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The Product of the Opinion - click to see how to use it

The Basics

If you need to know the basics of what a patent is and what can be protected, a good starting point is the UK patent office website.

Not everything is patentable. This is for public policy reasons.  The excluded subject matter is

You have to ask what does the claimed invention contribute to the art outside excluded subject matter. Lots of patentable inventions need computer programs to implement them.  Many would not be possible without the underlying scientific discovery.  Patents exist in order to allow investment in transferring inventions into full use.  In my opinion their role as a reward for your innovation is secondary to this moral obligation to ensure your inventive contribution is exploited.  If you are interested in where the boundaries of patentability lie - go here.

How Filemot helps

Filemot provides a full service to assist growing entrepreneurial businesses in the protection of technology they intend to bring to market.  We are also prepared to assist investors in appraising patent portfolios and strategies of their prospective targets.

The purpose of a patent is to provide its proprietor with a monopoly right.  It therefore follows that as well as researching patentability, writing the patent and negotiating with UK Intellectual Property Office, there will be a need for commercial contracts (licences) when that right is to be shared and for dispute resolution when there are differences of opinion as to the scope of the rights given by a patent and whether or not it should have been granted in the first place (validity).

The inventor who wants to start his own business also needs advice on corporate law and all the issues that surround being a business. You will need an accountant and the resources that organisations like Business Links can provide but we aim to make sure our clients are on the right track and minimise the number of paid advisors they need. 

Services for overseas lawyers

Filemot also acts for law firms and patent agents that act for entrepreneurial companies. We offer good value rates charged in your local currency. 

Were you looking for a specialist?

In our opinion you do not need to look for someone who specialises in your technology.  It stands to reason they will be acting for your competitors already.  If your technology is truly innovative how could a patent attorney already know about it.  Your job is to convey not only to your patent attorney but also to the readers of your patent specifications how your technology solves a real technical problem.

EPO Fees

EPO fees last  increased with effect from 1 April 2008. The current fees are here or download a consolidated list up to date to 1 July 2008 here.  As with the last increase of 1 April 2006, its not a straight percentage increase. The 3rd year fee stays the same but the 7th year fee goes up by 30%. One sneaky increase is in the supplement for late payment of a renewal fee. This used to be just 10% of the fee but form 1 April 2008 it goes up to 50%.

Remember that asking the EPO to process your file costs nothing but strangely it seems to be necessary as many files have not been actioned for years.

Claims fees go from 50 to 200 Euro but you can have 15 rather than 10 before they kick in. From 1 April 2009, heavy claim numbers will be severely penalised with a 500 Euro fee for the 51st claim. You have been warned.

The December 2005  decision annotated prettily in pink with the previous fees is here

Renewal Fees

In most countries you are required to pay renewal fees to maintain your patent portfolio.  We have a page devoted to this tedious task.

Dispute resolution-new opportunities

On 1 October 2005, the UK introduced provisions which enable anyone to seek a quick non-binding opinion from UK Intellectual Property Office on an issue of patent validity or infringement.  You can find the implementing rules here.  They do not differ greatly from those on which the Patent Office consulted earlier in the summer. On 1 April 2006 The Paten Office also started a mediation service for patent disputes.

The First Opinion

The first opinion to be issued arrived on Friday 13 January 2006 less than three months after the request was made by Marks &Clerk without naming their client. It was an unlucky day for the patentee, Novo Nordisk whose patent EP1351732 was considered to have its claim 1  anticipated by a patent with an earlier priority date but unpublished at the application date and therefore not considered in the EPO. Novo Nordisk paid the renewal fee on the UK patent and made no substantive response to the opinion request other than a bald assertion that the new document was not relevant.  You can download the opinion here. In this case three oppositions were subsequently filed at the EPO.  Marks & Clerk represent Owen Mumford Ltd. The opinion is, however, only called in aid by Genentech. The third opponent is Tecpharma Licensing AG.  On this occasion Novo have put in a more detailed response in defence of their patent and suggest, rather optimistically, that the UK opinion can be ignored because the two Patent Offices are applying  a different novelty standard. In the UK the leading case is the much quoted 1972 General Tire case never previously regarded as being inconsistent with the provisions of the European Patent Convention, which includes this statement:

If on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim will not have been anticipated

The EPO file can be inspected on EpoLine

Diabetes sufferers can still enjoy the Novopen - see and click the image at the top of this page - but maybe there will be some more competition soon.

Policy

Filemot is interested in the policy and effectiveness of the patent system and has a page devoted to the myriad of consultations from the UK and Europe.



Filemot Technology Law Ltd
25 Southampton Buildings
London, WC2A 1AL, United Kingdom
Direct +44 (0)20 3043 8550
Fax +44 (0)20 3043 8551
Email
info@filemot.com

Copyright 31 August 2008