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Demystifying EPO examination reports

confusionMuch like a nurse attempting to decipher a doctor’s scrawled prescription note for their patient, a large proportion of a European patent attorney’s working life seems to involve interpreting examination reports for their clients, and in particular explaining the various comments and objections raised by the EPO examiners. As such, we thought it might be useful to summarise various objections that Applicants might see in Communications from the EPO, and what they really mean. (more…)

‘Expectation of Success’ as Part of Inventive Step Analysis

MyriadThis is the second in a series of articles on biotech inventions (the first article can be found here). The present article discusses ‘expectation of success’ which is often considered as part of assessment of inventive step for biotech inventions and also in other life science areas such as pharmaceuticals. Whilst this article is written from the perspective of how the test is used at the European Patent Office (EPO) and in the UK Courts, ‘expectation of success’ is also applicable in other territories. (more…)

Inventive step at the UK IPO – Report of CIPA seminar

cipalogoIt is one thing to argue against an inventive step objection. It is quite another thing to construct the inventive step objection in the first place.

That was the premise behind this seminar, in which two experienced examiners from the UK IPO, Stuart Purdy and Andrew Hole, offered the opportunity for attorneys to see patent examination from an examiner’s perspective, in a friendly and accessible manner. (more…)

Amazon’s “Gift order” patent: The EPO Looks a gift patent in the mouth

giftIt has been several weeks since we’ve seen a good bout in the Apple vs Samsung patent war. Fortunately, this cavernous gap in our lives has been filled, at least for a little while, by Amazon’s escapades before the EPO’s Opposition Division this week.

The case is a long one (If you’ve a lot of time to spare, you can check out the EPO register entry here), so IPcopy is here to give you a whistle-stop tour.


Bonza Aussie Rules

Strewth! A patents act amendment?

Strewth! A patents act amendment?

Following in the footsteps of many other patent offices around the world, Australia has put in place an amendment to the Patents Act 1990 that will come into force on 15 April 2013. In a perceived effort to ‘raise the bar’ of patentability – a catchy but meaningless phrase coined by the European Patent Office a few years ago – a number of new standards have been introduced into the statute. The new measures include a more rigorous approach to examination of inventive step that increases the scope for IPO Examiners to consider obviousness from the perspective of a non-Australian skilled person. There is also a significant reduction in the term for ensuring the application proceeds to acceptance, from 21 months from issuance of the first Examination Report down to a fleeting12 months. The expected effect of these measures is to make it harder to get the broad scope of patent protection that is currently expected by many applicants in Australia.

The advice issuing from many Australian patent attorney firms is for applicants who have pending applications in Australia to request examination before 15 April 2013 in order to benefit from the current more lenient standards. Presumably, those with pending International patent applications could also enter the Australian National Phase early as well if Australia is seen as a key market.