it is sufficient that the claimed subject-matter can be divided conceptually, i.e. without being necessarily spelled out. This ruling of the EPO is important, since it will allow Applicants to consider with caution generalizations when filing a European patent application based on a previous priority, without a risk that, under normal circumstances, critical self-collision situations become an issue.
More specifically, the Enlarged Board in its present reasoning of G 1/15 denies an interpretation of a past ruling on the criterion of priority in G 2/98, namely that partial priority would be allowed only if the later claimed subject-matter “gives rise to the claiming of a limited number of clearly defined alternative subject-matters", would impose any further limitation to the right of partial priority (point 5.3 of the reasons). It is only that the narrow teaching of concern needs to be disclosed in the priority document directly and unambiguously. No more conditions do apply. According to G 1/15 (points 5.1 and 5.2.3), the claiming of partial and multiple priorities is consistent with the patent law (Arts. 88(2)-(4) EPC, corresponding to Arts. 4F and 4H Paris Convention). Art. 88(3) allows a claim in a later application to be broader than an element (i.e. embodiments or examples) disclosed in the priority document. This principle does apply to all elements disclosed in the priority document – undisclosed elements simply do not enjoy priority (point 5.1.3). According to the Enlarged Board, priority is a right (point 4.1), which shall protect the Applicant/Patentee from prior art appearing in the priority period (points 4.2-4.3).
In this respect, it is noted that the Enlarged Board does not distinguish between different “prior art” types, i.e. the principles of G1/15 applies not only to “self-collision” situations but also to prior art of another party.
The present decision (point 6.4) also provides practical guidance how an assessment shall be made with respect to a prior art disclosed in the priority period, namely by way of a two-step process:
Determine the subject-matter disclosed in the priority document that is relevant, i.e. with respect to the prior art disclosed in the priority interval. This needs to be explained by the Applicant or Patentee and is to be done in accordance with the strict disclosure test (“directly and unambiguously derivable”).
Is this (determined) subject-matter encompassed by the claim which claims said priority?
If yes, the claim is de facto conceptually divided into two parts: the first part corresponding to the disclosed subject-matter of the priority document, and the second being the remaining part not enjoying priority but itself giving rise to a right to priority according to Art. 88(3) EPC.
In summary, the present ruling in G 1/15 creates more legal safety in cases where Applicants wish to prosecute and claim broader subject-matter which encompasses a narrower subject-matter disclosed in the priority document, and to this end provides a suitable test to assess the validity of partial priority against prior art appearing in the priority interval.
Dr. Andreas Oser, LL.M.
The British government confirmed at the end of the year 2016 to expedite the preparations for the ratification of the agreement for the Unitary Patent System and the Unified Patent Court, despite the Brexit decision.
UK Minister of State for Intellectual Property, Baroness Neville Rolfe, said the new system will provide an option for businesses that need to protect their inventions across Europe. The UK has been working with its partners in Europe to develop this option. As long as the UK is a member of the EU, the UK will continue to play a full and active role in this system.
Hence, it can be expected that the UK government continues preparing the ratification and will present it to the parliament in February or March 2017 for approval. In case the ratification will be successful, only Germany’s ratification will be missing for the start of the new system.
The system for European patents with unitary effect as well as the Unified Patent Court could then start on the first day after the fourth month after Germany’s ratification.
However, some particulars are not yet completely clarified, e.g. the designation of the judges and the selection of the Court buildings and IT-systems, in particular the question what happens with the British judges and the Court location in London, after the Brexit has been taken place.
It can be assumed that Germany will not ratify unless these questions have been resolved. Should the ratification procedures from the UK and Germany be carried out quickly, the system could start in autumn 2017 at the earliest. A further delay is, however, not unlikely.
We will keep you informed as soon as there are any news.
If you have any questions, please contact: Jürgen Feldmeier LL.M., patent attorney (email@example.com)