Williams Powell

British and European Patent and Trade Mark Attorneys

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In a recent UK opposition decision.  Brewdog have been denied trade mark registration for BREWDOG DOGHOUSE for brewing services and crucially, hotel accommodation services.  Crucial because Doghouse is the name of the brand’s hotel in the US and according to many news reports, UK hotels are planned.

Brewdog filed a UK trade mark application for BREWDOG DOGHOUSE which was then opposed by Doghouse Distillery Limited on the basis of its earlier registration for:


The Hearing Officer concluded that the marks were at least similar to a medium degree and that some of the goods and services applied for by Brewdog were similar and so there would be a likelihood of confusion.  As a result, Brewdog have had their application limited, and have been ordered to pay Doghouse Distillery costs of £328.  Brewdog can appeal the decision and this seems likely given how crucial the name appears to be to their brand expansion.

Brand owners should consider their trade mark strategy in all countries of interest prior to launch.  Much of the evidence submitted by Brewdog relied on their use of the name pre-dating Doghouse Distillery’s trade mark, however they neither opposed Doghouse Distillery’s application, nor applied to cancel the registration (yet).  Had they applied for trade mark protection before their claimed first use date in October 2015, it would have pre-dated Doghouse Distillery’s trade mark which was not filed until August 2016.  There are still things Brewdog can do to try and clear the way for their planned use of Doghouse for a hotel in the UK but not without further headache and cost. 


The United Kingdom's Intellectual Property Minister Sam Gyimah announced on World IP day, 26 April 2018, the ratification by the UK of the Unified Patent Court (UPC) Agreement. The UPC agreement also implements the Unitary Patent, a single EU Patent that will be available to applicants via the European Patent Office. The UPC and Unified Patent offer many advantages to patent holders including reduction in translation and renewal costs and simplified and streamlined litigation.

Alexander Ramsay of Sweden, who chairs the UPC Preparatory Committee, is reported in the Financial Times to have said:

Some of the wording of the agreement will have to be amended after the UK leaves the EU but I would very much like Britain to participate in the UPC in the long term. The whole of Europe will benefit from the system having the broadest possible geographical coverage.

The UK is the 16th country to ratify the UPC Agreement, the others being Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, and Sweden.   As the UK, France, Germany and 10 other countries must have ratified the Agreement for it to enter into force, only Germany’s ratification is now required.  The Agreement will enter into force on the first day of the fourth month after Germany deposits its instrument of ratification.

Germany’s completion of the procedure is currently on hold due to a constitutional complaint that is expected to be heard by its courts later in 2018.  Other countries, such as Bulgaria, Latvia, Lithuania and Slovenia, are close to completing the procedure.  If the German courts dismiss the complaint by the summer, it is likely the UPC will open in early 2019.

As the European Patent Office (EPO) is not an EU body, UK-based European Patent Attorneys will continue their work at the EPO unaffected by Brexit.  Currently, it is possible to file a European patent application at the European Patent Office (EPO), another non-EU organisation. If granted, this becomes a bundle of national patents validated and enforced in each country where protection was requested. The Unitary Patent will offer businesses a single route to patent protection which can be enforced in a single action before the Unified Patent Court.

The Unified Patent Court will be an international court and will have jurisdiction over patent disputes across its contracting states. It will deliver a single judgment in cross-border disputes between private parties over patents granted under the current intergovernmental system.

On 8 February 2018, the final legislation needed for the UK to be ready for the Unified Patent Court was passed.  The Queen and her Privy Councillors signed off the Order which is available here together with this explanatory memorandum.

This now means that the UK's Foreign and Commonwealth Office can prepare the formal instrument, have it signed by the Minister and lodge its ratification.

The UK's ratification process normally takes a few weeks and should now be a mere formality.  It is expected that the UK will also formally ratify the Privileges and Immunities Protocol, also required to start up the Unified Patent Court.  At a procedural level, building of a new venue for the London part of the Court is underway and progress is also being made to finalise the online case management system which will be used for filing and submissions on matters across all of the UPC courts.

With the UK legally ready for the Unified Patent Court, eyes now turn to Germany where its Federal Constitutional Court (FCC)  is considering a constitutional complaint against the compatability of the UPCA, the agreement implementing the Unified Patent Court. The Federal Constitutional Court invited observations from a large number of third-parties representing German lawyers, government and industry.  Many of these third parties have argued that the complaint should be found inadmissible or else declared unfounded if it is decided to be admissible. 

Williams Powell's view is that the Unified Patent Court is an extremely worthwhile project that will benefit everyone by simplifying and reducing the cost of European patent litigation.  In our opinion, the arguments made in the German constitutional complaint could be equally raised against the existing system of centralised grant/opposition at the European Patent Office followed by litigation at a national level.  This system has been serving businesses in protecting their IP in Europe since the 1970s and has not to our knowledge been argued to be consitiutionally incompatible with national laws.

As to Brexit, the UK Government announced in November 2016 that the UK would ratify the Unified Patent Court agreement irrespective of Brexit and it will shortly do so. The UPCA is not a law of the European Union but is a separate legal agreement made between most of the EU member states.  In fact, only 25 of the EU member states have agreed to be a part of the UPCA.  Once Brexit occurs, potentially after the intended transition period, it will be necessary to change the UPCA to take into account the fact that the UK will no longer be an EU member state and for the UK to remain bound to its provisions.  Given that the UK is one of the principal supporters of the UPCA and will be the base for one of the Central Divisions of the European Patent Court, the UPCA will not be able to continue in its current format without the UK.

As explained in this article (Brexit to have no effect on UK’s dealings with the EPO), the UK's participation in the existing European patent system, operated by the European Patent Office which is not part of the EU, will be unaffected by Brexit and business and patent attorneys in the UK, Europe and the rest of the world are keen to see the UK's continued involvement in the Unified Patent Court so that the full value of the centralised courts and procedures can be achieved.

Brexit will have no consequence on the UK in connection with the European Patent Office (EPO), either for applicants or for Patent Attorneys in the UK, as confirmed by the EPO.

In its notice dated 25 January 2018, the European Patent Office confirmed that “Brexit will have no consequence on UK membership of the European Patent Organisation, nor on the effect of European patents in the UK. Accordingly, European patent attorneys based in the UK will continue to be able to represent applicants before the EPO”.

The notice reports on a meeting between the EPO’s president and a delegation from the UK’s Chartered Institute of Patent Attorneys. Various matters were discussed including UPC ratification and upcoming changes in EPO fees.

‘Meeting with CIPA gave us an opportunity to restate that Brexit will have no impact on UK membership of the EPO. For a very simple reason - the EPO is not an EU agency but an independent international organisation, of which the UK is a founding member', said President Battistelli.

UK Patent Attorneys remain uniquely positioned as far as the EPO is concerned because of the very strong UK patent system and Courts, which have been granted a pivotal role in the UPC.

It was understood that UK Government had planned to ratify the UPC agreement in May 2017 so that the Unified Patents Court could open by the end of the year.  However, that timetable now looks likely to experience minor delays and could push opening of the Court into 2018.

A side-effect of the span election announced by UK Prime Minister, Theresa May, on 18 April 2017 is that Parliament will dissolve on 3 May 2017 and this will prevent changes to UK law (which includes approval of statutory instruments such as the one needed for the UK to ratify the UPC).  Parliament will reconvene in June but only for a short period before breaking up for summer vacation in July. The necessary legislation might be squeezed through in the short period between June and July 2017 but more than likely will slip until September 2017.

Once UK and Germany have ratified (other countries necessary to meet minimum requirements have already ratified), a provisional application procedure begins during which the court structures will be established. The UPC preparatory committee had previously estimated 7 months for this period before the Court opened in December 2017.  due to delays in UK ratification this timetable can be expected to slip unless the preparatory period is shortened.  As a result, the Court will now likely open in 2018.  A sunrise period during which European patents and patent applications can be opted out of the competence of the UPC will run for a minimum of 3 months prior to opening of the Court.

On 28 November 2016 the UK government confirmed that it is proceeding with preparations to ratify the Unified Patent Court Agreement (UPCA), which is part of the process required to establish the Unitary Patent and Unified Patent Court. Under the new regime, businesses will be able to protect and enforce their patent rights across Europe in a more streamlined way - with a single patent and through a single patent Court.

The court will make it easier for businesses to protect their ideas and inventions from being illegally copied within Europe.

UK Minister of State for Intellectual Property, Baroness Neville Rolfe said:

“The new system will provide an option for businesses that need to protect their inventions across Europe. The UK has been working with partners in Europe to develop this option.

As the Prime Minister has said, for as long as we are members of the EU, the UK will continue to play a full and active role. We will seek the best deal possible as we negotiate a new agreement with the European Union. We want that deal to reflect the kind of mature, cooperative relationship that close friends and allies enjoy. We want it to involve free trade, in goods and services. We want it to give British companies the maximum freedom to trade with and operate in the Single Market - and let European businesses do the same in the UK.

But the decision to proceed with ratification should not be seen as pre-empting the UK’s objectives or position in the forthcoming negotiations with the EU.”

The UK government will be working with the Preparatory Committee to bring the Unified Patent Court (UPC) into operation as soon as possible.  UK Law changes needed to give effect to the UPCA were passed by Parliament in March 2016. Ratification is handled by the UK Executive on behalf of the Crown.

The UPC is not an EU institution but an international patent court.  It is not, therefore, controlled by the EU institutions, save for its choice to have the European Court of Justice as the ultimate arbiter in disputes.  There is no reason why this choice could not be maintained even after the UK leaves the EU.

In this regard, the UPC has similarities with the European Patent Convention, which is also an institution set up under international law and is not an EU institution.  There are numerous member states of the EPC that are not EU member countries.

We welcome the UK government’s move to become one of the first European countries to press ahead with implementing the UPC, which is likely to become a very valuable tool for businesses across the world.

Should you like any preliminary advice on the UPC please do not hesitate to contact us.

Over the past few years, the assessment by the European Patent Office of any amendments made to an application or patent in connection with the issue of added subject matter has been extremely strict.  The commonly applied test has been to require the amendments to be supported word for word in the original specification and ascribed directly to the subject matter being claimed, that is not to any one specific embodiment only.  This often led to an applicant or patentee being prevented from amending the application or claims beyond the very strict wording of the written description as filed, irrespective of what the application actually taught the skilled person.  While such a stance can be mitigated with very careful drafting of the specification in the first instance, it has led in our experience to many applicants being denied the opportunity to make the most of their patent applications.

The EPO has finally relented on this test, we believe following the realisation that some applicants were being denied protection for patentable subject matter which the skilled reader would have been able to gather from the disclosure in the application.  The EPO is changing the threshold for determining added subject matter from a strict forensic legal examination to seeking to understand what the skilled person would have made of the original disclosure and therefore the extent of the original teaching.  The change in the EPO’s approach began formally with the decision of the Enlarged Board of Appeal of the EPO, which is equivalent to the Supreme Court,  in its decision G2/10.  The Enlarged Board of Appeal held that an amendment should be regarded as introducing subject-matter if the overall change in the content of the application (whether by way of addition, alteration or excision) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application, even when account is taken of matter which is implicit to a person skilled in the art.  In other words, when assessing an amendment for added subject matter, the focus should be on what was really disclosed to the skilled person in the application as filed.  In particular, the Examiner should avoid disproportionally focusing on the structure of the claims or the literal wording of the original text, to the detriment of what the skilled person would have directly and unambiguously derived from the application as a whole.

This is a welcome change in practice but we expect will take some time to become habitual in the practice of the Examining and Opposition Divisions of the EPO.

Notwithstanding this change, we expect that the EPO will maintain a relatively strict approach to the assessment of added subject matter introduced by amendments made to an application or patent.  Careful drafting of the original application therefore remains of paramount importance.  In this regard is it critical to keep in mind that the EPO will be looking for technical pointers to the skilled person in the original disclosure, which is likely to put legalese often introduced into patent specifications into the spotlight.  That is, we expect the EPO to continue to view evidently legal phraseology with scepticism.  Examples include numerous long lists of options for certain elements of a device or method, generalised broadening passages relating to alternatives and so on.  Additionally, we do not expect the EPO to relent in its assessment of new claim combinations not originally covered in the application, making it important to ensure that multiple dependencies are included in PCT and European applications at the time of filing, that all alternatives are carefully tied to all of the embodiments to which they are intended to apply and that they are clearly distinguished from other features not essential with those alternatives.  We would be happy to advise on specific cases or in connection with specific issues.


Tagged in: EPO patents

There are two primary schools of thought in patent litigation proceedings in Europe: 1) the unitary trial system followed for example by the UK Courts, where the issues of validity and infringement of a patent are heard together in front of the same judge or judges, and 2) the bifurcated system followed for example by the German Courts, where validity and infringement are decided in separate proceedings that are heard in different Courts at different times.  There are, of course, competing views as to which system is ultimately better and in fact both routes are made available in the Rules of Procedure of the forthcoming Unitary Patent Court.  Given that the UK and Germany handle the majority of patent litigation in Europe, this is not surprising.

Leaving aside the question as to which system is ultimately best, problems can arise with bifurcated proceedings in that a trial on validity of a patent can often occur after the trial on infringement.  The unfortunate result is that a decision may be reached on infringement of a patent which is subsequently revoked or materially limited in scope.  Until a decision on validity is reached, the alleged infringer is put in a very difficult position, both legally and commercially.

The German infringement Courts, though, are known to stay infringement proceedings where it can be demonstrated that there is little chance the patent will survive the validity attack.  It is here that UK procedures are able to assist and we have been successful in doing so for clients of ours.  The UK Intellectual Property Office (UKIPO) offers a Patent Opinion service, which provides a non-binding opinion on the validity of a patent effective in the UK (of which the vast majority of European patents are).  The procedure is simple and quick, leading to a decision within three  months of filing the Request for Opinion at the UKIPO.  The procedure is entirely written with no hearing.  The requester must set out its case fully at the start and the patent proprietor is given the opportunity to respond, to which the requester can then reply.  As the procedure is straightforward, costs are only a small fraction of full litigation proceedings, in total generally between $10,000 to $20,000.

A word of caution, though, is that the UKIPO is generally conservative in its decision, so a good case must be made out from the start.  It must be borne in mind that the UKIPO may unilaterally revoke the patent following a negative opinion on validity, which is a significant sanction on the patentee.

We have been successful in stalling German patent infringement proceedings off the back on a UKIPO Patent Opinion deeming the patent to be invalid, causing the trial on infringement to be postponed until after the German Patent Court has determined the issue of validity.  This can be a very significant tactical advantage in litigation proceedings, and has the added bonus of creating official file wrapper records having statements from the patentee and the UKIPO as to the intended or appropriate scope of the claims.

As an Opinion can be requested by anyone, it is not mandatory for a litigant to make itself known to the UKIPO when requesting an Opinion.  We can be the official Requester.

In cases where a binding decision on validity is more appropriate, a formal revocation action before the UKIPO or our Courts can be expected to reach trial within 12 to 18 moths of commencement of proceedings.  We would be happy to provide you with more information of UK litigation.

A UKIPO Patent Opinion is not only potentially relevant in the course of litigation but can also be a very useful route for dealing with any question of validity of a patent.  An Opinion can also be requested on the question of infringement of a patent, for instance in connection with a prospective or theoretical product or process.

We would be very happy to discuss the UKIPO Opinion service and litigation in general should you have any questions.


In the wake of the UK Supreme Court's Trunki decision, designers may now be questioning the value of registered designs to protect their products in the UK.  However, during a panel discussion at the ITMA designs seminar on 27 April 2016, Mark Vanhegan QC and Michael Hicks (who represented the parties in the case), and Nathan Abraham of the IPO pointed out that design registration still represents good value for money and gave the audience some practical tips on how to secure valid protection.

Advantages of design registration:

•Relatively cheap

•2D designs can be protected 

•Provides an absolute monopoly (there is no need to prove copying)

•There is a grace period, which could be useful if there has been accidental disclosure before registering

One point to note is that many registered design cases are settled before ever making it to court so we do not hear about them.  This demonstrates that registered designs can still be useful in providing protection.

Practical Tips:

Different types of representation provide different scopes of protection and therefore cover different designs.  Each design can include several representations, but these should therefore all be of the same type.  We would recommend, for each product, filing at least three sets of representation: line drawings (to provide broad protection for the overall shape), black and white photos or CAD designs (not limited to particular colours, but protects different tones to the product), and full colour photographs (to protect the specific product itself).  By filing a series of different representations with a range of level of detail, one would hope that at least one would be both valid and infringed if tested.  An example of what might have helped in the Trunki case can be found below:



The UK Patent Box has enjoyed a good level of success.  According to the UK Government, by mid 2015 over 639 companies had used it and received a benefit totaling £335,000,000.  

Tagged in: Patent Box patents UK

A validation agreement has been reached between the European Patent Office and the Republic of Moldova.  The entry into force of the validation agreement with Moldova means that, as of 1 November 2015, a European Patent can offer protection in up to 42 countries including the 38 EPO member states, Bosnia-Herzegovina, Montenegro, Morocco and Moldova.

Tagged in: EPO patents

The United States of America and Japan have joined the Hague System for the International Registration of Industrial Designs, a system that provides a cost-effective way of registering industrial designs in 64 countries.


The Hague System allows a single application to be filed centrally and registered in the 64 countries which now include USA, Japan and the EU.


An international registration produces the same effect of a grant of protection in each of the designated countries as if the design had been registered directly with each national office, unless protection is refused by the national office.  Registered design protection varies from country to country and can last from 15 to 25 or more years.  The Hague System comes into effect in USA on 13 May 2015.  For more information on protecting your designs, please contact us.

When the EU parliament approved the Unitary Patent legislation in December 2012, some (including ourselves) optimistically said we may see Unitary Patents granted as early as the middle of 2014.  While implementation still appears to be well on track, we are still some way off - because of politics.

For the Unitary Patent system to come into force, the legislation must be ratified by thirteen member states (which must include UK, France and Germany).  As at February 2015, France, Austria, Belgium, Denmark and Sweden have ratified the legislation.  It is highly unlikely that the UK will ratify the legislation in 2015 as it is to hold a general election in May. 

More formal issues also still remain undecided - how much will the renewal fees be?  The aim for the Unitary Patent is for a single annual renewal to be payable covering all states.  In order to be attractive to SME's, the EU want the single renewal fee to be relatively low.  However, this will likely reduce the income of many member states and has therefore been a point of much debate. We understand discussions on this point continue between the European Patent Office, EPO, and member state governments.

We will keep you appraised of developments as they occur and would be happy to answer any questions.  Ultimately, when the Unitary Patent system finally comes into force any pending European patent application should be able to be converted into a Unitary Patent at grant so there is no reason or benefit in delaying filing. For pending European patent applications that are approaching grant, filing a divisional application would keep them pending and therefore leave open the opportunity of conversion to a Unitary Patent when the option finally becomes available.


From 1 March 2015, anyone filing a European patent application will be able to request validation for Morocco. European applications and patents validated for Morocco will have the same legal effect as Moroccan patents and will be subject to Moroccan patent law.


On 17 December 2010, the President of the European Patent Office and Morocco's Minister for Industry signed an agreement on the validation of European patents (validation agreement).


The agreement enters into force on 1 March 2015. European patent applications or International patent applications filed from that date will have the option to be validated in Morocco.


Unlike validations of designated states that are required at the grant of a European patent to bring it into force in that designated state, "validation" here refers to the payment of a fee to the EPO.  This is due within six months of the date of publication of the European search report. In the case of European patent applications based on an international application (PCT), the fee is due on entry into the European phase.

Tagged in: EPO patents

On 26 September 2014, Norway acceded to the London Agreement, waiving the requirement for a full translation of a European patent on grant as long as the patent is granted in English.  A Norwegian translation of the claims must still be supplied for the patent to have effect in Norway.

The Agreement on the application of Article 65 EPC, also known as the London Agreement, is an optional agreement that aims to reduce the costs relating to the translation of European patents.  It was concluded at the Intergovernmental Conference held in the London on 17 October 2000 (see OJ EPO 2001, 549) and since then 21 contracting states of the European Patent Convention (EPC) have ratified or acceded. The EPC contracting states which have ratified or acceded to the Agreement undertake to waive, entirely or largely, the requirement for translations of European patents. 

For European patents granted with effect for Norway on or after 1 January 2015, no Norwegian translation of the European patent specification need be supplied if the patent is granted in English or if an English translation of the patent is supplied. A Norwegian translation of the claims must still be filed. Where a European patent is granted in a langauge other than English, an English or Norweigian translation of the entire patent must be filed for the patent to have effect in Norway.  We provide English language translations of patents which are both competitively priced and checked for technical langauge accuracy - please contact us for more details.

All European patents with a filing date on or after 1 April 2009 will automatically designate Norway and would therefore benefit from this arrangement if granted on or after 1 January 2015.

The new rules do not apply to European patents amended in opposition, appeal or limitation proceedings which were granted before 1 January 2015 and amended on or after that date.

Tagged in: EPO patents

When EU member countries decided to work together to create the EU Unitary Patent, Spain refused to take part and subsequently filed various challenges against the proposals with the Courts of Justice of the EU (CJEU).  

On 18 November 2014, the Advocate General published an opinion suggesting the CJEU should dismiss the challenges.

We now await the CJEU's decision.  While the CJEU is not obliged to follow the Advocate General's opinion, it often does so and this would result in one more hurdle in the way of implementing the Unitary Patent being overcome.


Does the EPO consider your ex-PCT application to cover more than one invention?  Has that additional invention not yet been searched? Up to now, if you have wanted that additional invention searched by the EPO, it has been necessary to file a divisional application.  From 1 November 2014, this will change – the EPO will (for a fee) search the additional invention without having to file a divisional application.  

The changes to the rule in question (Rule 164 EPC) are set out in the EPO's administrative council decision linked to here.

Practice tips

When filing a Euro-PCT application when the EPO was not the ISA, it is still important to think about the order of the claims in the EP application, as the EP supplementary search will be carried out on the first-mentioned invention.  However, under the new procedure, it will at least be possible to have additional inventions searched, if desired.

It is important to note that the EPO has not changed its practice on unity of invention.  Art. 82 (EPC) still states that “the European patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept”.  However, under the new procedure, it will at least be possible to get an idea of the prior art for an additional invention, without having to incur the cost of an EP divisional application.

New procedure as from 1 November 2014

This applies to:

- any Euro-PCT applications for which the ISA was not the EPO where the EPO has not as of 1 November 2014 drawn up an EP supplementary search; or

- any Euro-PCT applications for which the ISA was the EPO where the EPO Examining Division has not as of 1 November 2014 issued a first office action.

The new procedure is the same as the previous procedure (see below) for (1) and (2) but changes for (3):b2ap3_thumbnail_epo-r164-procedure.png

  1. If the International Searching Authority (ISA) was not the EPO, then after the Euro-PCT application is filed, the EPO will carry out a supplementary search on the invention or group of inventions first mentioned in the claims on filing the EP ex-PCT.
  2. If the ISA was the EPO, no supplementary search is carried out on filing the Euro-PCT.  Instead, the EPO relies on the International search.
  3. In the case of (1), if the EPO considers that the Euro-PCT application covers an additional invention lacking unity with the main invention, then it will issue a partial supplementary search in respect of the main invention only.  It will however then give the applicant a chance to have the additional invention searched, if the applicant pays a fee within 2 months (non-extendable).
  4. In the case of (2), if the EPO considers that the Euro-PCT application includes an additional invention lacking unity with the main invention, which additional invention was not searched by the ISA, then the EPO will now give the applicant a chance to have the additional invention searched, if the applicant pays a fee within 2 months (non-extendable).  The additional search will not however include a search opinion (quasi examination report).
  5. In either case, if the EPO considers that the inventions which have been searched lack unity, then it will ask the applicant to limit the application to a single invention (or group of inventions which are unified).  If however the applicant manages to persuade the EPO that its decision was wrong, then the EPO will refund the additional search fee.


Prior Procedure

Up to 1 November 2014: b2ap3_thumbnail_epo-r164-procedure-pre-1-november-2014.png

  1. If the International Searching Authority (ISA) was not the EPO, then after the Euro-PCT application is filed, the EPO will carry out a supplementary search on the invention first mentioned in the EP claims.
  2. If the ISA was the EPO, no supplementary search is carried out on filing the Euro-PCT.  Instead, the EPO relies on its own International search.
  3. In either case, if the PCT application includes an additional invention which is considered by the EPO to lack unity with the main invention, and if this additional invention has not been searched by the ISA or in the EPO supplementary search, then the only way to have this additional invention searched by the EPO is by filing an EP divisional application.
  4. The EPO will not examine a Euro-PCT application if it has not itself performed a search in respect of the invention for which protection is sought.  In other words, the invention must either have been searched in the EPO’s supplementary search or by the EPO acting as ISA.



The European Patent Office, EPO, has announced that as of 1 November 2014, it is relaxing rule R164 EPC on how lack of unity is dealt with.  Currently, on European applications that are filed from an International application (PCT), it is not possible to have further inventions searched if claims are found to be directed to more than one invention.  The only "fix" for this was to file a divisional application and as a result end up with two or more applications, even if only the later unsearched claims were wanted.  Following the changes to R164 EPC details linked here, it will be possible in all cases to pay an additional search fee to have further inventions searched.

This is a welcome change to practice before the EPO. It is not uncommon for new prior art to be found by an EPO Examiner at the search stage that results in a lack of unity objection arising.  In such situations, not all claims may be searched and this can have complications during examination.  Under current practice, applicants face the tough choice of sticking with the claims the Examiner has searched, or paying the high costs associated with a divisional application. Under the new rules, this situation can be avoided.

The European Patent Office has announced changes to R36 EPC with effect from 1 April 2014 such that a divisional application may be filed for any pending European patent application.  The wording of the changed rule appears to include those cases for which the current divisional deadline (2 years from issue of the first examination report) has expired but which are still pending as of 1 April 2014.

An additional fee (amount not yet announced) will be introduced as part of the filing fee for certain divisional applications. The amount of this fee will grow progressively with each subsequent generation of divisional applications up to a certain level, becoming then a flat fee.

The current rule was brought into effect in 2010 by the European Patent Office in an attempt to prevent “abuse” of the divisional system by the filing of one or more divisional applications shortly before the parent case was to be considered (and potentially rejected) at oral proceedings. However, the number of divisional applications in fact increased.  The effect of the current rules were further reduced by the decision of the Enlarged Board of Appeal on G 1/09 in which it was decided that a European patent application that was refused could still be used as the basis for filing a divisional application until expiry of the appeal deadline.

The announcement of the European Patent Office doesn’t quite admit the current version of Rule 36 EPC rule was a mistake but the practical effect cannot be denied. The change is welcomed and will lead to a return to a more reasonable approach to the filing of divisional patent applications.  We will be happy to provide specific advice should you have any query.

On 16 Apr 2013, the Court of Justice of the European Union (CJEU) rejected challenges by Spain and Italy to the legislative process used to establish the unitary patent framework. 

Spain and Italy had attempted to block the creating of the unitary patent agreement, both by non-participation and legal challenge to the process used (typically EU law requires all member states to agree to legislation).  The argued among other things that the unitary patent agreement would undermine the internal market and that it would create a barrier to trade and distort competition to the detriment of businesses in their countries. 

Rejecting their challenges, the CJEU said that it cannot validly be maintained that the unitary patent agreement would damage the internal market or the economic, social and territorial cohesion of the Union. 

While there is significant political pressure to conclude the unitary patent agreement and the EU is unlikely to allow the process to be blocked, this is not the end of the line for the challenges. Two further actions for annulment have been lodged by Spain before the CJEU.