Incorporating make any difference or extending the topic-matter or material of a patent software with respect to the content in the beginning filed is really critical in the prosecution of a patent software, because it may have an adverse influence on the passions of the patent owner following the grant of the patent.
The addition of new subject ordinarily occurs pursuing an modification created by the applicant to the software as initially filed, in the course of the grant proceedings or prosecution of a patent software. For the duration of this sort of prosecution, in purchase to get over the examiner’s objections to the application, the applicant may be pressured to amend a individual component of the application, normally the statements. It is probable that as a final result of the modification, new issue is involved in the patent’s scope of safety that was not lined by the software as initially submitted. These types of modification might introduce issue that extends over and above the articles of the software as filed, whether or not since it ads, replaces or deletes specialized functions from the authentic software, which, as we have explained, could adversely have an impact on the operator after the grant.
Introducing content material that extends over and above the authentic patent application is prohibited in write-up 48.5 of Spanish patent law 24/2015, of July 24, 2015 (LP 24/2015). Similarly, Write-up 123(2) of the November 2020 version of the European Patent Conference (EPC) also prohibits the addition of written content throughout the processing of a European patent software.
If during the processing of a patent application, the applicant incorporates new information (whether in the description, in the claims or in the figures) this can have an effects through a opportunity opposition to the patent granted. For illustration, report 43.c) of LP 24/2015 consists of as a ground for opposition, where the issue-subject of the patent extends past the content of the software as filed. Posting 100(c) EPC features the exact ailment as a floor for opposing a European patent.
What’s more, the so-known as “addition of subject-matter” can also direct to the revocation of a patent. According to report 102.1.c) of LP 24/2015, a bring about of revocation of a Spanish patent (granted just after the nationwide or European continuing) requires area when the topic-issue of the patent extends outside of the information of the software as submitted. If the patent has been granted as a consequence of a divisional application or as a end result of an application submitted on the foundation of short article 11 (application filed by a non-entitled human being), it might be revoked because of to “addition of issue-matter” when the subject-matter of the European patent extends further than the material of the software as submitted.
In see of the over, it is obvious that it is extremely significant to shell out awareness to the amendments made in the course of the prosecution of a patent software: if the amendments incorporate new subject to the initial application, it may be opposed and revoked and the owner will not be equipped to accurate this defect as soon as the patent has been granted. However, if the addition of new make a difference is detected in the very first phase of the processing (pre-grant), possibly by the examiner or the genuine applicant, the latter may well most likely be equipped to amend the claim, drawing or description in get to accurate this kind of addition of make any difference as a result of a new modification.
The recommendations for examination of the Spanish Patents and Trademarks Office environment (OEPM – Model 2. of July 2016) and of the European Patent Business office (EPO – European Patent Business – H-IV March variation 2021) make reference to the extension of the subject make any difference of the software at first submitted conveying when this kind of issue issue is deemed to have been prolonged.
In mild of the higher than, if the amendments made during the prosecution of a patent application lengthen the subject-make any difference of the software filed and the software is granted with these more matter-matter, the applicant may deal with an uncomfortable predicament if a third occasion files an opposition or revocation claim. This is simply because pursuant to articles or blog posts 48.6. of LP 24/2015 and article 123(3) EPC, it is impossible to amend a patent after it has been granted in these a way as to lengthen the safety it confers. An example of this would be if an applicant, in the course of the grant proceedings of the patent software, incorporates in a claim a limitation that adds new subject-matter that was not element of the application as submitted and that is eventually accepted by the examiner. All through an opposition continuing this kind of limitation must be withdrawn from the assert pursuant to content 48.5 LP 24/2015 and 123(2) EPC. Nonetheless, withdrawing the limitation would breach content 48.6. LP 24/2015 and 123(3) EPC, which would indicate that the patent proprietor would reduce the patent with or without having the modification and ultimately be trapped in a no-gain situation (Artwork. 123(2)-(3) entice). Whilst it is true that the examiner in this condition would have accepted the modification, it ought to be borne in intellect that the applicant is in the long run solely dependable for this sort of amendments. The EPO’s Enlarged Board of Charm indicated in its choice G1/93 in which cases it was possible to escape from the previously mentioned entice. The EPO’s Board of Attraction has also issued numerous conclusions with regards to various facets of adding subject-issue to European programs and patents, for instance, T667/08, T823/96, T1125/07 and T99/13.
In addition to the great importance of amendments built to a patent software throughout proceedings for the grant of the patent in or in a patent that has been granted, throughout the opposition or limitation procedure, it should also be borne in brain that these types of amendments can also be a deciding element in a revocation declare before a court. In certain, the Barcelona Provincial Appellate Courtroom expressed its view on this floor for revocation at the very least in its judgments of March 29, 2019, December 15, 2020 and January 13, 2022.
As a result, wherever amendments are likely to be manufactured to a patent application, it is important to bear in head the next indications of the EPO’s Guidelines for Assessment concerning write-up 123(2) EPC, which have been taken into account and cited in the over-talked about judgments:
- “The fundamental plan is that an applicant shall not be authorized to enhance his situation by introducing subject matter-issue not disclosed in the software as submitted, which would give him an unwarranted advantage and could be damaging to the lawful safety of 3rd get-togethers relying on the information of the unique software (see G 1/93)”.
- “An amendment is admissible if the subject-issue resulting from the amendment is straight and unambiguously derivable from the software as filed, i.e. where there is no question at all that topic-matter remaining is, be it explicitly or implicitly, straight and unambiguously disclosed in the application as filed.”
- “It is impermissible to insert to a European software matter-make a difference which the skilled human being are unable to derive instantly and unambiguously, utilizing popular normal awareness, from the disclosure of the application as filed.”
- “When evaluating amendments, the focus is positioned on what is genuinely disclosed to the expert man or woman by the paperwork as filed”.
In summary, when building amendments through proceedings for the grant of a patent or during the opposition or limitation technique, it is essential to closely review no matter whether they represent a feasible addition of topic-subject or new content material. As talked about, the addition of issue-subject can guide to the revocation of a patent both at the OEPM, at the EPO and even in court. To keep away from introducing subject-subject it is required to verify, before generating any amendments, that reported subject matter make any difference is included in the originally submitted software.
