Training Course on the European Patent 2008 (DECEMBER 2007)
We are pleased to announce that our Summer Course on the European Patent will run again from 2nd to 13th June 2008. 

Our two-week course provides an in-depth study of the legal and practical aspects of working with the EPC and EPO, with optional additional workshops on other aspects of intellectual property. Our delegates consistently comment that the practical exercises are particularly valuable and we have expanded this aspect of the course still further for 2008.   Because the course was oversubscribed in 2006 and 2007, we have introduced a limit of two members per organisation for the 2007 course.  This is intended to preserve the intimate teaching style of the course, which we consider to be essential.

Please click here for further information.

EPC 2000 Reminder - Less than a month to go (November 2007)
On 13th December 2007 "EPC 2000", a substantially revised version of the European Convention, will come into force.  Details of the changes can be found here and here.

London Agreement Update (November 2007)
There is no sign yet that the French government have deposited their intstrument of ratification.  Entry into force of the London Agreement is dependent on this deposit, and so earlier suggestions that the agreement might enter into force in the first half of 2008 may be overly optimistic. 

US rule changes on hold  (NOVEMBER 2007)
The changes to the US patent rules due to come into force on 1 November, discussed here, will not do so.  A preliminary injunction was issued by the US District Court in Virginia against the USTPO following a hearing on 31 October 2007.

More information on the timescale for the continuing legal action will follow.  If you have any questions how this may affect your applications, please get in touch with your usual contact.

Information in Japanese and Chinese (October 2007)
For the benefit of Japanese  and Chinese applicants and attorneys we are pleased to offer a selection of the information sheets from our pdf library in Japanese and Chinese.

You can access our Japanese  language information sheets on the European patent, European Community Trade Mark and European Community Registered Design by clicking here.

You can access our Chinese language information sheets on the European patent, European Community Trade Mark and European Community Registered Design by clicking here.

APPOINTMENT OF OUR ASIA PACIFIC LIAISON MANAGER
Mewburn Ellis LLP is pleased to announce the recent appointment of Philip Fujii as our Asia Pacific liaison manager.  Philip, a Japanese national, will be working with our patent and trade mark attorneys to assist them in their dealings with clients in Asia Pacific, especially in Japan.  Click here for more information.

Court of Appeal passes judgement on its first Registered Community Design case (OCTOBER 2007)
On 10 October 2007 the Court of Appeal handed down judgement in Proctor & Gamble v Reckitt Benckiser:  the first case concerning infringement and validity of a Registered Community Design that the Court has had to decide.

The main issue to be decided was how one should interpret the phrase ‘overall impression’.  In order to determine validity, one must decide whether the registered design produces a different ‘overall impression’ on the notional ‘informed user’ over prior published designs, and in order to determine whether a product infringes the registered design one must decide whether that product produces a different ‘overall impression’ on the same ‘informed user’.

In deciding this issue the Court distinguished between the two tests:  to decide on validity one must show that the registered design ‘clearly differs’ from prior designs, whereas there is no such requirement that the difference be ‘clear’ when deciding on infringement.  Instead, for determining infringement it is enough that the ‘overall impressions’ merely ‘differ’, i.e. the ‘informed user’ can distinguish between the overall impressions. 

The Court then went on to rule that the judge in the first instance decision was wrong to employ the doctrine of imperfect recollection developed in trademark cases.  Instead, the Court said that the “informed user” must make a side-by-side comparison of the allegedly infringing product and the registration.  It was not correct to compare only those features of the product which stick in the mind after the fact.

Although the facts of the case did not require much consideration of the issue, the Court also noted that the degree to which the registered design is distanced from prior designs will have an impact on the scope of protection afforded by the design. So, “protection for a strikingly novel product will be correspondingly greater than for a product which is incrementally different from the prior art”.  However, it is not sufficient to ask ‘is the alleged infringement closer to the registered design or to the prior art?’.

The judgement also contains some guidance on the usefulness (or otherwise) of expert evidence, confirming that there is little or no place for such evidence in registered design cases.  The Court stated that “anyone can point out similarities and differences”, although it conceded that “an educated eye can sometimes help a bit”. 

Presumably because the case for validity was pretty straightforward in this case, the Court had little cause to refer to decisions on validity made by the Office for Harmonisation of the Internal Market (OHIM).  The judgement therefore provides little guidance as to how persuasive English courts will find such decisions.  However, all in all, this judgement has provided some much needed guidance on some key areas of registered design law.  The full text of the judgement can be seen at: http://www.bailii.org/ew/cases/EWCA/Civ/2007/936.html

London Agreement to enter into force in first half of 2008 (SEPTEMBER 2007)
Click here for our information sheet.
We are very pleased to announce that, as a result of the recent adoption of a bill by the French Senate authorising ratification of the London Agreement, the London Agreement (which aims to reduce the cost of translating European patents) should now come into force in the first half of 2008.  We think that this is very good news for our clients as the grant and validation costs for a European patent will be significantly reduced.  Further details of possible cost savings to our clients should be available shortly. 

The London Agreement, concluded in London on 17 October 2000, aims to reduce the cost of translating European patents.  Ratification by France was the last remaining condition for the agreement to enter into force.  On 9th October 2007, the French Senate adopted a bill authorising ratification of the London Agreement.  The Agreement should now enter into force in the first half of 2008.

Currently, a European patent must be translated after grant into the national language of every country in which protection.  Failure to do so results in the patent being deemed void in that country.  Translation costs are high and typically account for up to 40% of overall patenting costs in Europe.  Signatory states to the London Agreement will waive, entirely or largely, the requirement for translation of patents into their national language. 

Under the London Agreement, each state will elect one of the three official languages of the European Patent Office (EPO) (English, French or German), as their language for patent procedures.  Countries already having English, French or German as their official language will waive translation requirements completely.  Other countries will require that the patent is translated into the prescribed EPO language of their choice.  Translation into a national language may still be required for the claims, and in the event of a dispute.

The countries that have ratified the London Agreement to date are: Germany, United Kingdom, the Netherlands, Switzerland, Iceland, Latvia, Leichtenstein, Monaco and Slovenia.  Sweden and Denmark have also approved the Agreement.  Accordingly, the London Agreement should enter into force next year in at least 12 member states of the European Patent Convention.

Important Changes in US Patent Application Practice (AUGust 2007)
Significant changes to the rules governing the filing and prosecution of US Patent Applications were published on 21 August 2007.  These rules will change the manner in which US patent applications are prosecuted in a number of important ways, and are due to come into force on 1 November 2007.  We are currently studying the changes and will be advising clients about the effect of these changes in due course.

EXAMINATION SUCCESS (AUGUST 2007)
We are pleased to announce that Eddie Walker has recently passed his examinations and is now a fully qualified Chartered Patent Attorney and European Patent Attorney.  Eddie does patent work in the mechanical, electrical, electronics and communications fields.  Click here for more information.  

Amendments to the EPC:
International ApplicationsEntering the European Regional Phase - Consideration of Unity by the European Patent  (AUGUST 2007)
Office Most people by now will be aware that an amended version of the European Patent Convention, EPC 2000, will enter into force in 2007. The expected, and latest, date for this to happen is 13 December 2007.  More recently, the Implementing  Regulations (Rules) accompanying the EPC were revised involving some further substantial amendments. One of the most significant amendments relates to International (PCT)  applications entering the regional phase at the European Patent Office (EPO) which are found by the EPO to lack unity. The consequence of this amendment is that applicants will have to consider which invention it wants to pursue earlier than at present. Click here for more information.

UK Court of Appeal hears its first Registered Community Design case (JULY 2007)
On 25 July, Lord Justices May, Dyson and Jacob heard an appeal from the Patents Court decision in Procter & Gamble vs. Reckitt Benckiser in which the judge had found that Procter & Gamble's Registered Community Design for the Febreze canister was valid and infringed by Reckitt Benckiser's Air Wick canister.  This appeal is the first Registered Community Design case to be heard by the Court of Appeal. 

The Court of Appeal considered how the courts should determine whether or not an allegedly infringing product produces a "different overall impression" on the informed user.  They considered whether each feature of the registered design should be looked at by the court one by one, or whether the judge should simply place himself in the role of the informed user and determine his overall impression of the registered design and allegedly infringing product.  The Court of Appeal also considered the roles of design freedom and the state of the art in determining whether there is a different overall impression.

Since the introduction of the Registered Community Design in 2003 there has been very little guidance from the courts as to how the new legislation should be interpreted and applied.  The Court of Appeal's decision will hopefully shed light on many important issues, including those discussed above, and the judgement is eagerly awaited.  We will report again when the decision is published.  

Seminar Attendance - AIPLA 2007  (JULY 2007)
Robert Watson, a partner of Mewburn Ellis LLP, is visiting the US to take part in the 2007 Advanced Patent Cooperation Treaty Seminars in Los Angeles, Houston and Baltimore from 16-24 July. These seminars are run by the American Intellectual Property Law Association.

Robert will be the only European patent attorney speaker at the event and, in addition he will take part in discussions and debates on topics including PCT procedures, electronic filing of PCT applications and strategies for addressing anticipated USPTO rules changes and drafting for priority applications for EPO filings.

EPO PUBLISH KEY DECISION ON DIVISIONAL APPLICATIONS (JULY 2007)
The long awaited combined decision on the EPO Enlarged Board of Appeal cases G1/05 and G1/06 relating to divisional applications finally issued on 28 June 2007 and we are pleased to report that commonsense prevailed - the established practice of the EPO Examining Divisions in their treatment of divisional applications has been affirmed by the Enlarged Board.

The two cases both resulted from referrals to the Enlarged Board as the result of Technical Board decisions which questioned the established practice of the EPO Examining Divisions regarding their treatment of divisional applications.

The Enlarged Board was asked to consider various questions relating to divisional applications containing subject matter not contained in their preceding parent applications as filed.  They were also asked to consider the issue of sequences of divisional applications (also known as “cascading” applications), i.e. the practice of filing a divisional application, the parent of which is itself a divisional application.

In their decision, the Enlarged Board concluded:

1. A divisional application containing subject matter not contained in its preceding parent application can be amended to exclude the added subject matter.

2. This amendment can be made irrespective of whether the parent application is still pending or not.

3. A divisional application is a separate and independent application and is to be treated in the same manner and subjected to the same requirements as an ordinary application.  Therefore amendment of a divisional application is allowed to the same extent as amendment of any other non-divisional application.

4. It is permissible to file a divisional application of an application which is itself a divisional application.

5. In a sequence of divisional applications, each having been divided out from its predecessor, the subject matter of each divisional application must have been disclosed in each of the preceding applications as filed and must still be present in each of the preceding applications (i.e. must not have been unequivocally and definitely abandoned) at the time of filing of the (further) divisional application.

6. Subject matter which has been omitted on filing an application higher up the divisional sequence cannot be re-introduced into divisional application lower in the sequence.

7. Filing of a divisional application which is identical to its parent application is permissible but double patenting provisions preclude the grant of a divisional application which is identical to its parent application.

8. Claims of a member of a sequence of divisional applications need not be directed to subject matter within the scope of the claims of the preceding applications in the sequence as filed.

It can be seen that all of these points reflect the existing practice of the EPO Examining Divisions.  We now expect the prosecution of all divisional applications which had been stayed to recommence.

A full copy of the decision is available here.

Norway to join EPO (June 2007)
Although Norway was one of the original signatories to the European Patent Convention (EPC), so has been entitled to join since the EPO was founded, they have not done so, until now.  A recent decision of their parliament means that Norway are expected to become a member on 1 January 2008.  So, if all goes to plan, European patent applications (and PCT applications designating the EPO) filed after that date will designate Norway in addition to the existing 32 EPO contracting states.

EPO Regional Processing Fixed Fee held at US$1,450 (April 2007)
Stay protected from fluctuating exchange rates and hidden charges! For a second year running we have fixed our service charge at $1,450 for PCT patent applications entering the Regional Phase at the European Patent Office. For more information visit our EP Regional Processing page. 

EPO publish key DECISION ON MEDICAL USE CLAIMS (April 2007)

The EPO Official Journal (EPO OJ) publishes only a handful of the hundreds of Board of Appeal decisions issued each year, focusing on those cases which represent significant developments in the law.  A decison (T1020/03) originally issued by the Board in 2005 following an Appeal handled by this firm has been published in the most recent EPO OJ (http://www.european-patent-office.org/epo/pubs/oj007/04_07/04_2047.pdf).  The publication of the decision appears to endorse the liberal approach to medical claims followed by the Board in this case, in particular where inventions relate to novel dosing regimens.  Our original report of this decison can be found here. 

 ITALIAN RENEWAL FEES - NOW YOU SEE THEM, NOW YOU DON'T ... NOW YOU DO AGAIN! (April 2007)
Renewal fees for Italian patents (including European patents designating Italy) and registered designs were suddenly abolished at the beginning of 2006.  They have now been  restored.

There are no plans to recoup the fees that would have been due in 2006 but 2007 renewal fees will have to be paid.  For patents with anniversaries falling in the first 4 months of 2007, the renewal fees must be paid by 30 June.  For patents with anniversaries falling in May 2007 or later, renewal fees are due, as normal, in the month containing the anniversary.  The rules for Italian registered designs are different.

We will be writing to our clients who are affected by this change.  If you have questions then please contact David Sullivan (david.sullivan@mewburn.com) in the first instance or your usual Mewburn contact.

New Partner (April 2007)
Mewburn Ellis LLP are pleased to announce the appointment on 1st April 2007 of a new partner Rachel Oxley.

INFORMATION IN CHINESE (MARCH 2007)
Our new Chinese language information sheets on European patents, trade marks and designs are now available. 
Click here to find out more.

ELECTRONIC PRIORITY DOCUMENT EXCHANGE BETWEEN THE EPO AND THE USPTO (jan 2007)
For European patent applications filed from 16th January 2007, the EPO will automatically obtain US priority documents using a new service that allows these documents to be exchanged electronically between the USPTO and the EPO.

As a result, in most cases an applicant will no longer need to supply the EPO with a certified copy of a US patent application (provisional or non-provisional) from which their European patent application claims priority.  Only if an electronic copy cannot be obtained in time will the EPO request the applicant to supply a certified copy.

EPC2000 (jan 2007)

Substantial amendments to the European Patent Convention (EPC) will come into force on 13th December 2007 (or possibly earlier). For further information click here.