A Primer to European

Patent Law
Vinita Radhakrishnan
 Revision
 Patentability Requirements
 US Patent law
 Patent searching and Drafting

 European Patent Law

 IP and Biotechnology
 Patent Drafting specific to Biotech/pharma
inventions
 About Europe
 Europe: Bundle of states
 European Union (EU):
 Economic and political union of 27 member
states
 Single Market
 free trade
 free movement of people, goods, services and

Capital
 What about IP?
 What about IP?
 Each country has its own law
 Community TM
 Community Design
 Community Patent????
 EPC
 EPC
 Convention on the Grant of European Patents
of 5 October 1973 (Revised in 2000)
 Multilateral treaty
 Instituted the European Patent Organization
 Provides legal framework for granting of
European patent
 Single harmonized grant procedure
 Not a unitary right
 Bundle of rights
 Bundle of patents :
 Essentially Independent
 Nationally enforceable

 Nationally Revocable

 The grant procedure undertaken before

the European Patent Office
 EPOrg
 Public international organization
 Created in 1977 to grant patent under EPC
 Seat in Munich
 Administrative and financial autonomy
 Not legally bound to EU
 Has 2 organs:
 Administrative council
 EPO
 Administrative council
 Supervisory body of the organization
 Made up of members of the contracting
states
 Responsible for overseeing the work of the
European Patent Office
 Budget
 Appoints president
 Approve EPO presidents Actions
 Amends the Rules and some particular
provisions of the Articles of the EPC
 EPO
 Executive body of the organization
 Does not have a legal entity
 Directed by president

 Main office: Munich

 Branch offices: Hague, Berlin
 Official language: English, French and
German
 EPO (Departments)
 Receiving Section
 Examination Division
 Opposition Division
 Board of Appeal (final instance in granting
and opposition)
 Enlarged board of Appeal (to ensure
uniform application of Law)
 Members
 Contracting States: 36
 Extension States: 5
EPO Member states
 Contracting states
 Austria  Spain  Liechtenstei  Netherland
 Belgium  Finland n s
 Lithuania  Norway
 Bulgaria  France  Luxembourg  Poland
 Switzerlan  United  Latvia  Portugal
d Kingdom  Monaco  Romania
 Cyprus  Greece  Former  Sweden
 Czech  Croatia Yugoslav  Slovenia
Republic  Hungary Republic of
Macedonia
 Slovakia
 Germany  Ireland  San Marino
 Denmark
 Malta
 Iceland  Turkey
 Estonia  Italy

Extension States:
Albania, Bosnia and Herzegovina, Montenegro, Serbia
 Legal Basis
 European Patent Convention EPC
 Articles & Rules
 Guidelines for Examination
 Case law
 Board of Appeals (BOA's) decisions
 Enlarged BOA decisions
Patentability Requirements
Requirements for Patentability:
Art. 52 (1) EPC
 European patents shall be granted

for any inventions

 which are susceptible of industrial

application
 which are new and

 which involve an inventive step

 Art 52(2)
The following in particular shall not be regarded as
inventions within the meaning of paragraph 1:

(a) discoveries, scientific theories and mathematical

methods;

(b) aesthetic creations;

(c) schemes, rules and methods for performing

mental acts, playing games or doing business, and
programs for computers;

(d) presentations of information.
 Art 52(4)
Not inventions:
 Methods for treatment of the human or

animal body by surgery or therapy

 Diagnostic methods practised on the

human or animal body

This provision shall not apply to products,

in particular substances or compositions, for
use in any of these methods.
 Art 53 (Exceptions to
patentability )
European patents shall not be granted in respect
of:

(a) inventions the publication or exploitation of which

would be contrary to "ordre public" or morality,
provided that the exploitation shall not be deemed to
be so contrary merely because it is prohibited by law
or regulation in some or all of the Contracting States;

(b) plant or animal varieties or essentially biological

processes for the production of plants or animals; this
provision does not apply to microbiological processes
or the products thereof.
 Patentability Requirement
Article 52 (1) EPC Requirements
• industrial applicability:
– Art. 52(4)
• novelty:
– Article 54
• inventive step:
– Article 56
• Invention:
– no positive definition; definition by exclusion (Art.
52(2))
– implicit requirement: technical character
 Novelty
 Self-evident requirement of IP law
 “You cannot take from the public what is
already theirs”
 Also in copyright and trademark law
 Historically undisputed, unlike inventive step!
 An absolute requirement
 No such thing as ‘a little bit novel...’
 a straightforward requirement
 Normally easily established ... and easily
overcome!
 Article 54
(1) An invention shall be considered to be new if it does not form part of the
state of the art.

(2) The state of the art shall be held to comprise everything made available to
the public by means of a written or oral description, by use, or in any other
way, before the date of filing of the European patent application.

(3) Additionally, the content of European patent applications as filed, of which

the dates of filing are prior to the date referred to in paragraph 2 and which
were published under Article 93 on or after that date, shall be considered
as comprised in the state of the art.

(4) Paragraph 3 shall be applied only in so far as a Contracting State

designated in respect of the later application, was also designated in
respect of the earlier application as published.

(5) The provisions of paragraphs 1 to 4 shall not exclude the patentability of

any substance or composition, comprised in the state of the art, for use in a
method referred to in Article 52, paragraph 4, provided that its use for any
method referred to in that paragraph is not comprised in the state of the
art.
 Novelty: Article 54 EPC
 Art. 54 (1) defines what is considered
to be "new“
 .... something which does not form part
of the state of the art

 What is the State of the Art?

 defined by Art. 54 (2)
 also Art. 54(3) & (4) for EP applications
 What is state of the art?
 Everything made available to public
by means of :

State of Art

…before the filing date of application

What is the "State of the
Art"?
 Conflicting applications

 Art. 54 (3) EPC ... European patent applications

[filed] prior to the date referred to in paragraph 2
[filing/priority date application] and ...
published ... on or after that date, shall be
considered as comprised in the state of the art.

 Art. 54 (4) EPC [Paragraph (3) only for

overlapping states]
 Against double patenting
 Also for PCT applications
 For novelty only. Not for inventive step!
 Must be pending
 Filing and Priority

First Filing
“priority “
State B State C State D
State A

12 Months

Entitled to use the “priority date“ as the first filing date

NOT entitled to use the “priority date as the first filing
 Art 56
 An invention shall be considered as
involving an inventive step if, having
regard to the state of the art, it is not
obvious to a person skilled in the art.

 If the state of the art also includes

documents within the meaning of
Article 54, paragraph 3, these documents
are not to be considered in deciding
whether there has been an inventive step.
 Article 56 EPC
 An invention shall be considered as
involving an inventive step if, having
regard to the state of the art, it is not
obvious to a person skilled in the art.
 PHOSITA
 Compare to imaginary "man in the
street", "man on the Clapham
omnibus", "man on the
Underground" from, especially,
British law.
 Person skilled in the art is peculiar to
patent law.
 PHOSITA
 An ordinary practitioner
 Aware of what is common general
knowledge in a particular technical field
(the art in question) at the relevant date.
 Has access to everything in the state of
the art.
 Has normal capacity for routine work, but
has no inventive skills.
 In some fields the skilled person can be
equated with a team, rather than with a
single person.
 How do we decide on
obviousness?
 Various tests in different national systems.
 One of the tests used by the German office
was that every invention is a solution to a
technical problem.
 In the very first case heard by the Board of
Appeal the problem and solution approach
was used to determine the question of
inventiveness.
 The problem and solution
approach (PSA)
1. Determine the closest prior art
2. Based on this, establish the objective
technical problem to be solved
3. Consider whether the claimed
invention, starting from the closest
prior art and the objective technical
problem, would have been obvious to
a skilled person.
 Stage 1
Identify the Closest Prior Art
(CPA)
 The item of prior art (normally a
written disclosure) disclosing
technical effects, purpose or
intended use most similar to the
invention.
 Often it has the greatest number of
features in common with the
invention.
 Stage 2
Establish the
objective technical problem
How to modify or adapt the closest
prior
art to achieve the technical effect(s)
which
the invention provides over the closest
prior art.
 Stage 3
Decide on obviousness
Is there an indication in the prior art
that
would prompt the skilled person to
solve
the objective technical problem by
modifying or adapting the closest prior
art
to arrive at the claimed invention?
 The problem and solution
approach
(PSA) - five questions (1)
1. (Stage 1) What is the closest prior art?
2. (Stage 2) What is the difference, in terms
of the claimed technical features, between
the claimed invention on the one hand and
the cpa on the other?
3.What technical effect is caused by this
difference?
 The problem and solution
approach
(PSA) - five questions (2)
4.What, therefore, is the objective
technical problem underlying the
claimed invention?

5.(Stage 3) Would the skilled person

solve this problem in the manner
indicated on the basis of the totality of
the prior art, without at any stage
employing any inventive skill?
 Article 57
Industrial application
An invention shall be considered as
susceptible of industrial application if it can
be made or used in any kind of industry,
including agriculture.

Mere fact that a substance can be made in

some way does not necessarily mean that
the Patentability requirements are fulfilled,
unless there is also some "profitable use"
for which the substance can be employed.
 Grant Procedure
 Request for Grant
 Description
 Claim
 Drawing
 Abstract
 Formality Examination
 Search Report Preparation
 Substantive Examination (On request)
 Opposition
 Appeal Proceedings
 Grant
 National Phase
 Translations
 Enforcement and
maintenance
 Infringement Proceeding
 Defenses
 Remedies
 Thanks
vinita.r@connexios.com