LAVOIX, Patent and trademark attorneys, attorneys-at-law, Intellectual Property http://en.lavoix.eu/ us 2012-02-07T11:10:39+01:00 tag:en.lavoix.eu,2012:rss-3766476 February 2012: Drawing a balance on four years of Petition for Review - A112aEPC Fri, 03 Feb 2012 11:33:00 +0100 us Equipe LAVOIX 1.1 Article 112a EPC allows, under certain specific circumstances, a party adversely affected by a decision of a Board of Appeal to have the decision reviewed by the Enlarged Board of Appeals.

Article 112a was inserted in the EPC2000 and came into effect on December 13, 2007.

1.2 According to A112a(2)EPC, the petition may only be filed on the grounds that:

(a) a member of the Board of Appeal took part in the decision in breach of Article 24, paragraph 1 (personal interest or participation in the decision under appeal), or despite being excluded pursuant to a decision under Article 24, paragraph 4 (member excluded by Board of Appeal);

(b) the Board of Appeal included a person not appointed as a member of the Boards of Appeal;
(c) a fundamental violation of Article 113 (Right to be heard) occurred;
(d) any other fundamental procedural defect defined in the Implementing Regulations occurred in the appeal proceedings; or
(e) a criminal act established under the conditions laid down in the Implementing Regulations may have had an impact on the decision.

2. Since then quite a number of petitions have been filed.

The case distribution is as follows: click here

Of the 59 cases that were terminated, only two have been allowed. The remaining cases have been withdrawn, not validly filed, judged inadmissible or judged unallowable.
One can see that only in particular circumstances a petition for review has a chance of success.

3. The two cases that were allowed are R07/09 and R03/10.

3.1 In R07/09, the statement of grounds of appeal was sent by the EPO to the patent proprietor’s representative with an invitation to reply. The representative did not file reply and the Board of Appeal subsequently rendered a decision in absence of the patent proprietor’s comments on the case.
The Enlarged Board of Appeal decided that the right to be heard was not respected, as it could not be established that the above mentioned documents had actually been received by the representative.

3.2 In R03/10, in the beginning of oral proceedings, the Board of Appeals stated that novelty and inventive step had to be discussed. Then novelty was discussed and the board announced that it will interrupt the proceedings and decide on “patentability”. Following the interruption the Board announced it had decided that the claims were novel, but lacked inventive step.
The Enlarged Board of Appeals stated that it was not clear for the proprietor that novelty and inventive step were decided together. Consequently, his right to be heard had not been respected. A113 EPC was according to the Enlarged Board of Appeals violated.

3.3 It is remarkable that both allowed petitions for review invoked a violation of the right to be heard. One can conclude that in cases where it may be established that a party was not given the right to be heard, a petition for review may have chances of success.
The decisions can be found here

If you have questions with regard to petitions for review, please contact Oliver Tischner.
]]> http://en.lavoix.eu/February-2012-Drawing-a-balance-on-four-years-of-Petition-for-Review-A112aEPC_a120.html tag:en.lavoix.eu,2012:rss-3648288 January 2012: Refund of the Examination fee at the EPO – Decision J 25/10 of the Legal Board of Appeal Tue, 10 Jan 2012 17:10:00 +0100 us Equipe LAVOIX Article 11 of the Rules relating to Fees of the European Patent Convention sets out the conditions under which a full or 75% refund of the examination fee will be made.

According to this Article, the examination fee shall be refunded:

(a) in full if the European patent application is withdrawn, refused or deemed to be withdrawn before the Examining Divisions have assumed responsibility;

(b) at a rate of 75% if the European patent application is withdrawn, refused or deemed to be withdrawn after the Examining Divisions have assumed responsibility but before substantive examination has begun.

In the case leading to Decision J 25/10, the Legal Board of Appeal had to assess whether the condition “but before substantive examination has begun” of paragraph (b) was met. Indeed, during first instance proceedings, the Examining Division had refused a 75% refund because, supposedly, substantive examination had already begun.

The Board of Appeal ruled that the 75% refund can only be refused if the Examining Division can prove that it already performed a concrete act as regards substantive examination prior to the withdrawal of the application. In the case at hand, there was no indication whatsoever in the file showing, by reference to objective criteria, that the Examining Division had performed a concrete act of any kind.
Accordingly, the Board of Appeal ordered a 75% refund of the examination fee.

This decision strengthens the rights of the applicant. The Board has clarified that a 75% refund of the examination fee is not at the discretion of the Examining Division.
Rather, the Examining Division must determine, based on objective and verifiable criteria, whether the conditions for a refund are met.

The decision can be viewed in full here.
For further details on the refund of the examination fee at the EPO, please refer to this link.

If you have any questions regarding this matter, feel welcome to contact Fabian Lieb.
]]> http://en.lavoix.eu/January-2012-Refund-of-the-Examination-fee-at-the-EPO-Decision-J-25-10-of-the-Legal-Board-of-Appeal_a119.html tag:en.lavoix.eu,2012:rss-3387991 Patent Administrative Assistant Asia-Korea division (M/F) Thu, 27 Oct 2011 11:15:00 +0200 us Equipe LAVOIX LAVOIX is looking to appoint for his Paris or Munich office a:

Patent Administrative Assistant Asia-Korea division (M/F)
Position:

  • Administrative and foreign patent grant procedures
  • Filing procedures
  • Billing
  • Maintaining relationships with our Korean clients

Profile:

  • Experience in an Industrial Property Law Firm preferred
  • Fluent Japanese and a good level of English required
  • Rigorous, reliable and having excellent organisational skills
  • Autonomy and responsiveness
  • Knowledge and regular practice of software tools

Please send your application (résumé (CV) and covering letter) to :

By Internet : Applications
  • By mail, to: LAVOIX, Service Ressources Humaines, 2 Place d’Estienne d’Orves, 75441 Paris Cedex 09 - FRANCE

]]> http://en.lavoix.eu/Patent-Administrative-Assistant-Asia-Korea-division-M-F_a115.html tag:en.lavoix.eu,2012:rss-3387917 Patent Administrative Assistant Asia-Japan division (M/F) Thu, 27 Oct 2011 10:34:00 +0200 us Equipe LAVOIX LAVOIX is looking to appoint for his Paris or Munich office a:

Patent Administrative Assistant Asia-Japan division (M/F)
Position:

  • Administrative and foreign patent grant procedures
  • Filing procedures
  • Billing
  • Maintaining relationships with our Japanese clients

Profile:

  • Experience in an Industrial Property Law Firm preferred
  • Fluent Japanese and a good level of English required
  • Rigorous, reliable and having excellent organisational skills
  • Autonomy and responsiveness
  • Knowledge and regular practice of software tools

Please send your application (résumé (CV) and covering letter) to :

By Internet : Applications
  • By mail, to: LAVOIX, Service Ressources Humaines, 2 Place d’Estienne d’Orves, 75441 Paris Cedex 09 - FRANCE

]]> http://en.lavoix.eu/Patent-Administrative-Assistant-Asia-Japan-division-M-F_a114.html tag:en.lavoix.eu,2012:rss-3353243 October 2011 : LAVOIX is still the leading French Firm in ranking of PCT Filers Fri, 14 Oct 2011 17:01:00 +0200 us Equipe LAVOIX The journal M.I.P (Managing Intellectual Property) has recently published its yearly ranking of firms filing international (PCT) patent applications.

LAVOIX is the leading filer of PCT applications in France, with 345 applications filed in 2011. LAVOIX was likewise ranked first in 2010, with 317 PCT filings.

LAVOIX is ranked 4th PCT filer in Europe, and is 23rd worldwide out of 180 firms listed.

"These figures demonstrate the professionalism of the LAVOIX team and our capacity to manage a large portfolio of PCT applications, and reinforce our position as a force to be reckoned with in Europe, and on the world stage. I want to thank our clients for their confidence continually renewed.", says Philippe Blot, President of LAVOIX.

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