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at AusBiotech’s International BioFest
Opponents may still file a response to the patentee’s
reply but there is no longer a deadline. Since the
opposition division can prepare the next action as
soon as the patentee’s reply is received, we would
advise that opponents file any further observations as
soon as possible.
At least six months advanced notice of oral proceedings
Parties will be given a deadline of two months (rather
than one month) before oral proceedings to file any
further written submissions.
The EPO is moving towards disregarding facts or
evidence not submitted by parties in due time,
unless they are of prima facie relevance. We strongly
recommend that parties present all documents,
requests and data at the earliest opportunity.
EPO tightens up appeal proceedings
The EPO boards of appeal have also taken steps
to increase the efficiency and reduce the length of
appeal proceedings. The EPO wants a comprehensive
submission from each party at the outset.
It is not uncommon to find the EPO boards of appeal
restrictive in the admissibility of new documents,
requests and data submitted during the appeal. Often,
anything that is not of prima facie relevance will be
disregarded as late-filed. A board of appeal may not
allow a patentee to file an amended claim set if the
board considers that it could have been filed during
the opposition procedure. Therefore, we recommend
that patentees ensure that auxiliary request claim sets
are placed on file during the opposition.
The effect of Brexit on the unitary patent (UP) and the
Unified Patent Court (UPC)
With the United Kingdom having voted to leave the
European Union (EU), the UPC and UP project is
inevitably delayed, and may even be in doubt. The
United Kingdom was an integral participant, and its
ratification of the UPC Agreement was necessary for
the commencement of the UPC provisional application
period and full commencement.
There are three possible outcomes, which are as follows:
1. The United Kingdom does not ratify the UPC
Agreement while it remains in the EU, and then
leaves the EU.
This seems to be a likely scenario. In this case,
the remaining UP/UPC participating member
states will have to revise the UPC Agreement and
Protocol. This outcome means delay, probably until
sometime after the United Kingdom leaves the EU.
It may also mean the end of the project if it is felt to
be unattractive without the United Kingdom.
2. The United Kingdom ratifies the UPC Agreement,
then leaves the EU and the UP/UPC project.
Politically, this seems unlikely because it requires
the United Kingdom to ratify essentially an EU
treaty when it has voted to leave the EU. It will
also create problems with UPs post actual Brexit
(their scope would suddenly reduce) and any UPC
judgements/orders that affect the United Kingdom.
3. The United Kingdom negotiates continued
participation in the UP/UPC project, despite
leaving the EU.
It is unclear whether this is legally possible. In
addition, because the UPC Agreement provides
for supremacy of EU law, this also looks politically
tricky. It would also create new complications
since it ought to open the door to other non-
EU (but European Economic Area or European
Free Trade Association) states such as Norway,
Switzerland and Iceland, which have not been
allowed to participate so far. This outcome also
It is worth emphasising that Brexit does not change
United Kingdom national rights—or right of
representation of United Kingdom–based European
patent attorneys—under the European Patent
Brexit will also not affect the EPC because it is a treaty
separate from the EU. The United Kingdom will continue
to be a member of the European patent system, and
United Kingdom–based European attorneys will continue
to act in the usual way before the EPO. Patent protection
in the United Kingdom will continue to be available via
the EPO by validating granted European patents in the
United Kingdom after grant.
The EPC still represents good value for money for
obtaining patent protection in European countries with
up to 42 countries represented.
Charles Harding will be speaking at
the 17th International Biotechnology
Symposium (IBS 2016).
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