Manual of Patent Practice

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Section 78: Effect of filing an application for a European patent (UK)

Sections (78.01 - 78.15) last updated April 2009.

78.01

EPC applications for European patents (UK), although searched, published and processed to grant by the EPO, are treated as applications under the 1977 Act in certain respects, as laid down in this section. The section also includes a provision whereby English translations of the claims of applications for European patents (UK) published in French or German are required in order to establish certain rights.

78.02

s.130(1) is also relevant.

An application for a European patent (UK) is an application which has been filed under the EPC and which, on its date of filing, designated the United Kingdom as a country in which protection is sought for the invention which is the subject of the application.

78.03

a.75 EPC, s.23(1), s.23(1A), s.22(3)(b), a.77(5), EPC a.135, EPC a.76 and EPC are also relevant.

A European patent application (other than a European divisional application) may be filed at the EPO (Munich or The Hague) or, if the law of a contracting state so permits, at the central industrial property office or other competent authority of that state. The UK Office is just such a central industrial property office and may thus receive any European patent application. However, in the case of applications which contain information relating to military technology or other information whose publication might be prejudicial to national security or the safety of the public by residents of the UK, they must be first filed with the UK Office unless either, written authority for filing elsewhere has been previously given by the comptroller, or an application for the same invention has been filed in the UK not less than six weeks earlier and no prohibition directions under s.22 are in force. While any such directions are in force with respect to a European patent application, it is not forwarded to the EPO. If this prevents it reaching the EPO before the end of the fourteenth month after filing or, if priority has been claimed, after the date of priority, it is deemed to be withdrawn. The applicant may then apply (under s.81) for the application to be converted to one for a patent under the Act. European divisional applications must be filed directly with the EPO.

78.04

Section 79 provides for the operation of s.78 in relation to applications for a European patent (UK) initiated by an international application under the PCT.

 
Section 78(1)
Subject to the provisions of this Act, an application for a European patent (UK) having a date of filing under the European Patent Convention shall be treated for the purposes of the provisions of this Act to which this section applies as an application for a patent under this Act having that date as its date of filing and having the other incidents listed in subsection (3) below, but subject to the modifications mentioned in the following provisions of this section.
 
Section 78(2)
This section applies to the following provisions of this Act -

section 2(3) and so much of section 14(7) as relates to section 2(3);

section 5;

section 6;

so much of section 13(3) as relates to an application for and issue of a certificate under that subsection;

sections 30 to 33;

section 36;

sections 55 to 69;

section 74, so far as relevant to any of the provisions mentioned above;

section 111; and

section 125.

78.05

An application for a European patent (UK) made under the EPC is treated as an application under the Act for the purposes of the provisions set out in sub-section (2). These purposes relate to the extent of the prior art under s.2(3) (and exclusion of the abstract therefrom); priority dates under s.5; disclosure in earlier and later applications, under s.6; certificates under s.13(3) to the effect that a person ought not to have been mentioned as sole or joint inventor; transactions and property in patents and applications under ss.30 and 31; registration of patents and published applications and transactions etc under ss.32 and 33; co-ownership of patents and applications under s.36; Crown use and infringement under ss.55 to 69; proceedings relevant to any of the preceding sections where validity can be put in issue under s.74; unauthorised claims that a patent has been applied for, under s.111; and the extent of an invention under s.125.

 
Section 78(3)
The incidents referred to in subsection (1) above in relation to an application for a European patent (UK) are as follows -

(a) any declaration of priority made in connection with the application under the European Patent Convention shall be treated for the purposes of this Act as a declaration made under section 5(2) above;

(b) where a period of time relevant to priority is extended under that convention, the period of twelve months allowed under section 5(2A)(a) above shall be so treated as altered correspondingly;

(c) where the date of filing an application is re-dated under that convention to a later date, that date shall be so treated as the date of filing the application;

(d) the application, if published in accordance with that convention, shall, subject to subsection (7) and section 79 below, be so treated as published under section 16 above;

(e) any designation of the inventor under that convention or any statement under it indicating the origin of the right to a European patent shall be treated for the purposes of section 13(3) above as a statement filed under section 13(2) above;

(f) registration of the application in the register of European patents shall be treated as registration under this Act.

78.06

s.78(1) is also relevant.

The date of filing accorded to the application for a European patent (UK) under EPC Article 80 is taken as if it were the date of filing under the Act. Various other acts (concerning priority, filing, publication, indicating the name of the inventor or derivation of the right to apply, and registration all as set out in sub-section (3)) done under the EPC can be treated as having been done under the Act. Treatment of publication under the EPC as publication under s.16 of the Act is subject to compliance with the requirements as to the language of the published application set out in s.78(7) (since this sub-section was brought into force, see 78.11-12) and s.79(2) and (3) (if the European patent application was initiated by a PCT international application).

 
Section 78(4)
Rules under section 32 above may not impose any requirements as to the registration of applications for European patents (UK) but may provide for the registration of copies of entries relating to such applications in the European register of patents.

78.07

Rule 79 of the Patents Rules 1995 provided for keeping entries in the register relating to published applications for European patents (UK), but was revoked by the Patents (Amendments) Rules 1999. See 32.07.

 
Section 78(5)
Subsections (1) to (3) above shall cease to apply to an application for a European patent (UK), except as mentioned in subsection (5A) below, if -

(a) the application is refused or withdrawn or deemed to be withdrawn, or

(b) the designation of the United Kingdom in the application is withdrawn or deemed to be withdrawn,

but shall apply again if the rights of the applicant are re-established under the European Patent Convention, as from their re-establishment.
 
Section 78(5)
The occurrence of any of the events mentioned in subsection (5)(a) or (b) shall not affect the continued operation of section 2(3) above in relation to matter contained in an application for a European patent (UK) which by virtue of that provision has become part of the state of the art as regards other inventions; and the occurrence of any event mentioned in subsection (5)(b) shall not prevent matter contained in an application for a European patent (UK) becoming part of the state of the art by virtue of section 2(3) above as regards other inventions where the event occurs before the publication of that application.

78.08

Under EPC, every European patent application will designate the UK on filing and will be treated as an application for a European patent (UK). Upon the refusal or the actual or deemed withdrawal of an application for a European patent (UK), or of its designation of the UK, it is no longer treated as an application under the Act except as provided for by subsection (5A). This subsection means that any document which forms part of the state of the art under s.2(3) will not cease to do so if the application is withdrawn or refused. Furthermore, under section 78(5A) removal of the designation prior to publication will not have an effect on the prior art status under section 2(3). Every European patent application will therefore have prior art effect under section 2(3) on publication regardless of whether the UK remains designated at the time of publication. If the rights of the applicant in relation to the application are subsequently re-established under the EPC, the application at the same time resumes its status under the Act as set out in s.78(1)-(3). However, the provisions of s.78(6) apply to infringers in the intervening period.

78.09

[deleted]

 
Section 78(6)
Where, between subsections (1) to (3) above ceasing to apply to an application for a European patent (UK) and the re-establishment of the rights of the applicant, a person –

(a) begins in good faith to do an act which would constitute an infringement of the rights conferred by publication of the application if those subsections then applied, or

(b) makes in good faith effective and serious preparations to do such an act,

he shall have the right to continue to do the act, or as the case may be, to do the act, notwithstanding subsections (1) to (3) applying again and notwithstanding the grant of the patent.

78.10

The exemption of third parties from infringement proceedings provided by s.28A(4) to (7) applies to acts or preparations in the period between cessation and reestablishment see 78.08. This includes acts of Crown use which, but for s.55, would constitute infringements.

 
Section 78(6A)
Subsections (5) and (6) of section 20B above have effect for the purposes of subsection (6) above as they have effect for the purposes of that section and as if the references to subsection (4) of that section were references to subsection (6) above.
 
Section 78(6B)
Subject to subsection (6A) above, the right conferred by subsection (6) above does not extend to granting a licence to another person to do the act in question.
 
Section 78(6C)
Subsections (6) to (6B) above apply in relation to the use of a patented invention for the services of the Crown as they apply in relation to an infringement of the rights conferred by publication of the application (or, as the case may be, infringement of the patent). “Patented invention” has the same meaning as in section 55 above.

78.10.1

Section 78(6) prior to implementation of the revised EPC on 13 December 2007 provided protection for third parties when a European patent application was terminated or refused. Sections 78(6) to 78 (6C) clarify the protection afforded to third parties when a European patent application has been refused and then reinstated. This includes reinstatement by the Enlarged Board of Appeal. The provision as amended is consistent with sections 20B and 177A on reinstatement and resuscitation of national patent applications.

 
Section 78(7)
While this subsection is in force, an application for a European patent (UK) published by the European Patent Office under the European Patent Convention in French or German shall be treated for the purposes of sections 55 and 69 above as published under section 16 above when a translation into English of the claims of the specification of the application has been filed at and published by the Patent Office and the prescribed fee has been paid, but an applicant -

(a) may recover a payment by virtue of section 55(5) above in respect of the use of the invention in question before publication of that translation; or

(b) may bring proceedings by virtue of section 69 above in respect of an act mentioned in that section which is done before publication of that translation;

if before that use or the doing of that act he has sent by post or delivered to the government department who made use or authorised the use of the invention, or, as the case may be, to the person alleged to have done the act, a Translation into English of those claims.
 
Section 78(8)
Subsection (7) above shall come into force on a day appointed for the purpose by rules and shall cease to have effect on a day so appointed, without prejudice, however, to the power to bring it into force again.

Translation of claims from French or German

78.11

s.79(1), r.56(1)(b) and s.80(2) are also relevant

Since s.78(7) was brought into force, applications for European patents (UK) published by the EPO (and international applications for a European patent (UK) the subject of proceedings before the EPO under EPC a.150 and published under PCT a.21) in French or German are treated as published for Crown use or infringement purposes under the Act when an English language translation of the claims thereof has been filed at and published by the UK Office. Rights are also obtainable by the applicant in relation to use or acts done before publication of that translation from the date on which the applicant sends a translation to the government department or potential infringer in question under s.55 or 69 respectively. Such a translation may in some circumstances be treated as the authentic text for the purposes of proceedings under the Act, see 80.02.

78.12

The Patents (Amendment) Rules 1987 appointed 1 September 1987 as the day on which s.78(7) came into force but only in respect of applications for a European patent (UK) which were published by the EPO on or after that day.

78.13

It is not obligatory to file a translation of the claims; it is entirely at the option of the applicant to do so if he wishes to secure the rights referred to in 78.11. There is no time limit for filing it.

78.14

r.56 and r.115 are also relevant.

The translation should be filed in duplicate together with Patents Form 54 in duplicate and the appropriate fee. The translation should comply with certain formal requirements, as set out in Parts 1 to 3 of Schedule 2. These requirements are described in 14.27-30 and 14.33-36. There is no requirement for a translation to be verified. However, if there are reasonable doubts about the accuracy of the translation, the comptroller should notify the person of the reasons for his doubts and may require evidence to be filed to establish that the translation is accurate. The comptroller may, if he thinks fit, take no further action in relation to the document where the person fails to furnish evidence.

78.15

s.118(1) is also relevant.

If the requirements are met, the fact that the translation has been filed is recorded in the register and announced in the Journal. It is made available for sale and a copy is placed on file and thus open to public inspection at the Office. Requests for inspection of the file containing the translation should be accompanied by the prescribed fee, if any.