We were deeply shocked to learn of the devastating earthquake in Japan and would like to express our sincere condolences to the victims of this earthquake. In these difficult times, we would like to express our deepest sympathy to you and your fellow human beings.
Our thoughts are with all those affected, their families and friends. May the strength of the community and the support of those around you give you comfort during this difficult time.
Dr. Dorothea Hofer
Jürgen Feldmeier
Dr. Andreas Oser
Dear Sir or Madam,
In view of the digital age, in which documents will only be served electronically in the future, the European Patent Office will abolish its so-called 10-day fiction of service, which previously governed the calculation of time limits, as of November 1, 2023.
With amended Rules 126(2) and 127(2) EPC, the current fiction of service, according to which a document is deemed to have been served on the tenth day after delivery to the postal service provider or – in the case of electronic service – on the tenth day after its transmission (“ten-day rule”), will no longer apply as of November 1, 2023. Instead, a new fiction of service will be introduced, according to which electronic (but also any postal) service will be deemed to have taken place on the date as shown of the document.
The amended service fiction is expected to lead to a simplification for users because it will bring the service rules of the EPC and the PCT more in line with each other.
Do you have any further questions on this topic?
Please contact us, we will be pleased to advise you!
Jürgen Feldmeier, LL.M
We are delighted to announce that our managing partner Dr. Dorothea Hofer has obtained the European Patent Litigation Certificate issued by the University of Maastricht in cooperation with the Academy of European Law (ERA) in Trier. This includes an extensive practical and theoretical training in the law underlying the Unified Patent Court (#UPC) and related fields of European law so that she is well prepared for representing clients in all proceedings before the Unified Patent Court.
We are pleased to share that our firm Prüfer & Partner together with four of our intellectual property attorneys have been recognized for their outstanding work in patent prosecution and nullity in the newly published 2023 Edition of iam Patent 1000, one of the world’s leading rankings with regard to patent services providers.
What the ranking said
Prüfer & Partner
“The attorneys at Prüfer & Partner stand out from their peers for their thoughtful consideration of the position of the client. They are always responsive and provide detailed and pragmatic solutions. Their service is very satisfactory and the whole team is highly recommended.”
Jürgen Feldmeier
“Jürgen Feldmeier is an experienced, go-to patent attorney in the field of high-tech engineering, and is highly appreciated for his clear-cut advice. He handles EPO proceedings and nullity actions with ease – typically with a successful result. He is great to cooperate with and he has sharp technical understanding.”
Dr. Dorothea Hofer
“Dorothea Hofer is excellent. She delivers great service, responds quickly and appropriately, and she has a strong ability to understand complicated technical matters. She appropriately selects her associates to form a solid team to handle important cases like litigation cases. The quality and cost effectiveness of her work is totally satisfactory. Dorothea and her firm are among the most recommendable patent experts in Germany.”
Dr. Andreas Oser
“For prosecution, EPO oppositions and technically informed opinions, Andreas Oser is definitely recommended. He is reliable and brings deep experience in the field. He is customer oriented and very nice to work with.”
Markus Adamczyk
Joining the above-mentioned attorneys in the IAM Patent 1000 this year is Markus Adamczyk, a noted expert in AI and computer-implemented inventions. With skills in computer science and mechanical engineering, and research experience in-house at Vodafone, Adamczyk’s technical expertise cannot be doubted. He supports Feldmeier for printing industry leader Brother Industries and special machinery and plant engineering company Hymmen GmbH.
About IAM Patent 1000
The prestigious ranking IAM Patent 1000, published by Globe Business Media Group in London, is commonly regarded as the definitive ‘go-to’ resource for those seeking to identify world-class, private practice patent expertise as well as leading patent service providers. IAM undertook an exhaustive qualitative research project to identify outstanding firms and individuals across multiple jurisdictions. When identifying the leading firms, factors such as depth of knowledge, market presence, and the level of work on which they are typically instructed were all taken into account, as well as positive peer and client feedback.
We are very pleased that our patent attorneys Dr. Dorothea Hofer, Mr. Jürgen Feldmeier as well as Dr. Andreas Oser are listed as beste Anwälte des Jahres 2023 (best attorneys of the year 2023) in the ranking published by Handelsblatt on June 16, 2023.
It is a great honor for our firm that three of our experts are represented in this prestigious ranking. We would like to thank our colleagues for the numerous recommendations and the good cooperation!
We look forward to continuing to provide our clients with the best possible support in all intellectual property matters and to protect their rights.
About the Best Lawyers ranking by Handelsblatt
In cooperation with the US publishing House Best Lawyers, the renowned business magazine Handelsblatt has determined the well-known ranking of the best lawyers and business law firms in Germany for the year 2023. The current edition in Handelsblatt is based on the 15th edition of the Best Lawyers rating.
In the procedure, lawyers are asked which competitors they can particularly recommend. The selection procedure follows the conviction that lawyers themselves are best able to judge which colleagues are particularly qualified for certain areas of law. Lawyers can be nominated by anyone except themselves.
According to the current schedule, the Unified Patent Court will start its work on June 1, 2023.
The so-called sunrise period, during which opt-out requests can be filed with the Unified Patent Court for granted European patents or published European patent applications will start on March 1, 2023, according to the current planning of the Unified Patent Court.
An opt-out request is only effective if it is entered in the register of the Unified Patent Court.
At present, it is not yet known how long it will take from filing the opt-out request to registration, as there are no empirical values yet. In a test phase for the file management and communication software of the Unified Patent Court, which will start on February 13, 2023, we will be able to test the process of filing the request, but this does not allow us to draw any firm conclusions on the subsequent processing time of opt-out requests at the Unified Patent Court.
We therefore recommend filing any opt-out requests as early as possible starting from March 1, 2023.
Now is the time to review again your patent portfolio of European patents and published European patent applications and to decide for which patents/patent applications an opt-out request should be filed early.
Do you have any further questions on this topic or on the Unified Patent Court and the Patent with Unitary Effect?
Please do not hesitate to contact us, we will be happy to advise you!
Dr. Dorothea Hofer
European and German Patent, Trademark and Design Attorney
The start of the Sunrise Period is postponed for two months. The initial roadmap foresaw 1 January 2023 as the beginning of the Sunrise Period with an entry into force of the UPCA on 1 April 2023. Although the general preparatory work of the UPC is on track, the decision was made that additional time may be given to allow future users to prepare themselves for the strong authentication which will be required to access the Case Management System (CMS) and to sign documents.
According to a statement by Klaus Grabinski, judge at the German Federal Court of Justice and the first president of the UPC, preparations for the new court are all on schedule, with judges already appointed, recruitment of court staff underway, and office space selected, so that the court administration should be operational by the beginning of 2023. The postponement was rather justified by the fact that the authentication requirements for the use of the online portal of the UPC presuppose that users will have to obtain suitable tools through appropriate providers, which may well take more time than expected. However, a further delay of the launch is not expected. We will keep you updated.
If you have any questions, please do not hesitate to contact our team. Jürgen Feldmeier, LL.M. (feldmeier@pruefer.eu)
This article was originally published in German on JUVE Handbuch Wirtschaftskanzleien 2022/2023.
The decision of the Enlarged Board of Appeal (GBK) of the European Patent Office (EPO) in the currently pending proceedings G2/21 is awaited with great excitement. This could have a significant impact on the future filing strategy of applicants, because at its core is the question of when an invention is “ready” to file.
Securing an early filing date for an invention is an important aspect of a patent strategy in order to secure one’s own legal position vis-à-vis competitors. For time and cost reasons, the question arises as to how much experimental effort must be expended under patent law aspects before filing a patent application in order to support the claimed effects, or whether corresponding evidence can be submitted subsequently.
Until a decision G2/21 is issued to finally clarify relevant submission questions, this article will discuss practical scenarios that will continue to exist regardless of the answer to the referred questions, but will have to be – possibly re – evaluated with the help of decision G2/21.
Suitability of “evidence” from product development as support of an invention
In the context of a product development, the product of a competitor or the internal ‘gold standard’ is often used as a reference product, regardless of whether the structure or composition of this reference product is known precisely. Such comparative data are often not usable in the context of the ‘problem-solution approach’ applied by the EPO, since, according to established case law, the claimed effect must be clearly attributable to the distinguishing characteristic.
Experimentally investigating the influence of all potentially relevant parameters on the claimed effect and thus exploring the limits of the invention can be time-consuming and financially expensive and usually does not appear to be expedient from the inventor’s point of view.
Irrespective of this, the proof of technical effects can often only be produced with pinpoint accuracy in the knowledge of the objectively closest prior art, e.g. in the examination procedure, since only then will the objectively fitting (because closest to the claimed invention) comparative form be known.
For such reasons, experimental investigations are often postponed to a later point in time. Whether this postponement is possible at all, however, is now to be clarified by the GBK.
Underlying question of G2/21
According to the questions referred, the GBK is primarily concerned with the question of whether evidence such as experimental data must be disregarded only after the patent application has been filed if it constitutes the exclusive evidence for a claimed effect. Three approaches are presented to the GBK, all of which revolve around the criterion of whether or to what extent the information originally provided in the application must render a claimed effect plausible:
The most generous scenario for the applicant would be if the exclusive evidence for a claimed effect could readily be provided after the filing date, i.e., no plausibility requirement at all. This would allow filing an invention in an early, possibly speculative (“immature”) state to secure an early filing date.
However, should the GKB come to the conclusion that minimum plausibility requirements are to be set with regard to the claimed effects in the application itself, a corresponding “ab-initio plausibility” could be applied as a standard for the technical effects.
In a third case, it could be required as a minimum that the claimed effects are at least not implausible from the outset, i.e. that there is no “ab-initio implausibility“.
State of maturity – when is an invention ready to be submitted
Regardless of how the GBK will decide, we always consider it useful to file an application only when advantages over the prior art can at least be named; proof of the technical effects, e.g. by comparative experiments, should be checked before filing.
The “state of maturity” of an invention could be classified as follows:
(i) effects are not (yet) known, only the features characterizing the desired product can be stated.
In this case, if an early filing date is a priority, one could include a “laundry list” of potential effects in the application text, and then pick the desired effect if needed. Although a lack of disclosure does not arise directly from the failure to obtain effects from the application as long as they are not reflected in the claim wording, an entirely speculative invention description could, in some circumstances, call into question the consideration of late evidence or even reworkability.
(ii) Effects are expected and the features of the invention that are causally responsible are suspected.
Here, the expected effects can already be specifically named; these should then at least not be “ab-initio implausible”. From a technical point of view, no doubts should be justified against the possible achievement of the named effects. In the description of the invention in the original application, the challenge is that it is not known which features/parameters are causal for the achievement of the effect. Regardless of decision G2/21, if possible, the “causality” between effects and the corresponding features of the invention should be investigated and explained in the application text. Previously published literature can help to substantiate this causal relationship. Patent law only requires that something works or that a set task is solved; a scientific explanation of how a claimed problem solution works is not necessarily required.
(iii) Effects are expected, it can be concluded on the basis of technical considerations which features of the invention should be causally responsible for them.
A technical explanation that the claimed effects are expected can be given in the patent application (“ab-initio plausibility”). However, a real experimental proof is still missing. In such a case, the prospects of grant – assuming the required novelty – are likely to be good, but it is to be expected that e.g. in possible opposition proceedings the opposing party could attack this “plausibility”, e.g. by submitting reasonable doubts that the theory underlying the plausibility is not correct. Without wanting to anticipate the final decision in the current referral G2/21, however, it should be possible in these case constellations on the basis of the existing “ab initio plausibility” to substantiate the expected technical effects in the factual instance – i.e. not only in appeal or appeal – by means of subsequently supplied experiments and data.
(iv) Effects are known and proven
Here, there should be nothing to argue against filing a patent application. If new prior art is invoked, e.g. in the examination procedure, it should be possible to provide further (post-published) experimental data to support the effects already shown in the application, if required.
Special cases
Special cases exist if technical effects are only proven or expected for a part of a claimed subject-matter, or if a technical effect itself constitutes a claimed feature – e.g. in a use claim. In the first case, the question then arises whether the technical effect can plausibly be generalized to the remaining part of the claim, and in the second case the criterion of “plausibility” will also be relevant in the context of examining whether the invention is sufficiently disclosed at all and thus practicable. Here, too, however, considerations similar to those explained earlier should play a role.
Conclusion
• The decision of the GBK in the proceedings G2/21 will hopefully provide clarity as to the “state of maturity” in which an invention must be filed in order for claimed effects to be recognized.
• In many cases, regardless of the standard to be applied under G2/21, early submission will be desired.
• It is already apparent that the question of “plausibility” does not constitute a patenting requirement in its own right, but is an important criterion in the examination for inventive step and possibly even the practicability of a claimed invention.
• In any case, it is wise to check the maturity of the invention before filing a patent application in order to achieve the best possible result and obtain a strong patent.
Authors:
Dr. Susanne Sonnenhauser
Ms. Sonnenhauser has been working in the field of intellectual property since 2005 and is admitted as a German Patent Attorney and European Patent Attorney. She joined Prüfer & Partner in 2008.
Her main practice areas are patent and trademark law, mainly in the fields of pharmaceuticals and life science.
Ms. Sonnenhauser represents her clients in both patent grant and opposition proceedings. In addition, she provides expert opinions regarding the validity and infringement of intellectual property rights.
Dr. Andreas Oser, LL.M.
Andreas Oser (Dipl.-Chem. University of Freiburg; Ph.D. Max-Planck-Institute for Biochemistry Munich) has been working in the field of intellectual property since 1991, was admitted as a German and European patent attorney in 1995 and has been a managing partner at Prüfer & Partner since 2002.
Mr. Oser’s main areas of expertise are chemistry, pharmaceuticals and life science.
His practice includes patent prosecution (drafting, examination), opposition and appeal proceedings, patent litigation, infringement and validity opinions, freedom-to-operate analyses and due diligence examinations.
Contact:
Prüfer & Partner mbB
Sohnckestrasse 12, 81479 München
Tel. +49 89 69 39 21 0, E-Mail office@pruefer.eu, www.pruefer.eu
On July 15, 2022, Montenegro completed the final step towards accession to the European Patent Convention (EPC) by depositing its instrument of accession and became the 39th member state of the European Patent Organization (EPO) on October 1, 2022.
This means that Montenegro is leaving its status as an extension state, which it obtained in 2010, and all patent applications filed on or after October 1, 2022, can be validated as a European patent with effect for Montenegro once they have been granted.
The official admission of Montenegro as a member state is a new milestone in the history of the European Patent Organization.
For more information: https://www.epo.org/news-events/news/2022/20221001.html
“All good things are worth waiting for”. Now the time has finally come:
The Unified Patent Court has announced on its website that it plans to commence operations on April 1, 2023.
This means: Actions for invalidity and for infringement of European patents can then be filed with the Unified Patent Court, unless a request to “opt-out” from the Unified Patent Court system has been filed for the European patent in question.
Such an “opt-out” request can be filed as early as January 1, 2023, i.e. in the sunrise period before April 1, 2023. The “opt-out” request can be filed for granted European patents as well as for pending European patent applications that have already been published.
In addition, for granted European patents where the mention of grant is published on or after April 1, 2023, a request for unitary effect of the European patent for all participating member states that have joined the unitary patent system can be filed within one month of publication.
The participating states – as of October 2022 – are so far the following 17 states:
Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, Sweden
In the foreseeable future, the following additional member states could join as soon as they have completed the pending ratification: Ireland, Poland, Czech Republic, Slovakia, Hungary, Romania, Greece and Cyprus.
For other member states, such as Spain or Croatia, the European patent must still be validated nationally. The same applies, of course, to all non-EU states that belong to the European Patent System (such as Great Britain, Norway, Switzerland, Türkiye, etc.). Instead of the European patent with unitary effect, there will of course also be the possibility in the future for patent protection to extend only to certain desired countries, as in the past, by means of corresponding validation. Depending on whether unitary effect or classical validation is chosen, different translation requirements have to be fulfilled for the granted patent.
For European patent applications for which the intention to grant has already been communicated, i.e. the communication according to R. 71(3) EPC has been issued, the possibility to obtain a European patent with unitary effect can be opened by the following measures:
* An early request for the European patent with unitary effect can be filed. The EPO will deal with the request from April 1, 2023. Or:
* A request is filed in response to the communication under R. 71(3) EPC to defer grant. The EPO then delays the grant so that it is not published until on or after April 1, 2023.
Both measures can be applied as soon as Germany has deposited the certificate of ratification. This date is yet to be announced.
Now is a good time to review the current portfolio of European patents and European patent applications to determine whether an “opt-out” request should be filed for all or some, or whether a European patent with unitary effect is desired for pending applications. This decision will depend on many factors, including the importance of the invention, the technical field, the competitive environment, etc.
Please contact us. We will be happy to advise you on which solution is best for you.
Dr. Dorothea Hofer, Jürgen Feldmeier LLM, Dr. Andreas Oser LLM
