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VEREENIGDE"s seminar in Munich

VEREENIGDE held a seminar in Munich from 18 to 20 September 2011 focusing on European Patent strategies. The event was hosted by VEREENIGDE”s Munich office in cooperation with VEREENIGDE”s headquarters in The Hague.

The intention of the seminar was to inform patent practitioners from private practice, universities and industry throughout the world, about the following topics: recent developments before the European Patent Office (EPO); national routes before national patent offices such as the German Patent and Trademark Office (GPTO) as alternatives to the EPO; and the potential future Community Patent. Representing firms from Australia, Canada, China, Germany, Japan, The Netherlands, South-Africa, South-Korea and the USA, the participants formed an international group of high-profile IP professionals. The seminar provided an interesting mixture of presentations from VEREENIGDE”s patent attorneys, Patent Examiners of the EPO and GPTO, an attorney-at law from the EPO, and representatives from the Business Development and IP departments of food and pharmaceutical industries, respectively.

On the first day of the seminar, Dr. Otto Oudshoorn of VEREENIGDE provided an overview of the recent changes in the EPC which came into force in April 2010 and, in particular, the time limitations for filing divisional applications, the obligatory response to the search opinion, and various experiences with ‘raising the bar’ in relation to inventive step.

Dr. Martin Uhl, a highly experienced Examiner of the EPO, informed the audience about the EPO’s perspective on these new regulations. The EPO’s intention was to increase the quality of European patents, to accelerate the proceedings and to reduce ‘needless’ workload in the examination proceedings. Dr. Uhl emphasized that the hurdle for the assessment of inventive step was not greater but that the longstanding regulations for the evaluation of inventive step are now applied more strictly. He indicated that one of the biggest problems regarding inventive step are missing data and stepwise disclosure of the invention. Quite often European patent applications, in particular those based on a U.S. patent application, provide a very general disclosure in the description, which may lack inventive step in view of prior art, and a very detailed disclosure in the examples, which provides for a very limited scope of protection. Therefore, Dr. Uhl recommended a more intensive cooperation of European patent attorneys and foreign associates at an early stage of the proceedings, i.e., when drafting the patent application.

According to Dr. Uhl, the EPO is content with the experiences made with the new regulations of 2010, which indeed accelerated the proceedings and increased the efficiency in examination proceedings.

Dr. Henk van Doren, Manager Corporate IP Department of Royal Friesland Campina N.V., provided an interesting presentation about the company’s patent strategy and experiences with the EPO in examination, opposition, and appeal proceedings. Dr. van Doren indicated that the company is very content with the quality of the examination proceedings, as well as that of the postgrant proceedings.

Afterwards, in a roundtable discussion, Dr. Uhl, Dr. van Doren and patent attorneys of VEREENIGDE, discussed their experiences in proceedings before the EPO with the audience. In general, the EPO’s ‘clients’ were satisfied with the EPO, but they criticized the new regulations, in particular the two year limitation for the filing of divisional applications, and the assessment of inventive step under the EPO slogan ‘raising the bar’.

In the afternoon of the first day, Dr. Stefan Luginbuehl, a lawyer from International Legal Affairs at the EPO, presented the recent news regarding a European Community Patent. Recently, 25 member states of the European Patent Convention (EPC) agreed on a common patent, which would be examined and granted by the EPO, and where post-grant proceedings would also take place before the EPO having immediate effect in all 25 member states. Official languages of the proceedings would be English, French and German in accordance with the EPC. However, it still seems a long way to go until such a first Community patent might be examined.

The first day of the seminar ended with a visit to the EPO, where Ms. Christine Short, Head of Communication of the EPO, provided an interesting insight into the organization and work of the EPO. Finally, Ms. Short led the participants to the EPO’s ‘Sky Bar’, from where they had a great view of Munich’s skyline and the Oktoberfest.

The second day of the seminar started with a presentation by Dr. Bettina Hermann and Lutz Keydel of VEREENIGDE”s Munich office regarding national patent systems as an alternative to the EPO, the emphasis being on German proceedings. A summary of this presentation is provided in this newsletter. Dr. Roman Maksymiw, Director of an Examining Division at the GPTO, provided a detailed insight into the organization of the GPTO and the importance of this patent office in Europe. The GPTO, like the EPO, notes increasing patent application figures, in particular in the technical field, e.g., from Siemens, Bosch and other large companies. The examination and grant proceedings before the GPTO and the EPO are similar, and the German patent examiners are highly qualified. In contrast to the EPO, the GPTO also registers trademarks, design models and utility models. These can be interesting IP rights and are further explained in the article by Mr. Keydel and Dr. Hermann in this newsletter.

The official part of the seminar ended with a presentation by Dr. Nadine Kolonko of Sandoz International GmbH, who reported on her experiences in European litigation, which is characterized by differing costs, variances in the experience of courts and thus, differing decisions in patent litigation proceedings in the respective European countries. The seminar offered a good platform to meet colleagues from the IP field, to exchange experiences in the different IP systems, and to increase and improve the international IP network. In addition to the hard work during the hours of the seminar, the group relaxed on an outing to Neuschwanstein, where the famous Bavarian castle of King Ludwig II was visited. Further, the participants enjoyed dinners in typical Bavarian restaurants and, on the last evening of the seminar, attended the well-known Munich Oktoberfest! The participants enjoyed their stay in Munich and all agreed that a ‘Munich seminar’ should be offered again in the future.