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Entry into force of the european patent with unitary effect: review your contracts!

By Frédérique DURIEUX and Franck DELAMER

The European patent with unitary effect and the Unified Patent Court (UPC) will soon come into force. Before requesting unitary effect or opting out of the exclusive jurisdiction of the Unified Patent Court for a European patent which does not have unitary effect, patent owners will need to be aware of their obligations under existing contracts and, if necessary, adjust them.

Published on: 27th Jun 2022

Patent

European and Unitary Patent

Contracts

Collaborative innovation

Accelerating examination to obtain a US patent

By Bailey ZIEGLER, US Patent Attorney

The speed of examination at the US Patent Office (USPTO) to obtain a US patent can be excessively long for some patent applicants. This may be especially true for applicants in technical fields with limited periods of commercial advantage. Nevertheless the USPTO offers multiple initiatives to advance the speed of examination.

Published on: 4th May 2022

Patent

US Patent

Whether or not to opt out of the competence of the unified patent court: another issue for european patent owners

Par Frédérique DURIEUX et Stéphanie MASSIN CELAIRE, French and European Patent Attorneys

The Unified Patent Court will have exclusive competence for all European patents, as well as for supplementary protection certificates (SPCs) granted for a product protected by a European patent. If this exclusive competence is obligatory for European patents with unitary effect, it will be possible, during a transitional period, to opt out of the UPC’s exclusive competence for European patents not benefiting from the unitary effect. European patent owners should therefore start thinking about their opt-out strategy now.

Published on: 21th April 2022

Patent

European and Unitary Patent

Unitary Patent

European patent with unitary effect: soon it will be time to choose !

By Frédérique DURIEUX and Stéphanie CELAIRE, French & European Patent Attorneys

The European patent with unitary effect will come into force in a few months. Now is therefore time for applicants for European patents to define their strategy.

Published on: 1st March 2022

Patent

European and Unitary Patent

Unitary Patent

CRISPR/Cas9: a nebula of patents

By Lucile VERNOUX and Nicolas BOUQUIN, French and European Patent Attorneys

Discover an extract from the Immunowatch, a one-of-a-kind newsletter in the field of immunotherapy published by our partner Mabdesign, which contains an in-depth analysis on CRISPR/Cas9 patents, and its challenging licensing landscape, conducted by Lucile Vernoux and Nicolas Bouquin.

Published on: 18th Feb 2022

Patent

Immunotherapy

The European Patent with Unitary Effect and the Unified Patent Court will come into being in 2022

By Stéphanie MASSIN CELAIRE, Partner

It's been a long and bumpy road, but here we are! The provisional application protocol (PAP) enters into force today. During this period of provisional application, which is expected to last about 8 months, the Preparatory Committee will set up the administrative bodies of the Unified Patent Court (UPC). In particular, the Preparatory Committee will recruit the judges.

Published on: 19th Jan 2022

Patent

European and Unitary Patent

Protecting by patent a drug combining two known active ingredients: is it possible ?

By Aurélia VAVASSEUR, European and French Patent Attorney

More and more therapeutic treatments are based on the combination of two (or more) distinct active ingredients. It is possible to obtain patent protection for such a combination under certain conditions...

Published on: 30th Dec 2021

Patent

Drugs

Dosage or administration regimens are patentable in Japan, but inventive step may be tricky!

By Lazarina CHOISNEL and Cécile PUECH, French & European Patent Attorneys

Inventions relating to a new dosage or administration regimen of a compound with a known therapeutic use are not excluded from patentability in Japan. However, it may be difficult to defend their inventive step.

Published on: 23th Dec 2021

Patent

Therapeutic methods

Patentability

American and French Patent Offices Enter into a PPH Agreement

By Bailey ZIEGLER, US Patent Attorney

On November 8, 2021, the United States Patent and Trademark Office (USPTO) and the National Institute of Industrial Property of France (INPI) entered a Patent Prosecution Highway (PPH) agreement. Effective December 1, 2021, applicants for a French patent receiving a positive opinion for patentability from the INPI may request accelerated examination at the USPTO using the PPH Pilot program.

Published on: 2nd Dec 2021

Patent

US Patent

Continuing applications : pointers for european applicants on creating US patent portfolio

By Bailey ZIEGLER, US Patent Attorney

According to a study of applications filed at the USPTO in fiscal year 2015, approximately 30% of applications filed were continuing applications. As many US claim drafting principles stand in stark contrast to their European counterparts, European applicants may be missing out on the unique opportunity to create a diverse US patent portfolio through continuing application filings.

Published on: 25th Nov 2021

Patent

US Patent

Patentability of dosage requirements: towards an easing of requirements in canada

By Lazarina CHOISNEL and Cécile PUECH, French & European Patent Attorneys

In contrast to that of the United States, Canadian patent law excludes therapeutic methods from patentability on the grounds that physicians should not be hampered in their practice of medicine. However, as in many countries that also have this exclusion, it is possible to protect the use of a compound or a composition for therapeutic purposes in Canada, provided that an appropriate claim format is used.

Published on: 28th Oct 2021

Patent

Patentability

Therapeutic methods

BIG BANG - Transition date for new sequence listing standard

By Raphaëlle GILLET and Sara HAINES, European Patent Attorneys

The new ST.26 standard has been established by the World Intellectual Property Organization (WIPO) for sequence listings. It has the advantage of providing a single format that is acceptable for all international and national procedures.

Published on: 20th Oct 2021

Patent

Antibodies defined by functional features: Beware of sufficiency of disclosure !

By Cécile PUECH, French & European Patent Attorney

While European case law has long since limited the cases in which an antibody can be claimed solely by functional features, U.S. case law has recently moved in the same direction. Following two decisions by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) involving Amgen and Sanofi, it could be argued that the U.S. case law has taken a more drastically limited view on claiming antibody functional features.

Published on: 13th Oct 2021

Patent

Immunotherapy

Patentability of in vitro diagnostic methods in Canada: A favorable evolution!

By Armelle LEONARD and Cécile PUECH, French & European Patent Attorneys

In vitro diagnostic methods are generally characterized by a physical step of detection or quantification of one or more analytes and a step of correlation with a pathology or predisposition. For a long time, the Canadian Intellectual Property Office (CIPO) focused its analysis on the second step, thereby reducing diagnostic methods to a simple mental process (e.g., abstract idea) and inevitably bringing such methods into the category of inventions “excluded from patentability.”

Published on: 6th Oct 2021

Patent

Diagnostic methods

Patentability

How to assess patent quality ? (2/2)

Par Guillaume SCHWAB, IP Intelligence Specialist

Following our previous article presenting the different methods of rating patent quality, this publication outlines the new quality assessment method developed by Regimbeau. This new solution uses strategic information available in patent databases to assist the evaluator with legal, technological, economic, and geo-temporal criteria.

Published on: 8th Sept 2021

Patent

Valuations

More revoked patents in the CRISPR/Cas9 saga: The plot thickens

By Lucile VERNOUX and Nicolas BOUQUIN, French & European Patent Attorneys

It is getting increasingly difficult to keep track of all the developments of the patent battle around the CRISPR-Cas9 technology. In a new turn of the story, patent EP 3 241 902 owned by University of California has been revoked by an Opposition Division of the European Patent Office.

Published on: 14th Jul 2021

Patent

Immunotherapy

Health

European patents with unitary effect | Unified Patent Court: Toward a start in the first half 2022?

By Jean-Robert CALLON DE LAMARCK, Managing Partner

A few days ago (decision of June 23, 2021, published on July 9), the German Constitutional Court rejected two preliminary injunctions which had been filed against a new act of approval voted by Parliament, on the grounds that the plaintiffs did not demonstrate the violation of their fundamental interests.

Published on: 12th Jul 2021

Patent

European and Unitary Patent

Unitary Patent

How to assess patent quality ?

By Guillaume SCHWAB, IP Intelligence Specialist

Financial valuation of intangible assets is a complex process. In the case of patents, before applying one or more method(s) for estimating a value, a qualitative evaluation step is necessary in order to capture patent imperfections. This article focuses on the main methods used to perform this type of assessment to date.

Published on: 9th Jun 2021

Patent

Valuations

EPO : a new Decision facilitates EP patent prosecution for applicants claiming priority in People’s Republic of China

By Thomas MOISAND, Senior Associate, French & European Patent Attorney

The EPO has recently issued a Decision, that will facilitate and streamline the prosecution of European patent applications (Paris Convention applications or Euro-PCT applications) for applicants who claim priority of a first filing made in the Peopleʹs Republic of China.

Published on: 9th Jun 2021

Patent

Brazil: End of the extension of patent validity and special regime for the pharmaceutical sector

By Frédérique FAIVRE PETIT, Managing Partner

On May 7, 2021, the Brazilian Supreme Court put an end to the extension of validity of Brazilian patents for a 10-year period starting from the granting of patents, due to the unconstitutionality of the measure. It has now specified the terms of its application, by a new decision issued on May 12, 2021.

Published on: 19th May 2021

Patent

Cannabis and patents? Focus on current trends

By Lucile Vernoux & Isabelle MARY, French Patent Attorneys

If there is one place where it is easy to find cannabis…it is in our e-mail inbox. Indeed, not a week goes by that we do not receive medical information, regulatory details, alerts, etc. concerning cannabis and its derivatives. But what exactly does it all mean and where does cannabis stand in terms of patent protection?

Published on: 17th May 2021

Patent

Accelerated examination for anti-COVID patent applications

Par Damien MACE, French & European Patent Attorney

With decision n°2021-65, the French Patent Office (INPI), has launched an accelerated examination procedure for patent applications related to an anti-COVID treatment or device, or contributing to the diagnosis or treatment of COVID.

Published on: 10th May 2021

Patent

Health

Guidelines for the new patent opposition procedure in France (5/5): Decision & Appeal

By Stéphanie CELAIRE, Partner and Henri BOURGEOIS, French & European Patent Attorneys

The five-part series dedicated to the publication of the complete guidelines on the patent opposition concludes by addressing the final decision rendered by the opposition committee and outlining options following the opposition proceeding.

Published on: 19th April 2021

Patent

PACTE Law

Opposition

Pandemic and european patent application filings in the biomedical field

By Frédérique FAIVRE PETIT, Managing Partner

If the European Patent Office (EPO) notes a very slight decrease in the total number of European patent applications filed in 2020 (-0.7%), it nevertheless notes for this pandemic year a strong increase in these filings in the biomedical field.

Published on: 8th April 2021

Patent

Biotechnologies

Drugs

Medtech

Guidelines for the new patent opposition proceduree in France (4/5): Oral Phase

By Henri BOURGEOIS, French & European Patent Attorney

The five-part series of articles dedicated to the publication of the complete guidelines on the patent opposition procedure continues. This fourth article of the series is dedicated to the oral phase, which is the culmination of the investigation phase of the opposition.

Published on: 31th March 2021

Patent

Opposition

PACTE Law

Brazil: Duration of patent protection under discussion before the Supreme Court

By Frédérique FAIVRE PETIT, Managing Partner.

The patent system in Brazil which has guaranteed a term of protection of 10 years from the grant of a Brazilian patent in the event that the Brazilian patent office takes more than 10 years to grant the patent is now being challenged before the Brazilian Supreme Court on the grounds that it is unconstitutional. The issue is scheduled to be decided by the Brazilian Supreme Court on April 7, 2021

Published on: 25th March 2021

Patent

Patentability of Antibodies: The new version of European Guidelines finally contains a dedicated section!

By Cécile PUECH, French and European Patent Attorney

The new version of the Guidelines for Examination in the EPO, which came into force on March 1st, contains a new section that at last spells out the approach of the EPO concerning the examination of patent applications relating to antibodies.

Published on: 19th March 2021

Patent

Immunotherapy

Health

Patentability

Guidelines for the new patent opposition procedure in France (3/5): Investigation phase

By Henri BOURGEOIS, French and European Patent Attorney

The five-part series of articles dedicated to the publication of the complete guidelines on the patent opposition procedure continues. This third article is dedicated to the investigation phase, the heart of the opposition procedure.

Published on: 16th March 2021

Patent

Opposition

PACTE Law

Guidelines for the new patent opposition procedure in France (2/5): Filing and admissibility

By Henri BOURGEOIS, French & European Patent Attorney

In January 2021, the French Patent Office published its comprehensive guidelines on the patent opposition procedure. On this occasion, Regimbeau publishes a series of articles. This second article of the series is dedicated to the preliminary stages of the opposition including the opposition filing and subsequent admissibility phase.

Published on: 2nd March 2021

Patent

Opposition

PACTE Law

Guidelines for the new patent opposition procedure in France (1/5): Fundamental principles

By Stéphanie CELAIRE, Partner and Henri BOURGEOIS, French & European Patent Attorneys

In January 2021, the French Patent Office published its comprehensive guidelines on the patent opposition procedure. On this occasion, Regimbeau publishes a series of articles. This first article of the series provides an introduction and general overview of the opposition procedure.

Published on: 18th Feb 2021

Patent

Opposition

PACTE Law

UPC approved by German Parliament - Already two constitutional complaints

By Henri BOURGEOIS, French & European Patent Attorney

Both chambers of German Parliament have once again voted in favour of the act approving the Unified Patent Court, with enough votes to avoid the invalidity ground raised in the constitutional complaint against the first version of the act. This second iteration must now be promulgated. However, two new complaints have already been filed against it.

Published on: 5th Jan 2021

Patent

Unitary Patent

Japanese and French patent offices enter into a PPH agreement

By Jérôme COLLIN, Partner, International Director, French & European Patent Attorney

On November 26, 2020 the heads of the Japanese Patent Office (JPO) and the French Patent Office (INPI) have signed a Patent Prosecution Highway (PPH) agreement.

Published on: 8th Dec 2020

Patent

Disruptive CAR-T therapy is driving a new wave of patenting challenges

By Raphaëlle GILLET and Nicolas BOUQUIN, French & European Patent Attorneys

Discover an extract from the Immunowatch, published by our partner Mabdesign, and which contains an article written by Raphaëlle GILLET and Nicolas BOUQUIN, about CAR-T therapy.

Published on: 4th Dec 2020

Patent

Immunotherapy

PACTE brings major changes in French IP Law

By Henri BOURGEOIS and Jérôme COLLIN, French & European Patent Attorneys

The PACTE law is a set of new French laws implementing the economic reform decided by the French government. PACTE includes several provisions on intellectual property, which result in major changes for patents and trademarks.

Published on: 30th Nov 2020

Patent

Trademark

The CNIPA-EPO pilot: a direct access to efficient and cost-effective patent prosecution in Europe for nationals and residents of P.R. China

By Henri BOURGEOIS, French & European Patent Attorney

The CNIPA-EPO pilot will start on December 1st 2020 and will allow nationals and residents of P.R. China new strategic options as well as substantive cost reductions.

Published on: 9th Nov 2020

Patent

Changes to USPTO Fees Effective October 2

By Bailey Ziegler, US Patent Attorney.

We would like to inform you that fee changes are being implemented by the US Patent and Trademark Office (“USPTO”) and take effect on October 2, 2020. On average, patent fees are increasing by approximately 5%.

Published on: 25th Sept 2020

Patent

Brexit will become a reality on January 1st, 2021

By Evelyne ROUX, Partner.

On January 1st, 2021, the transition period which followed the UK’s decision to leave the EU will end, a priori without any further extension. When deciding your budget, in particular for renewals, remember the measures that will need to be taken to anticipate the effects of BREXIT and the consequences for your intellectual property rights.

Published on: 22th Sept 2020

Patent

Trademark

Designs

Brexit

Copyright

Infringement

COVID-19: New free patent panorama databases are being launched

By Isabelle MARY, Head of the IP Intelligence Department, French Patent Attorney

In the turbulent context of the fight against COVID-19, while patent protection of innovations has been at the heart of controversy, it has also been a source of positive collaboration between research teams. A number of patent information platforms have been created, indexing specific data on the subject and enabling the innovative community to carry out relevant searches in a targeted and structured corpus.

Published on: 19th Aug 2020

Patent

Digital

JUB : Breaking news !

By Stéphanie CELAIRE, Partner and French & European Patent Attorney

Neither Brexit nor Covid-19 seems to have hindered the motivation of the European Commission (EC) to see the project of the Unified Patent Court (UPC) and the Unitary Patent realized.

Published on: 23th Jul 2020

Patent

Unitary Patent

A conflict? A relational difficulty? Think mediation!

Frédérique FAIVRE PETIT, Partner, French Patent Attorney & European Patent Attorney

Are you an entrepreneur, a head of service, a project coordinator? You need to dedicate yourself to the recovery and development of your activity. You do not have enough time available to settle conflicts, disputes or litigations, more or less important, potential or occurring as a part of your activities. You wish to avoid initiating a legal action.

Published on: 22th Jun 2020

Patent

Arbitration and Mediation

G3/19: Products exclusively obtained by an essentially biological method finally excluded from patentability

Philippe BESSIERE, French & European Patent Attorney

G3/19 concerns a referral to the Enlarged Board of Appeal by the President of the European Patent Office (EPO) following decision T1063/18 (Pepper) by a Board of Appeal which concluded that Rule 28 (2) EPC, prohibiting the grant of a European patent for plants obtained exclusively by an essentially biological process, was in conflict with the previous interpretation of Article 53 (c) EPC by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13 (Brocoli / Tomato).

Published on: 3rd Jun 2020

Patent

Patentability of Biological Material

Plant Breeding

EPO extends possibility of oral proceedings by videoconference to opposition proceedings

By Jerôme COLLIN, Partner, French & European Patent Attorney.

It has been possible to hold oral proceedings by videoconference at the EPO since 1998. This has opened an interesting possibility for applicants and their representatives, allowing applicants to attend the oral proceedings without having to travel to the premises of the EPO. Regimbeau has been using this possibility routinely for years.

Published on: 30th April 2020

Patent

Digital

Unified Patent Court - the German federal Constitutional court has finally issued its decision regarding the ratification process in Germany

By Sylvain THIVILLIER Partner and French & European Patent Attorney and Henri BOURGEOIS, French & European Patent Attorney.

On Friday March 20, 2020, the German Federal Constitutional Court issued its decision relating to the appeal filed against the German Act of Approval of the Unified Patent Court (“UPC”), and ruled that the vote at the German Parliament in favour of the ratification was not valid.

Published on: 23th March 2020

Patent

European and Unitary Patent

Unitary Patent

PACTE Law: Opposition to patents

By Stéphanie CELAIRE, Partner and French & European Patent Attorney, and Henri BOURGEOIS, French & European Patent Attorney.

The 2019 PACTE Law will deeply modify several fundamental aspects of the French patent law. One of the flagship measures in this area is undoubtedly the creation of patent opposition proceedings before the French IP Office, with the right to appeal before the Paris Court of Appeal.

Published on: 17th March 2020

Patent

Opposition

PACTE Law

PACTE LAW: changes relating to Utility Certificates and establishment of a provisional patent application

By Stéphanie CELAIRE, Partner

The PACTE Law of 2019 will result in substantial changes to several fundamental aspects of French patent law. This law extends the term of protection conferred by utility certificates and establishes a provisional patent application. When developing your industrial property strategy, these provisions should be considered as a package deal along with the examination of inventive step of patent applications and new opposition proceedings.

Published on: 10th Feb 2020

Patent

Opposition

PACTE Law

PACTE law: changes relating to examination of French patent applications

By Henri BOURGEOIS, French & European Patent Attorney.

The PACTE law of 2019 will result in substantial changes to several fundamental aspects of French patent law. Concerning the examination of French patent applications, in addition to the key measure that is examination of inventive step, several existing grounds of rejection are being reinforced and a new ground of rejection for extension beyond the content of the application as-filed is being introduced. Provisions concerning national security are also modified.

Published on: 4th Feb 2020

Patent

PACTE Law

AI Inventors: the European Patent Office sets the record straight in the DABUS decision.

By Matthieu OBJOIS, Senior Associate, and Lucas ROBIN, Patent Engineer.

After a long-awaited oral procedure, the EPO logically indicated that only natural persons could be designated as inventors in a European patent application, even if artificial intelligence algorithms were involved.

Published on: 4th Feb 2020

Patent

AI

The NEURIM approach may be restricted or even dismissed. Once again, an advocate general recommends a reversal of jurisprudence. What will the Court's position ultimately be?

By Anne BOUTARIC, Partner.

The NEURIM decision opened the possibility to grant SPC for subsequent therapeutic indications of a known active ingredient. This decision, comprising indefinite concepts subject to interpretation, has undermined the objective that Regulation No 469/2009 is uniformly implemented within the European Union. Three requests for a preliminary ruling have since been lodged at the Court of Justice of the European Union leading to the Abraxis judgment delivered on March 21, 2019 and to the Santen case, C-673/18, in progress, in which the Advocate General delivered its opinion on January 23, 2020. The third further pending referral is the Novartis case, C-354/19.

Published on: 28th Jan 2020

Patent

SPC

Health

CRISPR/CAS9 failed to edit EPO priority entitlement case law

By Nicolas BOUQUIN, French & European Patent Attorney and Lucile VERNOUX French & European Patent Attorney

In a new twist in the CRISPR/Cas9 saga, European patent EP 2 771 468 was revoked in appeal on 16 January 2020 (T 0844/18). This patent covers an important aspect of the technology and its use in eukaryotes.

Published on: 28th Jan 2020

Patent

Health

Opinion on the patentability of your invention by the 5 IP5 Offices. It's now possible at the international stage!

By Soizic GUINDEUIL, Senior Associate.

The IP5 offices have launched a collaborative search and examination pilot project to provide a written opinion on the patentability of an invention by these five offices, as early as the international stage, and thus without waiting for the initiation of national phase examination procedures.

Published on: 22th May 2019

Patent

Patents

Patentability

Breaking News : the question of the patentability of plants/animals obtained exclusively by means of an essentially biological process has once again been referred o the EPO's enlarged board of appeal!

By Gabrielle FAURE-ANDRE and Philippe BESSIERE, French and European Patent Attorneys.

It is now official: the President of the European Patent Office (EPO), António Campinos, has done what he said he would do… in asking, once again, the EPO’s Enlarged Board of Appeal to rule on the patentability exclusion introduced into new Rule 28(2) EPC.

Published on: 19th April 2019

Patent

Patentability of Biological Material

FICPI Position on Patent Law Harmonisation

Article co-authored by Jérôme COLLIN, Partner.

FICPI was invited to a recent B+ Sub-Group meeting on 26 September 2018 to present its position on the three main patent law harmonisation topics currently under consideration: grace period, prior user rights, and conflicting applications.
In June, 2018 FICPI passed a resolution on conflicting applications and adopted an extensive position paper on these key harmonisation topics.
This article provides a brief background to FICPI’s consideration of these topics and summarises the positions reached.

Published on: 18th March 2019

Patent

What impact will a BREXIT without a withdrawal agreement as of March 30, 2019, have on your IP assets, in particular patents, trademarks & designs, domain names?

By Christian TEXIER, Frédérique FAIVRE PETIT, Sylvain THIVILLIER, Evelyne ROUX, Partners, Cécile PUECH, Senior Associate and Anne CHANTELOUP, Intellectual Property Lawyer.

UK MPs overwhelmingly rejected the negotiated exit agreement of the EU by 432 votes against 202 on Tuesday January 15, 2019.

Published on: 21th Jan 2019

Patent

Trademark

Designs

Domain Name

Brexit

PPH: all possibilities are not equal

By Cécile PUECH, Senior Associate.

Over time, accelerated examination programs under the PPH (Patent Prosecution Highway), have proliferated. But does this simplify the task of applicants when a first office considers certain claims to be acceptable? In addition to limitations associated with the fact that an accelerated examination under the PPH may only be requested prior to the start of the examination, it appears that the benefit of filing a PPH request varies according to the applicant’s expectations, the country concerned and sometimes even the technical field of the invention… Rather than systematically filing PPH requests, a case-by-case analysis seems to be more appropriate for optimizing the examination of patent applications.

Published on: 10th Jan 2019

Patent

35 USC § 101: Further clarification of patent subject-matter eligibility.

By Sara HAINES, US Patent Agent.

Two recently issued USPTO memorandums further clarify aspects of patent subject-matter eligibility under 35 USC § 101. The Vanda memo1 specifies methods of treatment that should be considered to be patent eligible under step 2A of the Alice/Mayo test2 thereby avoiding any further analysis under step 2B, while the Berkheimer memo3 states that examiners must provide substantiated evidence when additional claim elements are considered to represent well-understood, routine, conventional activity in support of 35 USC § 101 rejections under step 2B.

Published on: 30th Oct 2018

Patent

Patentability of Biological Material

Biomarkers

European Patent Office : Patentability of inventions involving Artificial Intelligence

By Matthieu OBJOIS, Senior Associate.

By decision of the President of the European Patent Office (EPO) dated 25 July 2018 and pursuant to Article 10(2) EPC, the Guidelines for Examination have been amended in accordance with the policy of the EPO which provides for their revision on an annual basis. These Guidelines indicate the practices and procedures to be followed by both Applicants and Examiners, and are a useful tool for monitoring the evolution of EPO policy.

Published on: 4th Oct 2018

Patent

European and Unitary Patent

AI

Protection of Trade Secrets : Law No. 2018-670 of July 30th, 2018

By Christian Texier, Partner.

Law No. 2018-670 of July 30th on the “Protection of Trade Secrets” was published in the Official Gazette, No. 0174 on July 31st 2018.

Published on: 25th Sept 2018

Patent

Patents

European and Unitary Patent

Proposal from the European parliament and council on copyright for a directive in the single digital market. Rejection or substantive debate coming?

By Christian TEXIER, Partner.

It has been widely reported in the press in recent weeks that a proposal for a European Copyright Directive was rejected by the European Parliament on July 5th, 2018. What does this mean exactly?

Published on: 25th Sept 2018

Patent

Patents

European and Unitary Patent

Copyright

Disclaimers at the EPO: an update with decision G1/16

By Jérôme COLLIN, Partner

On December 18, 2017, the Enlarged Board of Appeal published decision G1/16 on the allowability of disclaimers. This decision clarifies the requirements for allowing a so-called ‘undisclosed’ disclaimer at the European Patent Office. This article will provide a reminder of the background behind decision G/16, present the content of the decision and draw conclusions on the practice of disclaimers at the EPO.

Published on: 24th Jul 2018

Patent

Patents

European and Unitary Patent

Validation of European patents in Cambodge

An agreement allowing the validation of European patents for Cambodia entered into force on March 1, 2018, allowing inventors and companies filing an application for European patent, to ask for Cambodia validation.

Published on: 19th March 2018

Patent

European and Unitary Patent

Legislation

European patent

Draft French standard (NF X50-276) to facilitate the electronic exchange of data relating to intellectual property rights is subject to a public enquiry

By Marc LEVIEILS, Partner

Under AFNOR’s authority and in the framework of the Innovation Management Commission , the Working Group CN INNOV GT5 (moderated by Marc LEVIEILS) has prepared a draft French Standard (NF X50-276) to facilitate the electronic exchange of data relating to intellectual property rights.

Published on: 6th Sept 2017

Patent

Trademark

Standard

Data

Some news from this summer regarding the agreement on the unitary patent court

After Estonia on August 1st, 2017, Lithuania has ratified the agreement on the unitary patent court on August 24...

Published on: 5th Sept 2017

Patent

European and Unitary Patent

Unitary Patent

Unified Patent Court

The European Patent Office has Published the “Unitary Patent Guide”

By Stéphanie CELAIRE, Partner

The European Patent Office (EPO) has published the 1st edition of the "Unitary Patent Guide." This guide outlines the texts concerning applications for European patents with unitary effect, annual fees, entries in the Register for Unitary Patent Protection, languages and remedies in the event that the unitary effect is rejected. It also details the practical means by which these procedures will be handled by the EPO on the basis of the rules relating to Unitary Patent Protection (UPR).

Published on: 23th Aug 2017

Patent

European and Unitary Patent

Unitary Patent

Unified Patent Court

Declaration of “Sensitive” Inventions with the DGA: Clarified Procedure

by Julie TOUEG, European and French Patent Attorney

The obligation to declare patent applications for “sensitive” inventions is not new. The practical arrangements have recently been indicated in a Decree and an Order, and whose practical implications for applicants are summarized below.

Published on: 9th Aug 2017

Patent

Defense Security - DGA

Revision of the Patent Examination Guidelines in China

by Dan SHI, Chinese Patent Attorney

The State Intellectual Property Office (SIPO) of China recently issued Decision of the Revision to “Guidelines of Patent Examination” (“the Guidelines”). The Revision to the Guidelines (“the Revision”) will take effect from 1 April 2017.

Published on: 29th March 2017

Patent

Legislation

Unified Patent Court: Ratification by Italy, entry into force for the end of 2017 ?

by Sylvain THIVILLIER, Head of the Munich Office

On February 10, 2017, Italy became the 12th member state ratifying the International Agreement on a Unified Patent Court (UPC). Italy, who had initially expressed reservations regarding the project of a new European system for patents, composed of the Unitary Patent (UP) and the Unified Patent Court (UPC), now gives a strong message in ratifying the UPC agreement and we hope that this is an optimistic sign for a rapid entry into force of the UP and UPC

Published on: 14th Feb 2017

Patent

European and Unitary Patent

Unified Patent Court

Unitary Patent

European Patents soon to be valid in Cambodia!

by Julie TOUEG, French Patent Attorney

Following last year’s accession to the PCT (effective as of 8th December 2016), on 23rd January 2017 Cambodia signed an agreement with the EPO to extend the validity of European patents to Cambodia, upon request of the applicant.

Published on: 6th Feb 2017

Patent

European and Unitary Patent

Modifications to the Directives of the European Patent Office Practical Exam: Impact on Assignment Recordation

by Jérôme BRAQUEHAIS, Head of the Recordal Department

As of 1st November 2016, the European Patent Office (EPO) Examination Directive that includes the acceptance conditions for recording an assignment underwent changes significantly altering the recordal procedure of an assignment at the EPO.

Published on: 2nd Feb 2017

Patent

Book: Unitary Patent and the Unified Patent Court (French only)

The Patent system in Europe will undergo major changes with the upcoming entry into force of the agreements establishing the Unified Patent Court and the Unitary Patent. Download the outline (french only) or order the book on the link below.

Published on: 24th Jan 2017

Patent

European and Unitary Patent

Unified Patent Court

Unitary Patent

Legislation

For more information or to order the book

The European Patent Office Clarifies the Standard for Partial Priority

by Jérôme COLLIN, Partner

In case G1/15 the Enlarged Board of Appeals of the European Patent Office has just released the order of its decision as follows: “Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic “OR”-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect.”

Published on: 1st Dec 2016

Patent

European and Unitary Patent

Pitfalls that US origin cases experience in the EPO

By Sylvain THIVILLIER, head of Munich Office and Christine McCARTHY, Partner, BARNES & THORNBURG LLP

Dual protection of patentable innovations in the US and Europe has long strengthened the relationship between those economic markets and affected competition therein. However, patent applicants beginning their pursuit of protection with US origin applications at the United States Patent and Trademark Office (USPTO) often face significant but often avoidable challenges in protecting their innovations in the European Patent Office (EPO).

Published on: 18th Oct 2016

Patent

US Patent

Comparative law

Modification of the Terms for Refunding the Examination Fee of a European Patent Application

by Julie TOUEG, IP Attorney

A decision of the Administrative Council of the European Patent Organisation relating to the refund of the examination fee, of 29 June 2016, amends Article 11 of the Rules Relating to Fees (RRF).

Published on: 26th Aug 2016

Patent

European and Unitary Patent

First Remarks as to the Implications on Intellectual Property Following the BREXIT vote of 24 June

This morning, Friday 24 June 2016, the British referendum result in favour of BREXIT was announced, meaning the United Kingdom has voted to leave of the European Union. What will be the initial consequences in the intellectual property field?

Published on: 24th Jun 2016

Patent

Contracts

Trademark

Designs

European and Unitary Patent

European Union trademark

Unified Patent Court: No Opt-Out Fee!

by Sylvain THIVILLIER, Head of the Munich Office

On 24 and 25 February 2016, the Preparatory Committee for the UPC met and agreed on a text stating the “Rules on Court fees and recoverable costs” linked to the UPC, in which it should be noted that the official fee for opting out of the exclusive jurisdiction of the UPC has been removed.

Published on: 2nd March 2016

Patent

European and Unitary Patent

Unified Patent Court

Legislation

Unitary Patent

Is 2016 the final stretch before the entry in force of the Unitary Patent and the Unified Patent Court?

By Christian TEXIER, Partner, and Sylvain THIVILLIER, Head of the Munich Office

The reference texts defining the Unitary Patent and the Unified Patent Court allow us already to identify certain general principles for these systems. During the last 2 years, the Preparatory Committee of the UPC has done tremendous work to draft the rules of implementation for these new systems, rules which should be adopted in the following (next few?) months.

Published on: 9th Feb 2016

Patent

European and Unitary Patent

Unified Patent Court

Unitary Patent

Advertising and Alcohol: The Supreme Court Acknowledges that the Impression of Pleasure is Allowed!

by Martine BLOCH-WEILL, Partner

We informed you last year of the judgment of the Versailles Court of Appeal (Ch 3, 3 April 2014 ANPAA/CIVB) which claimed that appearing “grumpy” was not imposed by the EVIN Law (see article). Hearing this case again the Supreme Court made a new judgement on 1st July 2015, at the end of which it reviews the strict position issued in its first judgement of 23rd February 2012.

Published on: 11th Dec 2015

Patent

Trademark

Designs

Advertising

Wine and Spirits

After Morocco, it is now Possible to Validate a European Patent in Moldova!

by Sylvain THIVILLIER, European and French Patent Attorney

The opening of the European Patent to non-member states - which officially started on 1 March 2015 with the entry into force of the validation agreement concluded between the European Patent Office (EPO) and Morocco – is continuing. A new validation agreement, this time with the Republic of Moldova (MD) entered into force on 1 November 2015.

Published on: 13th Nov 2015

Patent

Advertising and Alcohol: Trial Judges Declare There is No Need to Get Cranky!

by Martine BLOCH-WEILL, Partner

The Versailles Court of Appeal (Ch 3, 3 April 2014 ANPAA/CIVB) upon referral after appeal (Cass, 1st civ, 23 February 2012) rejected the strict interpretation made by the Supreme Court as to the provisions in the Evin Law relating to advertising requirements for alcoholic beverages.

Published on: 30th Jul 2015

Patent

Trademark

Designs

Advertising

Wine and Spirits

Human Embryonic Stem Cell Patentability in Europe and the United States

By Gabrielle FAURE-ANDRE, French and European Patent Attorney

Today, the position of the European Patent Office (EPO) as to the patentability of human embryonic stem cells (hESCs) is clear. A European patent can only protect an invention involving such cells if, at the "relevant date", the cells could be obtained by means other than the destruction of a human embryo.

Published on: 25th Jun 2015

Patent

Patentability

Patentability of Biological Material

How to Validate a European Patent in Morocco?

by Sylvain THIVILLIER, European and French Patent Attorney

As indicated in our 10 March 2015 brief, the President of the European Patent Office (EPO) and the Moroccan Minister of Industry signed in December 2010 an agreement relating to the validation of European patents. This agreement entered into force on 1 March 2015.

Published on: 21th April 2015

Patent

Amendments Before the European Patent Office

by Sylvain THIVILLIER, European and French Patent Attorney

The possibility of amending a patent application has been enshrined in the European Patent Convention (EPC) as a right given to any applicant. The EPC however also provides safeguards to preserve the rights of third parties. This paper aims at explaining how the safeguard provided by Article 123(2) EPC is applied at the European Patent Office (EPO).

Published on: 19th March 2015

Patent

European and Unitary Patent

Validation of European Patents in Morocco

By Christian TEXIER, Partner

For European and International (PCT) patent applications filed on or after 1 March 2015 the option to validate in Morocco will be available, thus obtaining protection in that territory.

Published on: 12th March 2015

Patent

European and Unitary Patent

Legislation

The Unpatentability of a Dosage Claim is no Longer a French Exception

By Anne BOGARD BOUTARIC, Partner

There is no doubt that substances or compounds used in medical treatments are explicitly recognised as meeting the criterion for patentability.

Published on: 25th Feb 2015

Patent

Patentability

Pharmacy

New tools to get your patents issued faster

By Cécile PUECH, European and French Patent Attorney

Recently, we have seen a growing number of tools that allow French and other European applicants to speed up the issuing procedure for some of their patents in various countries; this is particularly due to the development of PPH (Patent Prosecution Highway) programmes, which the European Patent Office (EPO) is involved in.

Published on: 9th Feb 2015

Patent

Legislation

Accelerated Examination

The US patent system (still) requires more than the laws of Nature…

By Frédérique FAIVRE PETIT, Partner

US patent law is probably one of the most lenient in the world: it provides for no exclusion in principle and requires solely that an invention must be, as a first condition, useful (within the meaning of 35 USC 101) before it is examined from the viewpoint of "conventional" patentability criteria such as novelty and inventive step.

Published on: 28th Jul 2014

Patent

US Patent

Patentability of Biological Material

Are Your Industrial Property Rights Protected in French Polynesia?

By Christian TEXIER, Partner and Nicolas DEMILLY, French and European Trademark and Design Attorney

The organic law no. 2004-192 of 27 February 2004 laying down the autonomous status of French Polynesia transferred the authority in all Industrial Property matters to this territory.

Published on: 7th Jul 2014

Patent

Trademark

Designs

Legislation

Diagnostic Method : Confirmation in the United States of the difficulty in obtaining protection

By Frédérique FAIVRE PETIT, Partner

On 30 October 2013, the District Court for the Northern District of California (DCNDC) invalidated a patent relating to a diagnostic method, thus confirming the difficulty in protecting this type of invention in the United States.

Published on: 13th Dec 2013

Patent

Diagnostic methods

The product covered by an SPC - a definition on a case-by-case basis?

By Anne BOUTARIC, Senior Associate

By only reading Council Regulation (EC) No. 1768/92, the definition of a product eligible to be covered by an SPC may seem clear. However, the scope of this definition is still being debated, and the MEDEVA decision requires more preliminary ruling.

Published on: 3rd Dec 2013

Patent

SPC

Legislation

Filing of Divisional Applications : Amendement of the implementing regulations to the Europaen Patent Convention

By Frédérique DURIEUX, French and European Patent Attorney

The Administrative Council of the European Patent Office has just adopted an amendment of the requirements for the filing of divisional applications.

Published on: 5th Nov 2013

Patent

European and Unitary Patent

Legislation

Prescription of an action in patent invalidation

By Francis AHNER, Partner

Up to the entry into force of new Article 2224 of the French “Code Civil”, it was generally accepted that an action for invalidation of a patent was subject to the thirty year liability period of common law.

Published on: 16th Oct 2013

Patent

Legislation

MYRIAD: Over 30 years of practice is being revisited by the United States Supreme Court:Isolated DNA is now longer patentable! Hard times for United States protected biotechnology inventions

Frédérique FAIVRE PETIT, Partner

The Biotechnology industry has been decidedly mistreated by recent decisions in the US which are disrupting over 30 years of practice concerning the protection of inventions relating to or involving genes. This is creating a great uncertainty about the value of corresponding US patents.

Published on: 1st Jul 2013

Patent

US Patent

Bioethics

Biotechnologies

Patentability of Biological Material

Diagnostic methods

Biomarkers

Patentability of Human Embryonic Stem Cell Lines

By Gabrielle FAURE-ANDRE, French Patent Attorney

While the Brüstle vs. Greenpeace decision does not aim to influence the European Patent Office (EPO), we nevertheless anticipated that it may well result in the hardening of the EPO’s position concerning the patentability of human embryonic stem cell lines...

Published on: 14th Jun 2013

Patent

Bioethics

Biotechnologies

Patentability of Biological Material

Legislation

Third Party Observations: a weapon to integrate in your IP strategy ?

By Stéphanie CELAIRE, Senior Associate

As rare as it is old, having been established in the French IP Code in 1968, the third-party observation system is currently experiencing a revival, thanks, in part, to a push by various IP offices to try and regenerate interest in the system.

Published on: 15th May 2013

Patent

Third party Observation

Comparative law

Unitary Patent and Unified Patent Court : Europe adopts two new tools for innovation

By Christian TEXIER, Partner

The Council of the European Union adopted Monday December 17 2012, two regulations relating to the creation of unitary patent protection and its translation arrangements.

Published on: 18th Dec 2012

Patent

European and Unitary Patent

Unified Patent Court

Translation, Language

Myriad : Second confirmation of patentability of isolated DNA. Will this be the final chapter?

By Frédérique FAIVRE PETIT, Partner

For the third time, an American Court has decided on patentability of «genes», confirming the previous decision, which reversed the first one…. But let us start from the beginning.

Published on: 19th Sept 2012

Patent

Patentability of Biological Material

Are patents and diagnostic methods compatible? Europe - United States - Canada - Brazil - India - China - Japan - Korea - Australia

By FAIVRE PETIT Frédérique, Partner

Whereas one might think ideally medicine should one day be able to diagnose everything, this has not been achieved yet, although... The pharmaceutical and diagnosis industries...

Published on: 2nd Jul 2012

Patent

Diagnostic methods

Comparative law

Pharmacy

Biomarkers

Patentability of Biological Material

Request for Limitation of a Patent: the Court of Cassation pronounces an eagerly-awaited decision

By Franck TETAZ, Partner

the Court dismissed the appeal lodged by TEISSEIRE against the judgment of the Paris Court of Appeal rejecting its request for annulment of the decision of the Director of INPI allowing ROUTIN a limitation of its patent relating to «sugar-free syrup».

Published on: 7th Jun 2012

Patent

Jurisprudence

Limitation

MAYO V. PROMETHEUS

By Franck TETAZ, Partner

How the Supreme Court of the United States of America has made a distinction between a patentable invention and a scientific discovery, thus creating new difficulties in protecting inventions in the area of diagnostic research in this country.

Published on: 16th May 2012

Patent

Patentability

Diagnostic methods

Pharmacy

Patentability of Biological Material

Biomarkers

Patentability of embryonic stem cells - after the European Patent Office, the European Court of Justice gives its opinion

By Gabrielle FAURE-ANDRE, IP engineer

Pursuant to Article 6(2)(c) of Directive 98/44/EC of the European Patent Convention (EPC), the use of «human embryos» for industrial or commercial purposes is not patentable.

Published on: 14th Feb 2012

Patent

Patentability of Biological Material

Does a priority right exist without experimental results?

By Nicolas BOUQUIN, European Patent Attorney

In the field of biotechnologies, inventions are routinely disclosed in patent applications before any result has been obtained.

Published on: 6th Feb 2012

Patent

Priority right, First filing

Experimental results

The French Supreme Court and the Secrets of the London Agreement

By Jean-Robert CALLON DE LAMARCK, Partner

Commentary on the Judgement of the French Court of Cassation dated 2 November 2011

Published on: 2nd Nov 2011

Patent

European and Unitary Patent

Translation, Language

The United States are changing their patent rules

By Marie AUDREN and Barbara CASADEWALL, European and French Patent Attorneys

After a decade of discussions for reforming patent legislation, the United-States finally passed the Leahy-Smith America Invents Act. The bill was signed by President Obama on September 16, 2011.

Published on: 1st Sept 2011

Patent

US Patent

Legislation

G2/07 - How EPO's Enlarged Board of Appeal interpretes the expression "essentially biological process" under A.53(B) EPC

By Franck TETAZ, Partner, and Lucile VERNOUX, European Patent Attorney, Cabinet REGIMBEAU

The question of the patentability of plants was a struggle of the last century.

Published on: 14th Jun 2011

Patent

Plant Breeding

Patentability

The European Patent is doing well… and the draft of the “Unitary” Patent is going forward…

By Frédérique FAIVRE PETIT, Partner, European and French Patent Attorney - Cabinet REGIMBEAU

In 2010, the number of European patent applications reached the highest level in the Office’s 34 year history, with some 235 000 filings representing an 11% increase on patent applications filed in 2009.

Published on: 27th April 2011

Patent

European and Unitary Patent

Procedure to limit the scope of a patent before the INPI

By Francis AHNER, Partner, French & European Patent Attorney, Cabinet REGIMBEAU

The latest version of the European Patent Convention (EPC) has provided patent owners with the opportunity to narrow the protection conferred by their claims after grant of the patent.

Published on: 15th April 2011

Patent

Limitation

Notice on Decision G2/08

By Barbara Casadewall and Isabelle Mendelsohn, European and French Patent Attorneys - Cabinet REGIMBEAU

Decision G 2/08 issued by the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) on 19 February 2010 was particularly awaited within the pharmaceutical field.

Published on: 3rd Jan 2011

Published on: 19th May 2010

Published on: 8th April 2010

Published on: 23th March 2010

Published on: 1st March 2010

Published on: 22th Oct 2009

Published on: 4th Sept 2009

Directive 2004/48/CE of 29 April 2004 on the enforcement of Intellectual Property rights : implementation in France - definitive bill adopted by the Parliament

The measures are facilitated in order to prevent the continuing alleged infringement of intellectual property rights before obtaining a decision on the merits, such as an interlocutory injunction.

Published on: 7th Jul 2009

Published on: 6th Jan 2009

Published on: 1st Feb 2008

Patent

Inventorship

Case G 2/07 : Coming soon, an interpretation of the expression « Essentially biological process» by the EPO's Enlarged Board of Appeal

By Franck TETAZ, Partner, Cabinet REGIMBEAU And Lucile VERNOUX, IP Engineer, Cabinet REGIMBEAU

Decision G 1/98, later taken up in the “biotechnologies” directive, validated the patentability of plants produced through genetic engineering and their preparation processes when they are not limited....

Published on: 1st Feb 2008

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