EP Practice FAQs
FAQ ABOUT EUROPEAN PATENT LAW
Find the answers to some of the questions most frequently asked by our US Associates about European Patent Law.
Is software patentable in Europe?
Software inventions may be patentable in Europe provided the invention can be considered to have a “technical character”. This technical character must be derived from a further technical effect beyond that which is obtained from the software simply being run on a computer. This is typically obtained by the software solving a technical problem. Therefore, a method of doing business may only be patented in Europe if it can be considered to also have a technical character.
It will of course be appreciated that this technical character must satisfy the usual novelty and inventive step requirements in order for a patent to be granted for the software.
Are methods of medical treatment patentable in Europe?
Methods for treatment of the body by surgery or therapy and diagnostic methods practised on the body are not patentable in Europe. This exclusion prevails irrespective of the qualifications of the people carrying out such methods.
Cosmetic non-surgical treatments and diagnostic methods performed without interaction with the body are however patentable. Products for use in a medical method are also in principle patentable.
We advise US Attorneys when drafting patent applications in the medical area to ensure that both method and device claims are included from the outset. This prevents the situation where an amendment in Europe aimed to overcome this exclusion by the addition of device claims is objected to due to added subject matter.
Is there a European equivalent to US continuation-in-part applications?
There is no equivalent to CIP applications in Europe. The only means of obtaining patent protection in Europe for new features of an invention previously described in a European Patent Application after the priority period is to file a second patent application directed towards the new features.
It should be noted that the original patent application is citable as prior art against the second patent application. However, if the second patent application is filed prior to the publication of the subject matter disclosed in the original patent application, the new features contained in the second application only need to be novel (and not inventive) over the subject matter contained in the original patent application.
It follows that in situations where a European Patent Application claims priority from a CIP application, the original US application from which the CIP application is derived will be citable as prior art against the European Patent Application.
What is the allowed format of claims in Europe?
In Europe, only one independent claim is typically allowed per claim category (i.e. apparatus and method). However, more than one independent claim per category is allowed in the following exceptional cases:
-where the independent claims cover a plurality of inter-related products having the same inventive concept (e.g. a transmitter claim and a receiver claim).
-where the independent claims cover different uses of a product or apparatus.
-where the independent claims cover alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim.
It should be noted that multiply dependent claims are however permitted in Europe. It is therefore advisable to consider amending a claim set prior to entering Europe to include multiply dependent claims. A saving in the amount of excess claims fees payable can be made in this way, as official claims fees are payable for each claim numbering over fifteen (currently €225 per claim up to 50 claims, and €555 thereafter).
Are extensions of time available for filing a response to a European Official Action?
The initial deadline for filing a response to a European Official Action is usually four months from the date of issue of the Official Action. However, this deadline is extendable up to a further two months with no official fee payable. Unlike the US however, the extension must requested in advance of the deadline.
If a response is not filed by the initial or extended deadline, it is still possible to validly file the response using the “further processing” procedure. This procedure enables a valid response to be filed to an Official Action after the deadline, by requesting further processing within two months from the receipt of the Official Communication from the EPO advising that a response to the Official Action was not received by the set deadline. This request for further processing must be accompanied by the response to the Official Action, as well as payment of an official fee (currently €225).
What is the problem-solution approach used in Europe?
The EPO assesses the presence of inventive step in patent applications using the problem-solution approach. It is based on the requirement that the invention must be disclosed in terms of a technical problem and its solution. The approach consists of three stages:
-selecting that citation from the prior art search which appears to have the most technical features in common with the claimed invention, and which is in a related technical field. This is known as the “closest prior art”.
-establishing the objective technical problem of the closest prior art. The problem is based on those claimed features of the invention which are not present in the closest prior art. This objective technical problem is generally therefore not the same as the problem stated in the application as filed (which was of course stated without knowledge of the citations uncovered in the prior art search).
-starting from the closest prior art and the objective technical problem, considering whether the solution provided by the claimed features of the invention would have been obvious to a person skilled in the art at the priority date of the patent application.
The obviousness is commonly determined by assessing whether either the closest prior art or another citation found in the prior art search has a teaching which would have prompted the skilled person to modify the closest prior art to a product or method falling within the invention as claimed in order to solve the objective technical problem.
Where the technical problem is both known and solved in the closest prior art in a way different from the claimed invention, the objective technical problem can be simply to provide an alternative solution to the known problem.
What are allowable claim amendments in Europe?
A claim may be amended during prosecution of a patent application to include any of the subject matter disclosed in the patent specification. This does not include the abstract or the priority documents, or features only described in a cross-referenced application.
However, an amendment is not allowable if the overall change in the content of the application results in the skilled person being presented with information which is not “directly and unambiguously” derivable from that previously presented in the application. European Examiners adopt a very strict interpretation of this provision when compared to US Examiners. Therefore, in order to ensure that an amendment does not result in an added subject matter objection being raised, it is advisable that the amendment has direct word-for-word basis in the application as filed. For example, an amendment to replace a disclosed specific feature by a more general undisclosed term will not be allowed. It is also not allowed to delete features from an independent claim that are presented as essential in the description.
Amendments can not be made prior to receipt of the European Search Report. Amendments can also not relate to unsearched subject matter which does not combine with the originally claimed invention to form a single general inventive concept.
While the Examining Division has discretion to allow voluntary amendments until the issue of the decision to grant, it should be noted that the allowance of an amendment after the Official Communication that the application is to be allowed is exceptional (the Communication under Rule 71(3) EPC).
Is it possible to request a telephone interview with a European Examiner?
Telephone interviews with Examiners in Europe are quite rare, in contrast to the situation in the US. This is due to the fact that the EPO discourages Examiners from conducting interviews, with written communication being the preferential means of prosecuting a patent application through to grant.
The exception to this situation occurs when Oral Proceedings have been scheduled. In this case, Examiners are generally willing to discuss written submissions filed in advance of the Oral Proceedings with the European Attorney over the phone, to enable the possibility of the Oral Proceedings being cancelled if allowable subject matter can be identified during the telephone discussion.
Once a European Patent Application has been granted, does it enter into force automatically throughout Europe?
Negotiations are ongoing in the EU with regard to a unitary EU patent. However, a European Patent granted under the EPC must currently be validated in each European member state in which patent protection is required within 3 months of the date of grant (or 6 months in Ireland).
Validation of a granted European Patent requires payment of a fee to the national patent office of each member state, and in some cases the filing of a translation of the entire specification or claims into an official language of the state. If the European Patent is not validated in a member state by this deadline, the European Patent will not be recognised in that member state.
In order to maintain patent protection for the invention after validation, renewal fees must also be paid annually to the national patent offices of each state in which the European Patent was validated.
What is the time limit for filing divisional applications in Europe?
A divisional application may only be filed from a pending European application within two years from the date of issue of the first Official Action under Article 94(3) EPC for the application, or the parent application if the application is a divisional application itself. However, this deadline is extended where a unity of invention objection is subsequently raised, in which case the divisional deadline is reset for a period of two years from the date of issue of the Official Action containing the unity objection.
While the claims of the divisional application need not be limited to the subject-matter already claimed in the parent application, the claimed subject matter may not extend beyond the content of the parent application as filed. In addition, the parent and divisional applications may not claim the same subject matter, in order to avoid double patenting.