Technical Tips, December 2019

European Patent Office

EPO Strategic Plan 2023 offers glimpses of future direction



The EPO recently announced that two ageing initiatives will be replaced by a new programme. The outgoing initiatives are “Early Certainty” (shortening average search, examination and opposition timelines) and “PACE” (accelerated examination).

Few details of the new programme are available. However, the aim is to offer more flexibility, with different procedural deadlines to meet different users’ needs. The EPO strategic plan 2023 offers the following glimpses of the new programme:

Search:

  • The EPO will explore offering a search and written opinion delivered in one week, as an option for Applicants that need nearly instant results.

  • The EPO will also explore offering a pre-filing search, giving an initial patentability assessment.

Examination:

  • “Accelerated” processing set at 6 to 12 months on average.

  • “Standard” processing set at 12 to 24 months on average.

  • “Maximum” processing of no longer than 36 months on average.

Opposition: 

  • The current targeted opposition timeframe of 15 months is unchanged.

Michael Newton 

mnewton@kilburnstrode.com


Practice Points


  • ​We welcome the option of a one-week search assuming quality is maintained, the costs are fair and the speed of search for all users is not compromised.  

  • It is difficult to see the value of an EPO pre-filing search. Pre-filing searches are available elsewhere. What will differentiate the EPO in this crowded market?  

  • The replacement of the PACE system is a concern. The targeted processing times are reasonable, but users need to know how the new system will operate. More details are needed.  

  • The proposed electronic portfolio could be a helpful tool for large and small Applicants alike.

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New decisions from the EPO Boards of Appeal on the (timely) payment of appeal fees.


In G 1/18, the Enlarged Board of Appeal (EBA) was asked to settle an inconsistency in the case law concerning circumstances under which an appeal is treated as not filed (appeal fee is refundable) versus being treated as inadmissible (appeal fee is not refundable). The EBA decided that if a party files a notice of appeal and/or pays the appeal fee after the deadline, then the appeal is deemed not to have been filed (as opposed to being inadmissible). 
This means that if the party did pay the appeal fee, it can be refunded. 

On a related note, in T 703/19, a party filed a notice of appeal indicating their intention to pay the appeal fee over one month before the appeal deadline, but the payment method was not indicated and therefore the fee was not paid until after the deadline. Under G1/18, the appeal would have been considered not to be filed. However, in this case the Board of Appeal decided that the appeal was deemed to have been filed on the basis that it was reasonable for the party to expect the EPO to inform them that the appeal fee had not been paid. The Board indicated that, in this case, the EPO could have easily recognized the error and informed the party with enough time for the error to be corrected.

Daniel Wood

dwood@kilburnstrode.com


Practice Points


  • The EBA decision G 1/18 seems sensible and follows the position taken in the majority of Board of Appeal decisions on this issue.

  • The principle of the protection of legitimate expectations requires the EPO to act in good faith by informing users of mistakes that could lead to a loss of rights. However, the mistake must be easily recognizable and correctable within the relevant time limit.

  • When paying a fee at the EPO, identify the exact fee and payment method in the letter you are filing, so that it is clear that you intend to pay the fee.  Then, if the fee is not actually paid, it is much easier to show that the EPO should have recognised that a mistake has been made.

  • This safety net is unlikely to be available if, as is common, the fee is (intended to be) paid on the last possible day, as there is unlikely to be enough time for the EPO to notice the error and for it to be corrected in time.

  • Consider paying fees and filing submissions a day or two before the deadline.

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EPO President comments on patentability of computer simulations


In February 2019 a referral, G1/19 was made to the EBA concerning the patentability of computer simulation.  The referral was made from an appeal decision concerning the computer simulation of pedestrian movement through a building.

An earlier Board of Appeal decision relating to the simulation of a noise-affected circuit had been found to be technical. This earlier decision has been followed by the EPO when examining patent applications.  Recent national practice in Europe has also been consistent with this decision.

Simulating pedestrian movement appears less technical than simulating circuit noise.  However, the questions posed to the EBA in G 1/19 are not directed to this point.  Instead, the questions concern the patentability of computer simulation in general.  It is therefore possible that the answers could have a far-reaching effect on European practice in this area.

G1/19 has not been decided yet. However, the EPO President has now published comments for the EBA to consider.  These comments contain a succinct summary of the relevant EPO case law and have a striking “business as usual” message.  In summary, the President’s comments indicate that computer simulation is technical and that “the established problem-solution approach provides for the assessment of the patentability of computer-implemented simulations of technical systems or processes”.

 

Gareth Fennell

gfennell@kilburnstrode.com


Practice Points


  • We welcome the President’s comments.  They reflect current practice and we agree with them.

  • We expect the EBA decision in G1/19 to be consistent with the President’s comments.

  • As far as the EPO is concerned, the long-standing position remains: the EPO will grant patents where a non-obvious technical solution to a technical problem can be established.

  • The President’s comments are positive, but the pending EBA decision means there is some uncertainty about how computer simulations will be examined by the EPO in the future.

  • To account for this, we recommend using every conceivable claim formulation in applications relating to computer simulation so that there is basis for claiming the invention in different ways.

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Risk of inadmissible appeal -  have you addressed all of the issues?


In T 1904/14 the Board of Appeal rejected an appeal as inadmissible because the appellant did not comment on a clarity objection raised in the contested decision in its grounds of appeal.

The appellant argued before the Board that it did not need to comment on the clarity objection, partly because the decision indicated that a dependent claim provided the necessary clarification to claim 1 and this dependent claim had been incorporated into claim 1 being pursued in the appeal, meaning that the clarity objection no longer applied. 

According to Rule 99 EPC, grounds of appeal must state the reasons for setting aside the contested decision or the extent to which it is to be amended.  The Board noted that this had been interpreted consistently in the case law as requiring that all elements of the contested decision must be addressed, even if the reasons for the decision are wrong or contradictory.  The Board accepted that the reasoning in the decision was flawed, but since the appellant did not comment on the clarity objection in its grounds of appeal, the entire appeal was found to be inadmissible.

Kristina Cornish

kcornish@kilburnstrode.com


Practice Points


  • This decision highlights the critical importance of addressing each and every aspect of a contested decision in your grounds of appeal, even if it appears that an objection is not well-reasoned, contradictory or has apparently been addressed by an amendment.

  • Don’t run the risk that your appeal is inadmissible - if in doubt about an aspect of a decision, address it in your grounds of appeal. 

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Trade marks:

What can we take away from recent Court decisions regarding less conventional marks?


Red Bull: A 50/50 decision
CJEU: C-124/18 P
 
Red Bull has recently seen its colour combination mark being subject to invalidation. According to the mark description: ‘The ratio of the colours is approximately 50%–50%’. This led the Cancellation Division, Boards of Appeal, General Court, and now the Court of Justice, to rule that the description could have several meanings and therefore the mark description was not self-contained, clear and precise.

Practice Points

  • A mark must have a clear and precise description in the trade mark application. For colour marks, it must indicate the exact type of arrangement and proportion of the colours applied to the goods. 

  • CJEU case law dictates that the registration includes ‘systematic arrangement associating the colours concerned in a predetermined and uniform way’.


Adidas stripped of its stripes
General Court: T-307/17
 
Adidas has been confronted with an invalidity action of its parallel stripes mark. Adidas did not strongly contest that the mark had inherent distinctive character, but provided the Boards of Appeal with proof of acquired distinctiveness based on use of the mark in forms that differed significantly from its registered form. The General Court ruled that it was an ‘ordinary figurative mark’, registered in the proportions shown in the graphic representation, and the evidence submitted did not show use of the mark in permissible variations.

Practice Points

  • Despite strong brand recognition, one cannot rely on this alone as evidence of acquired distinctiveness.

  • Ensure you use your mark in similar forms to registration (especially if the shape is simple!).


Grana Padano: Certified cheesy smells
Boards of Appeal: R 2191/2018-2

The Consorzio per la tutela del Grana Padano, owner of the Protected Denomination of Origin (PDO) “Grana Padano”, were unsuccessful in their attempt to register GRANA PADANO as a European trade mark. “Grana” is a known PDO, but the Boards of Appeal held that this did not help to overcome a refusal that the mark was descriptive. They argued that the mark would be understood as describing services relating to the cheese.  The applicant had made no indication that it was seeking registration of a collective mark, but rather a straightforward trade mark.

Practice Points

  • Take care to indicate the type of protection you are seeking – if your mark is a collective mark, that must be indicated on the application.

  • The fact that a mark is a PDO does not automatically overcome a refusal on the grounds of descriptiveness.


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