On World IP Day (26 April 2018), it was announced that the UK has ratified the Unified Patent Court Agreement (UPC Agreement). Now only ratification by Germany is needed for the legislation to come into force.

What is the Unitary Patent?

Currently, when a European patent application is granted, it essentially becomes a “bundle” of individual national patents; one in each state in which it is validated.

A unitary patent will be a single, indivisible right and will cover most member states of the European Patent Convention (EPC).  After the relevant legislation comes into force, it will be possible to obtain a so-called unitary patent by requesting unitary effect within one month of grant of a European patent.

What is the Unified Patent Court?

The Unified Patent Court (UPC) will be a new international court which will have jurisdiction over all unitary patents.  It will also have jurisdiction over nationally validated European patents in states covered by the UPC, provided that patentees have not elected to opt out their patents from the UPC’s jurisdiction before any legal proceedings commence.

When are the changes happening?

German ratification of the Agreement will trigger the legislation to come into force.  However, ratification in Germany is currently on hold due to a legal challenge at the German Constitutional Court, which is expected to be decided this year.  The earliest date for the new legislation to commence is likely to be early 2019.  Watch this space for further developments.

Need advice?

We welcome queries from our Australian and New Zealand clients regarding the unitary patent and the UPC and would be happy to discuss what these changes mean for you.

Authored by Serena White, DPhil and Charles Tansey, PhD

Did you know that a European patent application can be used to secure protection reaching beyond the EPC member states? Perhaps surprisingly, a European patent application can be used to obtain protection in other territories – including some geographically remote from Europe. This article summarises relevant information about extension states, validation states and requesting protection in Hong Kong as well as touching on the Patent Prosecution Highway (PPH).

Member states

There are currently 38 European Patent Convention (EPC) contracting states or member states.[1]

All member states at the filing date are automatically deemed designated in the patent request[2], [3] and a single designation fee is deemed to cover the all EPC member states.[4]

When a European patent is granted, it essentially becomes a bundle of national patents.  Each national patent derived from the European application gives its proprietor the same rights as would be conferred by a national patent filed directly at that patent office.[5]  Validation is required in each designated member state, typically within 3 months of grant, for the European patent to be effective in that state.

What are extension states?

Between 1993 and 2009, the EPO signed extension agreements with 10 European states that are not (or were not at the time) EPC member states.  These extension agreements enable (or enabled) patent protection to be secured in those states via European patent applications, despite those states not having acceded to the EPC.[6]

There are currently 2 extension states:

  • Bosnia and Herzegovina (BA)
  • Montenegro (ME)[7]

The 8 former extension states have become EPC member states (most recently Serbia (RS) in 2010).  The current 2 extension states may become member states in due course.

What are validation states?

“Validation state” is a relatively new term which, like the previous terminology “extension state”, relates to obtaining protection in non-EPC member states.  Unlike the extension agreements, validation agreements are not limited to European countries.[8]

The concept of a validation state is similar to that of an extension state but is distinct from the process of national validation of a European patent in a member state as explained above.

Since 2010, the EPO has signed validation agreements with 4 non-member states enabling patent protection to be secured in those states, despite those states not having acceded to the EPC.[9]  Whether or not a validation state is available is determined by whether or not a validation agreement is in force at the filing date of the application.[10]

Validation agreements are currently effective in 4 states:

  • Morocco (MA) – applications having a filing date of 1 March 2015 or later[11]
  • Moldova (MD) – applications having a filing date of 1 November 2015 or later[12]
  • Tunisia (TN) – applications having a filing date of 1 December 2017 or later[13]
  • Cambodia (KH) – applications having a filing date of 1 March 2018 or later[14]

How can protection in extension states and validation states be obtained?

In a nutshell, additional fees need to be paid for extension and validation states.  For a PCT entering the European Regional Phase, the time to decide whether or not to seek protection in extension and/or validation states is when the deadline for European Regional Phase entry is approaching.  Validation requirements apply after grant in extension and validation states, like they do for member states, in order for the patent to be effective.

What about patent registration in Hong Kong?

Patent protection in Hong Kong can be achieved via a European patent application which designates the UK,[15] a Chinese patent application or a UK patent application.[16]

Registration in Hong Kong is a 2 stage process:

Stage 1 involves filing a request to record the designated patent application (i.e. the Chinese, EP(UK), UK or Chinese published patent application) within 6 months of publication of the application by the relevant patent office.[17]

Stage 2 requires a request for registration and grant in Hong Kong of the EP(UK), UK or Chinese granted patent.  The deadline is the later of (i) 6 months from publication of the request to record in Hong Kong and (ii) 6 months from grant in the relevant jurisdiction.[18]

What about the Patent Prosecution Highway (PPH)?

It’s also worth noting that the EPO has a number of agreements in place with other patent offices, including IP Australia.  In general terms, accelerated examination can be requested in a second jurisdiction based on claims which have been found patentable in a first jurisdiction.  In Australia, examination under the PPH can only be requested if the first examination report has not yet been dispatched.[19]

Summary

A European patent application can be used to obtain protection in several other territories in addition to the 38 EPC member states.  This includes extending patent protection into extension states and validation states as well as registration in Hong Kong.  A European application (or patent) can also be used as a tool for PPH in various jurisdictions.  Early decisions are advisable to avoid missed opportunities.

The information in this article is correct as at 1 March 2018.


[1] https://www.epo.org/about-us/foundation/member-states.html

[2] EPC, Art 79(1)

[3] Unless the application is a divisional application and designations have been withdrawn in respect of the parent application at the time of filing of the divisional application.  EPO Guidelines for Examination (November 2017), A-IV, 1.3.4

[4] EPO Guidelines for Examination (November 2017), A-III, 11.2.1 and Rules relating to Fees, Art 2(2), item 3

[5] EPC, Art 2(2) and Art 64(1) and National Law Relating to the EPC

[6] https://www.epo.org/law-practice/legal-texts/extension-validation-system.html

[7] https://www.epo.org/about-us/foundation/extension-states.html

[8] https://www.epo.org/law-practice/legal-texts/extension-validation-system.html

[9] https://www.epo.org/about-us/foundation/validation-states.html

[10] not the priority date or the 31 month deadline for European regional phase entry

[11] OJ EPO 2015, A20

[12] OJ EPO 2015, A85

[13] OJ EPO 2017, A84

[14] OJ EPO 2018, A16

[15] The UK is designated if the single designation fee covering all EPC member states is paid, unless designation of the UK is explicitly withdrawn

[16] http://www.ipd.gov.hk/eng/intellectual_property/patents/how_to_apply.htm#p4

[17] http://www.ipd.gov.hk/eng/intellectual_property/patents/how_to_apply.htm#p8

[18] http://www.ipd.gov.hk/eng/intellectual_property/patents/how_to_apply.htm#p13

[19] http://manuals.ipaustralia.gov.au/patents/national/examination/2.13.4.5_Expedited_Exam_Under_the_IP_Australia-EPO_PPH.htm

Authored by Serena White, DPhil and Charles Tansey, PhD

From the 6 April 2017, the United Kingdom Intellectual Property Office (“UKIPO”) will only allow omnibus claims in United Kingdom (UK) patent applications and European patent application designating Great Britain (GB) in limited instances.[i] Furthermore, it will no longer be possible to amend a granted UK patent or a European patent designating GB to include one or more omnibus claims. However, it will not be a ground of revocation for a granted UK patent to have an omnibus claim.[ii]

The change has been adopted after stakeholder consultation and a UKIPO review of omnibus claim practice.[iii]  Indeed this is one of several practice “improvements” being administered by the UKIPO after public consultation in 2016 regarding a set of proposed changes to the Patents Rules 2007 which set out the procedural and administrative requirements that apply to patents and patent applications in the UK. These changes are intended to simplify, clarify and bring greater certainty to users of the UK patent system.

An omnibus claim refers generally to the description and drawings included in a patent or patent application rather than explicitly stating the technical features of an invention. Omnibus claims have traditionally been included in a specification as a very narrow or limited final fallback position. However, by their very nature, it can be problematic to determine their precise scope. This uncertainty means that patentees and third parties cannot be sure of the scope of protection provided by the patent in question.

The change in UKIPO practice means that omnibus claims will only be allowed where there is no way of defining the invention in a clear and concise way by written means. Indeed, the proposed inclusion to rule 12 of the Patent Rules 2007 provides that:

“The claim or claims must not rely in respect of the technical features of the invention on references to the description or any drawing or photograph unless the feature cannot otherwise be clearly defined in words, by a mathematical or chemical formula or by any other written means.

The UKIPO will raise an objection of non-compliance with the new provision during examination of any unacceptable omnibus claims in a patent application, unless the patent application has a compliance period expiring before 6 April 2017.[iv]

While the UKIPO report proposing the change makes it clear that omnibus claims are only to be allowed where they are “absolutely essential” to define the scope of the claim, the wording of the proposed inclusion arguably goes further.

This same “absolutely necessary” language is used in relation to omnibus claim practice in Rule 43(6) of the European Patent Convention, in Rule 6.2(a) of the Patent Cooperation Treaty, as well as subsection 40(3A) of the Australian Patents Act 1990 (Cth) (post Raising the Bar), which in particular provides that the claim(s) “must not rely on references to the description or drawings unless absolutely necessary to define the invention.” It is believed that the UK policy makers intentionally took this additional step by drafting this narrowing inclusion to rule 12 in such a way that any determination of the scope of an omnibus claim must be absolutely clear from the wording of the claim alone without the requirement for reference to any external matter. Their intent was to avoid potential clarity issues around the meaning of the phrase “absolutely necessary”, thereby avoiding time intensive arguments during examination as to what “absolutely necessary” means.

As a result of the consultation, the UKIPO has also clarified that it is not their intention to prevent the claims from referring to the description for reasons of conciseness and that they will consider how best to appropriately alter the proposed rule to avoid confusion.[v]

The practice change will apply to all new and pending applications for UK patents and to granted UK patents from 6 April 2017.


[i] Guidance: Changes to Patents Rules on 1 October 2016 and 6 April 2017, UKIPO, 1 September 2016,  <https://www.gov.uk/government/publications/changes-to-patents-rules-on-1-october-2016-and-6-april-2017/changes-to-patents-rules-on-1-october-2016-and-6-april-2017>

[ii] Proposed Amendments to the Patents Rules: Government Response, UKIPO, 2016, <https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/541238/Proposed_changes_to_the_Patents_Rules_government_response.pdf>

[iii] Proposed changes to the Patents Rules, UKIPO, 29 February 2016, <https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/503493/Proposed_changes_to_the_Patents_Rules.pdf>

[iv] Rule 30 of the Patents Rules 2007 sets the “compliance period”, the last day of which is the “compliance date” which is typically 4.5 years from the priority/filing date or, if it occurs later, 1 year from the date of issue of the first examination report.

[v] above 2

Authored by Paul Harrison

The European Patent Office (EPO) recently issued its reasoned decision clarifying the EPO’s stance regarding partial priority (sometimes called multiple priorities).[1]  But what is the relationship between poisonous priority and partial priority and how do the legal approaches to these issues vary between different jurisdictions?  We take a look at these aspects of patent law in the context of the European Patent Convention (EPC) and the laws in Australia and New Zealand.

Prior rights and poisonous priority

Under the “prior rights” principle, if patent application A has a filing date which is before the filing date of application B (in the same jurisdiction) but A has a publication date which is after the filing date of B, the whole contents of A form part of the prior art for the purposes of assessing novelty (but not inventive step) of B’s claims.[2]  This principle gives rise to “novelty only” prior art[3] (which may alternatively be referred to as “whole of contents” prior art).[4]

This principle not only applies to unrelated prior art, but also has the potential to cause one patent application to invalidate claims of a related application.

In a simple scenario, the theory of so-called “poisonous” or “toxic” priority suggests that self-collision of a parent application with its divisional child application might arise as follows:

  • A first application, X, is filed, disclosing a specific widget.
  • A second application, Y, is filed and claims priority from X. Y discloses the same specific widget and, for the first time, a general embodiment of the widget.  Y claims the general embodiment.
  • A divisional application, Z, is filed having Y as its parent, claiming priority from X and containing the entire disclosure of Y. Divisional application Z is published.
  • According to the poisonous priority argument, the disclosure of the specific widget in Z (which is entitled to priority, having first been disclosed on filing of X) is “novelty only” prior art[5] against Y’s claim to the general embodiment (the general embodiment having first been disclosed later, on Y’s filing date). Thus the disclosure of the specific widget in Z destroys the novelty of Y’s claim to the general embodiment.

For Y’s claim to the general embodiment, whether or not an earlier priority date can be recognised for the portion of the claim relating to the specific widget is a critical consideration in determining if Z can be poisonous.

Partial priority

Partial priority refers to the concept that a claim can have more than one priority date.  That is, some of the subject matter of the claim is entitled to one priority date but other subject matter of the same claim is entitled to a different priority date.  This results where some subject matter within the claim is disclosed in an earlier priority application, and so is entitled to the priority date of that application, but other subject matter is not disclosed in the earlier priority application, and so is not entitled to that priority date.  Partial priority therefore allows for the same subject matter in related applications to have the same priority date, thus averting potential self-collision of related applications such as Y and Z above.

However, partial priority can be a complicated issue, especially in circumstances where the alternative embodiments having different priority dates cannot easily or succinctly be expressed separately and clearly.  Questions have revolved around whether, in order for partial priority to be acknowledged, embodiments entitled to different priority dates need to be explicitly separated[6] or whether disclosure of those separate embodiments can be implicit.

What’s the situation at the EPO?

The poisonous priority debate in Europe began several years ago.[7]

European patent claims can have more than one priority date.  Indeed, according to EPC Art 88(2), “multiple priorities may be claimed for any one claim”.  The right of priority covers only those elements which are disclosed in the application(s) whose priority is claimed.[8]

Decision G2/98[9] of the EPO’s Enlarged Board of Appeal determined that a claim could have more than one priority date, “provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters.”  This appeared to introduce a restriction on the circumstances in which multiple priority dates for a single claim would be recognised.  That is, G2/98 suggested that, in order for multiple priority dates to be recognised for a single claim, there is a strict requirement to formulate the claim so as to explicitly recite alternative forms of the invention having different priority dates.  Unfortunately, there are circumstances under which this can be difficult and the requirement for “a limited number of clearly defined alternative subject-matters” is at the heart of the poisonous priority problem.

Diverging lines of case law developed, one following the strict requirements of G2/98 and the other following an alternative, more lenient, approach.  The more lenient approach to multiple priorities for a single claim, which is arguably a more pragmatic approach, acknowledges that a single claim can have multiple priority dates but recognises that it is possible to mentally split the subject matter without needing to explicitly recite the alternatives in the claim.

The divergent case law led to a referral to the EPO’s Enlarged Board of Appeal (case G1/15).  The first question referred to the Enlarged Board was:

  1. Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic “OR”-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document?

In its decision, G1/15,[10] the Board answered, “No,” and as further clarification ordered, “No other substantive conditions or limitations apply in this respect.”

Many European patent attorneys are breathing a sigh of relief because G1/15 essentially eliminates the strict requirements established by G2/98 and there is hope that this decision will put an end to the issue of poisonous priority for European patents and patent applications.

What about Australia?

Patent claims in Australia can also have more than one priority date.  Different forms of the invention within the same claim are treated as separate claims for each form of the invention and so are entitled to different priority dates.[11]

The approach of the Courts in Australia to the question of when there is a “different form of the invention” has not yet become clear.  In AstraZeneca v Apotex[12] a strict approach was adopted, the Court finding that the Patents Act 1990 did not intend to treat every potential variant of the defined invention as a different form of the invention.[13]  In contrast, in Nichia v Arrow Electronics[14] the Court concluded that two selection steps in the relevant claims resulted in different forms of the invention which were entitled to different priority dates.[15]

Thus it is difficult to predict for a particular case whether or not a strict approach to partial priority or a more lenient Applicant-friendly (or Patentee-friendly) approach will be taken in Australia.  It will be interesting to see if future decisions are influenced by the outcome of G1/15.

And New Zealand?

For applications filed in New Zealand on or after 13 September 2014 and PCT applications which entered the national phase in New Zealand on or after that date, the relevant legislation is the Patents Act 2013.  Patent applications filed or entering the national phase in New Zealand before 13 September 2014, and divisionals of those applications, are examined under the Patents Act 1953.

The Patents Act 1953 included a “prior claiming” provision[16] under which, in the context of later-published prior art entitled to an earlier priority date, only the subject matter of the claims of that prior art could anticipate.  In contrast, the Patents Act 2013 provides for “novelty only” prior art in its definition of the prior art base.[17]  According to the Patents Act 2013, all of the information (not just the content of the claims) contained in an earlier-priority-later-published application is relevant for novelty.  This change in the law represents an effort to harmonise New Zealand patent legislation with patent law in other jurisdictions (such as Europe and Australia).

While in theory a poisonous priority issue could arise under the 1953 Act, in practice this is more likely to arise under the 2013 Act because the entire contents of the earlier disclosure can anticipate.

The Patents Act 2013 is relatively new legislation so from a case law point of view it’s still early days.  Nonetheless, under the Patents Act 2013, a New Zealand patent claim can have only one priority date.[18]  If the subject matter of the claim is supported by the matter disclosed in an earlier application, the priority date of the claim is the date of filing of that earlier application (or, in the case of more than one earlier application, the earliest of them).  Otherwise, the priority date of the claim is the date of filing of the later application.[19]  This leaves the door wide open for poisonous-priority type attacks when divisional applications are involved and Applicants should stay alert to the potential dangers.

It’s worth mentioning that the “anti-self-collision” clause, which was present in the draft legislation, was removed before the Patents Act 2013 was passed.[20]  With no proposed legislative amendment currently on the cards, it seems that the issue of poisonous priority is unlikely to go away any time soon.

Conclusion

In Europe it is hoped that decision G1/15 has buried the poisonous priority problem for good.  In Australia, case law is still developing, whereas in New Zealand the issue of poisonous priority is alive and kicking.

Shelston IP’s patent attorneys are registered to practise in both Australia and New Zealand and are well versed in the laws and practices in both jurisdictions.  Some Shelston IP patent attorneys are also European qualified.  Any reader who requires specific advice to supplement the general commentary provided above, should contact their Shelston IP patent attorney, or the authors of this article.


[1] http://www.epo.org/news-issues/news/2017/20170203.html

[2] Assuming B has no priority entitlement

[3] This terminology is commonly used in Europe

[4] This terminology is usual in Australia and New Zealand

[5] The EPC, the Patents Act 1990 in Australia and the Patents Act 2013 in New Zealand all contain provisions for “novelty only” prior art.  See EPC, Art 54(3), Patents Act 1990, s 7(1) and definition of “prior art base” in Sch 1 and Patents Act 2013, s 8.

[6] This could be in the form of an “OR” claim.  For example, taking the scenario above, such a claim might be directed to: the general embodiment of Y with the proviso that the specific widget of X is excluded; OR the specific widget of X

[7] “Poisonous EPC Divisionals – Implications for Risk Management and Opportunistic Advantage”, Lawrence and Wilkinson, epi Information, 2/2011, 54

[8] EPC, Art 88(3)

[9] http://www.epo.org/law-practice/case-law-appeals/pdf/g980002ex1.pdf

[10] http://www.epo.org/law-practice/case-law-appeals/pdf/g150001ex1.pdf

[11] Patents Act 1990, s 43(3)

[12] AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99

[13] AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, 251

[14] Nichia Corporation v Arrow Electronics Australia Pty Ltd [2015] FCA 699

[15] Nichia Corporation v Arrow Electronics Australia Pty Ltd [2015] FCA 699, 163

[16] Patents Act 1953, s 14.  The prior claiming provisions of New Zealand’s Patents Act 1953 are akin to those of the UK’s Patents Act 1949, now superseded by the Patents Act 1977

[17] Patents Act 2013, s 8(2)

[18] Patents Act 2013, s 62

[19] Patents Act 2013, s 61

[20] Patents Bill, Government Bill 235—2 (2008)

Authored by Serena White, DPhil