Update on plant and animal patents at the EPO

Earlier this year we reported that the European Patent Office (EPO) had stayed all examination and opposition proceedings relating to patents and patent applications in which the decision depended on the patentability of a plant or animal obtained by an essentially biological process. This measure was taken following the release of a Notice by the European Commission stating that plants and animals derived from essentially biological processes should not, in its view, be considered patentable.

The Commission’s Notice contradicted the previous practice of the EPO which had been blocking patents directed towards essentially biological processes for the production of plants or animals but allowing claims to the plants or animals themselves which were derived from those processes. The EPO’s practice was based on a narrow interpretation of existing EU legislation regarding biotechnology.

The EPO’s Administrative Council has now amended the relevant EPO regulations such that plants and animals obtained exclusively by essentially biological processes will no longer be considered patentable, in line with the EU Commission’s Notice. While the EPO is not an EU body, the EPO has decided to continue to comply with EU law for the sake of harmonisation in patent law across the European continent.

Examination and opposition cases which were previously stayed will now be resumed and the new regulations will be applied. The EPO has stated that the changes will provide more clarity and legal certainty for users of the European patent system. However, the changes have no effect on national law and so it is unclear whether previously granted European patents, which claim plants or animals derived from essentially biological processes, will be upheld or invalidated by the national courts of EPO member states, particularly in those member states which do not belong to the EU and are therefore not subject to EU law.

Michael Ford

This entry was posted in Biotechnology/Pharma, European Patents.

Bogus Invoices

The European Patent Office (EPO) has issued a warning to applicants regarding bogus invitations to pay publication or registration fees for European patents or patent applications. The EPO is aware that the number of such scam letters received by applicants has been steadily increasing. Similar warnings have also previously been issued by the World Intellectual Property Organization (WIPO) and the UK Intellectual Property Office (IPO).

We are already aware of clients receiving fake letters or invoices in relation to patent, trade mark and design applications. The misleading letters typically request applicants to pay fees directly into fraudsters’ bank accounts, and often set very tight deadlines so that concerned applicants proceed to pay the fees without first discussing the letters with a professional representative. Many letters claim to issue from organisations which bear a confusing similarity to official bodies. Examples of such fake organisations include the “European Patent Service Register”, the “European Patent Portal” and the “Intellectual Property World Trade Organization”. The EPO, WIPO and the IPO maintain lists of example letters which should be ignored:

We must emphasise that payment of fees to such fake organisations has no legal effect and does not lead to an enforceable intellectual property right. There are few circumstances in which any official intellectual property office would write directly to an applicant who is represented by a patent or trade mark attorney. Clients should therefore not hesitate in forwarding any unsolicited invoices to their attorney and should not make a payment until the veracity of the communication has been confirmed. Unrepresented applicants should also consider requesting professional advice from an attorney if they are unsure about any invoices received. It is also advisable to make accounting departments aware of this issue.

By Michael Ford

If you have any concerns about suspicious invoices, please do not hesitate to contact your usual attorney at Alistair Hindle Associates.