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High-level Changes at the European Patent Office

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This July, Benoît Battistelli will take charge as the next president of the European Patent Office (EPO). Mr. Battistelli comes to the EPO from the French Institute for Industrial Property, where he served as director general for the past six years. He will succeed the current EPO president, Alison Brimelow.  U.S. applicants should watch closely. As Ms. Brimelow’s tenure has shown, a new EPO president can mean big changes in prosecuting patents abroad.

For many years, it had been common practice, at least among U.S. companies, to amend the claims of their European applications to mirror those of their U.S. counterparts. The motivating philosophy was often to capitalize on the results of U.S. prosecution, which usually was well advanced by the time European prosecution had begun.

Policy changes brought by Alison Brimelow changed this practice. Applicants have increasingly found that the EPO refuses to enter claim amendments that are perfectly acceptable under U.S. practice. This did not result from changes in the European Patent Convention (EPC) laws, but instead came from the EPO leadership’s drive for “higher quality” patents.

At the time Ms. Brimelow took the high office at the EPO, many complained about the increasing number of patents invalidated in post-grant oppositions and in litigation. Ms. Brimelow saw increased diligence during examination as a way to remedy the problem. In 2005–2006, she led a campaign to “raise the bar” on patent quality. Among other measures taken to accomplish this goal, Ms. Brimelow enforced a stricter interpretation of EPC law, including a more rigorous application of the existing prohibition against new matter. Whatever her motivation, Ms. Brimelow’s change in enforcement policy required many U.S.-based applicants to reassess their European strategy.

To achieve desired claim coverage today, applicants should think through their European prosecution strategy before making their initial domestic filings. Since scope-enlarging amendments are particularly closely scrutinized in the EPO, broad claims and commensurate supporting language should be incorporated in the priority application. It will be wise to take the new European divisional practice into account when devising a claims strategy.  In this regard,  see the article on that subject (“European Patent Rules Changes Set to Take Effect April 1”) in the last issue of Nutter’s IP Bulletin.

It is not yet clear what changes the incoming EPO president will oversee. However, U.S.-based applicants are advised to keep a close watch as Mr. Battistelli begins his term. While any new initiatives he might institute are a mystery, it is not expected that he will throttle back on the higher examination standards put in place by his predecessor. Indeed, the backlog of applications pending before the EPO suggests otherwise.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.
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