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Applying for a patent

Patentability

What are the criteria for patentability in your jurisdiction?

The Unified Patent Court will have jurisdiction to hear claims relating to both European patents and upcoming European patents with unitary effect established by the EU Unitary Patent Regulation (1257/2012).

The European Patent Office (EPO) will grant unitary patents in accordance with the European Patent Convention (EPC). The pre-grant procedure and requirements to obtain a unitary patent will be the same as for European patents, but the patent owner will be able to request unitary effect within one month from publication of the granted European patent in the European Patent Bulletin.

The patentability criteria for a unitary patent are set out in the EPC and are the same as for European patents. To be patentable, an invention must be new, involve an inventive step and be susceptible of industrial application and must not be excluded from patentability.

What are the limits on patentability?

Under the EPC, the following are excluded from patentability:

  • discoveries, scientific theories and mathematical methods as such;
  • aesthetic creations as such;
  • schemes, rules and methods for performing mental acts, playing games or doing business;
  • computer programs as such;
  • presentations of information as such;
  • inventions of which the commercial exploitation would be contrary to public policy or morality;
  • plant and animal varieties and any essentially biological processes for their production; and
  • methods for treating humans or animals by surgery or therapy and diagnostic methods practised on human or animals.

To what extent can inventions covering software be patented?

Computer programs as such are expressly excluded from patentability, but claims involving computer programs are not excluded if the claimed subject matter has a technical character.  

To what extent can inventions covering business methods be patented?

Business methods as such are expressly excluded from patentability. However, like computer programs, business methods may be patentable if the claimed subject matter has a technical character.  

To what extent can inventions relating to stem cells be patented?

The use of human embryos for industrial or commercial purposes is excluded from patentability on the basis that their commercial exploitation would be contrary to public policy or morality.

Claims directed to a product which could, on the application’s filing date, be exclusively obtained by a method which necessarily involved the destruction of human embryos from which the product is derived are excluded from patentability, even if said method is not a part of the claim. It is therefore necessary to consider the entire teaching of the application to establish whether products such as stem cell cultures are obtained exclusively by the use, involving the destruction, of a human embryo.

Any embryo-derived human stem cells that are “capable of commencing the process of development of a human being” are excluded from patentability. Conversely, stem cells derived from parthenogenesis may be patentable since existing scientific evidence suggests that they cannot develop into an embryo in the absence of paternal DNA.

Are there restrictions on any other kinds of invention?

Inventions of which the commercial exploitation would be contrary to public policy or morality are excluded from patentability. In addition to the use of human embryos for industrial or commercial purposes, this includes processes for:

  • cloning humans;
  • modifying the germ line genetic identity of humans; and
  • modifying the genetic identity of animals – where it is likely to cause them suffering without any substantial medical benefit to humans or animals – and animals resulting from such processes.

Plant or animal varieties are said to be excluded from patentability under the EPC, although patents may be granted if the technical feasibility of the invention is not confined to a particular plant or animal variety. Recent EPO guidance has indicated that such products will not be patentable when produced by essentially biological processes. 

Grace period

Does your jurisdiction have a grace period? If so, how does it work?

The EPC does not have a general grace period. However, it does exempt the following disclosures from being considered prior art, provided that the relevant patent application is made within six months of such a disclosure:

  • disclosures that were an abuse in relation to the applicant or its legal predecessor (eg, a disclosure made in breach of confidence); and
  • disclosures which occurred at an officially recognised international exhibition.

Oppositions

What types of patent opposition procedure are available in your jurisdiction?

The centralised EPO opposition procedure – whereby a European patent can be opposed at the EPO within nine months of its grant – will apply to unitary patents as it does to European patents. To the extent that an application for a European patent results in both a unitary patent and a bundle of European patents (in respect of countries to which the application for unitary effect does not extend), the opposition procedure, if successful for the opposing party, will result in both the unitary patent and the corresponding European patents being revoked.

Where there is an opposition ongoing at the EPO and parallel proceedings in the Unified Patent Court relating to the same patent, a party must inform the court of the pending opposition proceedings. The Unified Patent Court may, of its own motion or at the request of a party, request that the opposition proceedings be accelerated in accordance with the EPO proceedings. Further, the Unified Patent Court may stay its proceedings when a rapid decision is expected from the EPO.  

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

The Unified Patent Court provides another court system in which to challenge patents, but introduces no additional methods for challenging a patent in Europe outside the court system.  

How can patent office decisions be appealed in your jurisdiction?

The introduction of unitary patents and the Unified Patent Court do not affect the procedures for appealing patent office decisions in Europe.  

However, the Unified Patent Court will have jurisdiction to hear actions concerning decisions of the EPO in carrying out administrative tasks relating to unitary patents, such as the administration of requests for unitary patents by patent owners and the upkeep of a unitary patents register. 

Timescale and costs

How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

The time that it takes for the EPO to grant a patent can vary greatly. According to its 2016 Annual Report Quality Indicators, the EPO indicates that in 2016 the median time for the examination period was 23.3 months. The time to grant will likely vary depending on the technical field of the patent application in question.

The cost to file and obtain a patent from the EPO (including patent agent fees and required translations) depends on, among other things, the patent’s complexity and the national designations sought. The cost is likely to be in the region of £15,000 to £35,000.

Renewal fees for unitary patents will typically be lower than those for traditional European patents. The unitary patent renewal fee structure has been set to correspond to the renewal fees of maintaining traditional European patent validations in Germany, the United Kingdom, France and the Netherlands. Therefore, the difference in fees between the continued validation of a traditional European patent in the 25 Unified Patent Court contracting member states and a unitary patent will be significant. 

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