This page intentionally left blank i This page intentionally left blank ii The Handbook of EUROPEAN INTELLECTUAL PROPERTY MANAGEMENT This page intentionally left blank iv This page intentionally left blank v This page intentionally left blank vi This page intentionally left blank vii This page intentionally left blank viii This page intentionally left blank ix This page intentionally left blank x  420 APPENDIX _ The filing figures reflect the rapid development of the EPO: the 100,000th application was filed in 1983 and nine years later the total was 500,000 During 1998 total filing figures reached the million mark The Vienna site was established in 1992 and incorporated the former International Patent Documentation Center already located in the Austrian capital A small EPO liaison office was also opened in Brussels to build up relations with the European Union institutions A further 12 states have acceded to the European Patent Convention since 2002 alone – a testimony to the strength of the European patent system Patentability A patent is a legal title granting its holder the right to prevent third parties from commercially exploiting the invention without authorization European patents are granted for inventions that  are new;  involve an inventive step;  are susceptible of industrial application Furthermore, the following are not considered to be inventions, if the European patent application only relates to such subject matter or activities:  discoveries, scientific theories and mathematical methods;  aesthetic creations;  schemes, rules and methods for performing mental acts, playing games or doing business;  computer programs This means that, for example, a computer program alone is not a patentable invention, even though a novel technical invention which is implemented through means including a computer is eminently patentable Such an invention is more than just a computer program alone In addition to this, inventions falling into the one of the following categories will not be able to obtain patent protection:  plants and animal varieties or essentially biological processes to produce plants or animals;  inventions contrary to ‘ordre public’ or morality In return for the protection bestowed by the patent, the holder has to disclose the details of the invention This information is published in the patent document so that everyone can benefit from the information it contains The exchange of information concerning the invention in order to gain the protection offered through a patent is also known as the ‘patent bargain’ _ HISTORY, ORGANIZATION AND PROCEDURES OF THE EPO 421  Patent application procedure The services of a qualified European patent attorney are advisable to ensure that a robust patent application is filed which will be an asset to the applicant The European grant procedure takes about three to four years from the date the application is filed The application must be filed in one of the EPO’s three official languages, English, French or German There are two main stages for the patent application:  Formalities examination and search report preparation, where the EPO checks that the application meets all formal requirements, and a search report, listing documents relevant to the patent application (‘prior art’), is prepared and sent to the applicant together with the so-called Extended European Search Report, an opinion on whether the application seems to meet the requirements After 18 months from the first filing date (or sooner, at the applicant’s request) the patent application is published, and included in the patent databases around the world to be viewed by the public  Substantive examination is when the EPO, at the applicant’s request, investigates whether the invention meets the requirements of the EPC and whether it is patentable This process can involve several exchanges of written arguments between the EPO examiner and the applicant (or rather, the applicant’s patent attorney) as they refine the scope of protection for the invention (eg to be limited just to those features that are novel and inventive in view of the prior art) Applications into the first stage come to the EPO either by direct filings, or by transmission of applications filed at national patent offices on the request of the applicant There is, however, an alternative route If an application has been filed at the World Intellectual Property Organization (WIPO) under the Patent Co-operation Treaty (PCT), then it will have its formalities examination and search report prepared under (similar) PCT procedures, and then be transmitted to the EPO for the second stage (substantive examination) Often the search will have been done by the EPO too, because the EPO is one of the competent authorities to which search work under the PCT is delegated Of course, PCT applications can also form the basis for substantive examinations in over 100 other countries Once all objections arising from substantive examination have been resolved, the patent will be granted, with the claims appearing in all three official languages There may then follow a third stage:  Opposition proceedings, which can take place if an opposition is filed within nine months of publication of the mention of the grant of the European patent Oppositions can be filed, for example, on the grounds that an invention is not patentable under the EPC, that it does not disclose the invention clearly and completely so that a person skilled in the art could carry it out, or that the subject matter of the European patent extends beyond the content of the application as filed Such challenges are heard by Opposition Divisions of the EPO, and can take several years to resolve, with the filing of evidence and written arguments by both sides Decisions of the Opposition Division (to uphold, amend or revoke the patent)  422 APPENDIX _ can be appealed (see below) If revocation of the patent is upheld, then rights are lost in all member states National validation and maintenance Up until grant the application will have been handled in one of the three official EPO languages (English, French or German) After grant the application loses its unitary quality, and becomes a bundle of national patent rights For the complete granted patent to take effect in each member state, translations into the relevant official language must be filed.1 These translations must be filed at the national patent offices, usually within three months2 of the mention of the grant of the patent, otherwise rights in that state will be void The national laws of some states allow for the re-establishment of rights if the deadline for filing translations is missed Granted national patents are kept in force by the payment of renewal fees (usually annual fees) For those patents that originated through the EPO procedure, a portion of the renewal fee collected by the national patent office is paid back to the EPO If renewal fees are not paid, the patent will lapse and the technology that had been protected becomes free for everyone else to use Where a patent owner has allowed their patent to lapse no one can restore it and bring it back into force The loss of rights in one country (ie through lapsing, or an adverse court decision) does not affect the rights in another country The Boards of Appeal Although administratively integrated in the structures of the EPO, the Boards of Appeal are independent from the Office in their decisions and are only bound by the EPC There are currently 24 technical boards of appeal, the Legal Board of Appeal, and the Enlarged Board of Appeal in the EPO The technical boards of appeal and the Legal Board of Appeal examine appeals from the decisions of the receiving, examining, legal and opposition divisions of the EPO You can consult the division of technical fields between the individual boards in the ‘Business distribution scheme’ documents in the Patents section of the EPO’s website Work is allocated according to the International Patent Classification Members and chairs of these boards are appointed for a term of five years To ensure uniform application of the law, or if an important point of law arises, a question of law can be referred to the EPO’s Enlarged Board of Appeal, either by a board of appeal or by the President of the Office Members of the Enlarged Board of Appeal are appointed for a term of five years In recent years the boards of appeal have been receiving about 2,000 new cases and settling about 1,600 cases per year The public is informed about the decisions of the boards via the Register of European Patents, the Official Journal of the EPO, a database of decisions available online and on ESPACE Legal DVD A systematic overview of the complete case law is available in an EPO publication, Case Law of the Boards of Appeal of the European Patent Office _ HISTORY, ORGANIZATION AND PROCEDURES OF THE EPO 423  Table A1.1 Some European Patent Office statistics for 2006 Applications filed Direct European applications PCT international phase applications Total European applications (including PCT international phase) PCT applications entering the regional phase European applications (including PCT regional phase) Searches European searches International searches Searches for national offices and third parties Total searches by the EPO 61,002 147,000 208,002 74,181 135,183 75,727 69,577 18,269 163,573 Examinations European examinations International preliminary examinations European patents granted Decisions in opposition cases 83,067 14,574 62,780 2,641 Technical fields with the most filings IPC classes Medical or veterinary science; hygiene Electric communication technique Computing Basic electric elements Organic chemistry Measuring; testing Vehicles in general Biochemistry, genetic engineering Organic macromolecular compounds Engineering elements Sub-total Others Total Number 15,656 13,375 854 7,996 7,438 7,069 4,320 3,830 3,686 3,275 75,499 56,360 134,859 % 11.6 9.9 6.6 5.9 5.5 5.2 3.2 2.8 2.7 2.4 56.0 44.0 100.0 Note: this is preliminary data compiled in March 2007 Final official figures for 2006 can be seen in the EPO Annual Report, published in June 2007  424 APPENDIX _ Notes With the exception of Lithuania and Slovenia, which only demand translation of the claims Iceland also accepts the claims alone in Icelandic, if the description is in English Some states allow more time, but only on payment of a surcharge For more information about the EPO, European patent filing procedures, access to patent databases and schedules for a range of public events, conferences and training seminars, please visit www.epo.org Appendix The Office for Harmonization in the Internal Market Introduction The Office for Harmonization in the Internal Market (OHIM) is the EU agency responsible for managing the Community Trade Mark (CTM) and Registered Community Design (RCD) systems It was set up in the Spanish city of Alicante in 1994 Since opening to the public two years after its inception, the agency has received applications from more than 170 countries worldwide for over 560,000 CTMs, 360,000 of which have been registered, and over 230,000 applications for RCDs – available since 2003 Community registration of trade marks and designs is based on the principle of offering EU-wide protection for each of these IP rights through one single registration process for trade marks and another for designs, each governed by its own single piece of legislation The trade mark or design right granted by the OHIM is therefore indivisible and unitary in character, offering either trade mark or design protection under one single IP title for the entire European Union as a single territory, currently made up of 27 Member States The Community Trade Mark Applications to register a CTM can be made directly to the OHIM in Alicante or via any of the national industrial property offices of the European Union, which will in  426 APPENDIX _ turn pass the application to the OHIM for processing The use of the agency’s online CTM filing system has proved popular with users, over 70 per cent of whom now use this method when applying for a CTM Electronically filing a CTM application also carries a 10 per cent reduction in the filing fee, making the option more attractive still Once received, the application will be examined by the OHIM to ascertain whether or not it can be accepted for registration, and if accepted it will be published for a period of three months to allow potential prior right holders to oppose the registration The OHIM, unlike many national IP offices, does not make ex officio objections to Community registration on the basis of prior rights existing, but rather leaves the matter of raising of such objections in the hands of the affected parties At the initial stages of an opposition to a CTM application, both parties enter into a ‘cooling-off’ period where they themselves, without any intervention from the OHIM, are given two months in which to come to an agreement over who owns the rights in question, and therefore whether or not the CTM application should proceed to registration Any agreement reached by the parties at this stage will be accepted by the OHIM If no such agreement is possible, it falls to the OHIM to take a decision based on the subsequent submissions of each of the parties, in which it will either allow the CTM application to proceed to registration or refuse it The average time taken to register an uncontested CTM is around 18 months, although any opposition proceedings may extend this period There is also the option to apply to the OHIM for the cancellation of a CTM, through either a revocation request or an invalidity request, once the mark has been registered A registered CTM is valid for 10 years from the date of filing, and can be renewed indefinitely for subsequent periods of 10 years upon payment of the corresponding renewal fee The Registered Community Design The process of Community Design registration is much simpler and quicker than that of the CTM, principally because no substantive examination as to the registrability of the design is made by the OHIM As with CTM applications, an RCD application can be filed directly at OHIM, and there is also the option to file online, or via any of the national IP offices of the EU Member States Unlike the CTM system, RCD filers can include any number of designs in one single application, as long as each of the designs is for the same type of product These multiple applications have the added benefit of a progressive scale of fee reductions for each design after the initial design, and again for each design after the first 10 filed The examination of a Community Design prior to registration is based exclusively on formalities and any elements of the design itself that may contravene accepted standards of public morality Once registered, in around eight weeks, the design right obtained is valid for a period of five years and can be renewed for a further four periods of five years each, entailing a maximum lifetime of 25 years _ THE OHIM 427  E-business and information services The OHIM has developed a number of e-business tools over the years to facilitate interaction between its staff and the users of the RCD and CTM systems, especially in relation to filing applications online This facility now exists for CTM and RCD applications, for oppositions and for CTM renewals The ‘mypage’ interface allows users to create their own personal, passwordprotected account with the OHIM, via which they can manage their entire Community IP portfolio and undertake simplified filing procedures The CTM Online and RCD Online databases offer fully searchable data at no cost, and can be accessed, as with all of the Office’s other online tools, at www.oami.europa.eu OHIM facts and figures The OHIM handles an average of around 50,000 CTM applications each year, although 2005 and 2006 saw filings rise to around 65,000 and 77,000 respectively, with similar numbers foreseen for 2007 Oppositions are filed against 20 per cent of all CTM applications published, although only 20 per cent of these oppositions actually proceed to decision There have been 2,050 post-registration cancellation requests submitted to the OHIM since the first CTM was registered, leading to only 190 marks actually being cancelled Since 1996, CTMs have been filed by companies in 174 different countries, with 22 per cent of this total coming from the United States alone Sixty per cent of all CTM filings are from EU-based companies, principally in Germany, the United Kingdom, Spain, Italy and France Goods relating to the information technology and telecommunications industries top the ranking in terms of CTM filings, followed closely by services in the field of telecommunications In the area of RCD, over 230,000 designs have been received in a total of 60,200 applications, around half of which were multiple applications Germany heads the list of RCD filing nations, with over 23 per cent of all RCDs coming from this country, followed by Italy, the United States, France, the United Kingdom and Spain Further information can be obtained via the OHIM website at www.oami.europa eu or by sending an email to information@oami.europa.eu Appendix IP offices IP offices of the European Patent Convention member states Austria Austrian Patent Office http://www.patentamt.at/Home/index.html Belgium Belgian Patent Office (Ministry of Economic Affairs) http://mineco.fgov.be/redir_new.asp?loc=/intellectual_property/home_en.htm Bulgaria Bulgarian Patent Office http://www1.bpo.bg/ Cyprus The Department of the Registrar of Companies and Official Receiver (DRCOR) of the Republic of Cyprus http://www.mcit.gov.cy/mcit/drcor/drcor.nsf/index_en/index_en?opendocument Czech Republic Industrial Property Office http://isdvapl.upv.cz/servlet/page?_pageid=82,110&_dad=portal30&_ schema=PORTAL30 IP OFFICES 429  Denmark Danish Patent Office http://www.dkpto.dk/ Estonia The Estonian Patent Office http://www.epa.ee/default.asp?site_id=2 Finland National Board of Patents and Registration of Finland http://www.prh.fi/en.html France Institut National de la Propriété Industrielle http://www.inpi.fr/front/?ref=http://www.european-patent-office.org/onlinelinks/a/aa/ undefined Germany German Patent and Trademark Office/Deutsches Patent- und Markenamt http://www.dpma.de/index.htm Greece Greek Industrial Property Organisation http://www.obi.gr/online/ Hungary Hungarian Patent Office http://www.hpo.hu/English/ Iceland The Icelandic Patent Office http://www.patent.is/focal/webguard.nsf/key2/index.html Ireland Irish Patents Office http://www.patentsoffice.ie/en/homepage.aspx Italy Italian Patent and Trademark Office http://www.uibm.gov.it/  430 APPENDIX _ Republic of Latvia Patent Office of the Republic of Latvia http://www.lrpv.lv/ Liechtenstein Amt für Handel und Transport (AHT) http://www.llv.li/amtsstellen/llv-aht-home/llv-aht-home-kurzvorstellung.htm Republic of Lithuania The State Patent Bureau of the Republic of Lithuania http://www.vpb.lt/ Luxembourg Service de la Propriété Intellectuelle http://www.eco.public.lu/ Malta Malta Patent, Design and Trademark Office http://www.mfin.gov.mt/ Monaco National Patent Office, Direction de l’Expansion Economique, Division de la Propriété Intellectuelle No webpage available but the following email address has been given: mcpi@gouv.mc Netherlands Octrooicentrum Nederland (The Netherlands Patents Office) http://www.octrooicentrum.nl/ Republic of Poland Patent Office of the Republic of Poland http://www.uprp.pl/English Portugal Portuguese Patent Office http://www.inpi.pt/irj/portal/anonymous?j_user=inpiguest_en IP OFFICES 431  Romania Romanian State Office for Inventions and Trademarks http://www.osim.ro/index3.html Slovak Republic Industrial Property Office http://www.indprop.gov.sk/ Slovenia Slovenian Intellectual Property Office http://www.uil-sipo.si/ Spain Officina Española de Patentes y Marcas http://www.oepm.es/cs/Satellite?c=Page&cid=1144260495042&classIdioma=_en_u s&idPage=1144260495042&pagename=OEPMSite%2FPage%2FtplHome&numPag Actual=1 Sweden Swedish Patent and Registration Office http://www.prv.se/english/default.html Switzerland Swiss Federal Institute of Intellectual Property http://www.ige.ch/defaulte.htm Turkey Turkish Patent Office http://www.tpe.gov.tr/tpe/index_en.jsp United Kingdom UK Intellectual Property Office http://www.ipo.gov.uk/ Trilateral offices European Patent Office www.epo.org US Patent and Trademark Office www.uspto.gov  432 APPENDIX _ Japan Patent Office http://www.jpo.go.jp/ Other major regional or multinational IP authorities Office for Harmonization in the Internal Market (OHIM) http://oami.europa.eu/ World Intellectual Property Organization (WIPO) http://www.wipo.int/portal/index.html.en Benelux Office for Intellectual Property (BOIP) http://www.boip.int/ Eurasian Patent Organisation (EAPO) http://www.eapo.org/ African Regional Intellectual Property Organization (ARIPO) http://www.aripo.wipo.net/index.html African Intellectual Property Organization (OAPI) http://www.oapi.wipo.net/fr/OAPI/index.htm International Union for the Protection of New Varieties of Plants (UPOV) http://www.upov.int/ Index of advertisers Abel & Imray 181, 183 Assenpatent BV 43–46 Awapatent 48–50 HGF / HGF-Law xlii Holme Patent A/S 361 Hynell Patenttjänst AB xliii–xlvi Bavarian Nordic 232–35 Beck Greener 341 Bevan Brittan ix BGW AG 131 Bird Goën & Co 38 Bournemouth University 82–83 BiiP (Business-Integrated Intellectual Property) 257–60 Brann (Dr Ludwig Brann Patentbyrå AB) 326 IBC Legal Conferences (informa business) xix, xxi IMEC 203–06 The Intellectual Assets Centre 262 International Patent Bureau A/S 52 IP-search (Swiss Federal Institute of Intellectual Property) 217 Iprbox Oy 94–97 Italian Patent and Trademark Office 77 J A Kemp & Co Carpmaels & Ransford 191 Currencies Direct xxiii 153 Danish Patent & Trademark Office iv–v Kiln plc vi Kirkpatrick 257 Kings College London (informa professional academy) xxi EPO (European Patent Office) Loven ii Finnegan, Henderson, Farabow Garrett & Dunner LLP 165 Genmab 148–51 Gill Jennings & Every LLP vii GN A/S xxix–xxxii 199 Marks & Clerk xiv–xv Mathys & Squire x, xiii Mewburn Ellis LLP 247 Minesoft xvi MIPLC (Munich Intellectual Property Law Centre) xxxvi–xxxviii  434 INDEX OF ADVERTISERS Modiano 58–59 Nederlandsch Octrooibureau Novagraaf 99 Novo Nordisk 33 Novozymes A/S 159–62 R G C Jenkins & Co 89–91 Octrooibureau Vriesendorp & Gaade 368–72 Patent Seekers 171 Proctor & Gamble (P&G) xxxiii–xxxv PRV InterPat (Swedish Patent & Registration Office) 102 Queen Mary, University of London, School of Law 119–21 310 Schlumberger 27 Schmauder & Partner AG 11–13 Slovenian Intellectual Property Office 385 Ström & Gulliksson AB 64 Taylor Wessing 402 TFI (Technology from Ideas) Tomkins 111 111 UK Intellectual Property Office viii The University of Edinburgh 122–23 Valea Technology & Law Vestas 388–91 18–20 ... result of the material in this publication can be accepted by the editor, the publisher or any of the authors The views expressed in this book are those of the authors and are not necessarily the. .. Board intellectual capital intellectual capital management International Financial Reporting Standard Swiss Federal Institute of Intellectual Property French National Intellectual Property Of? ??ce intellectual. .. The European Union – but not only the European Union The European Union is the main actor in European IP integration, but it is not the sole one Indeed, governments quickly abandoned the