Page 1
Table of contents
Editorial
Spanish Patent Law: ready for
the XXI century
The patent law treaty enters
into force in Spain
Enric Carbonell
Restoration of the priority right
under the PCT
The tomato and broccoli cases:
a never-ending story
European Court of Justice
(ECJ) concludes that
submission of additional proof
of use remains possible after
the expiry of time limit
Events
Editor
European Patent Attorney
EDITORIAL
For the second issue of our newsletter, we have decided to touch on
two topics which have an important impact on Spanish Patent law
and practice thereof: a current project to change the Spanish Patent
Law of 1986 and the entry into force of the Patent Law Treaty on 6
November 2013.
In a more international direction, we explain the requirements and
limitations to request restoration of the priority right under the PCT.
ABG’s News and activities
Moreover, in anticipation of a much-expected decision by the EPO
Enlarged Board of Appeals on the patentability of claims directed to
products obtained from essentially biological processes, we
Subscription
summarize the history of the important Broccoli and Tomato cases.
We also discuss the European Court of Justice decision on
To subscribe to the newsletter
please send an e-mail to
[email protected]
Community Trademark Law, whereby proof of use may, in some
circumstances, be taken into consideration even when late filed.
Last but not least, we briefly report on our firm’s 10th anniversary,
celebrating our growth with the addition of 1 new Spanish Patent
and Trademark Agent and 3 new qualified European Patent
Attorneys.
Happy reading!
Page 2
“The new law builds on the successes of
the 1986 patent system and intends to
harmonize the Spanish Patent Law with
international treaties and developments in
Europe, modelling, in my view, a truly
modern and uncontroversial patent
system”
predictable decisions which apply European
standards
in
validity
and
infringement
proceedings. Today, parties can file their writs at
very specialized courts, e.g., in Barcelona,
seeking injunctions, infringement damages or
Francisco Bernardo
nullity of a patent as they would in France,
Partner
Germany or the UK.
European Patent Attorney
SPANISH PATENT LAW: READY FOR THE XXI
CENTURY
Although few changes were introduced since
1986, such as the implementation of the European
Biotech directive, the law has basically remained
Current Spanish Patent Law, in force since 12
the same as it was enacted and is in need of an
March 1986, was a requirement to join the
overhaul, so that it can face the coming decades.
European
a
To this end, the Spanish Ministry of Industry
precursor to the EU. It completely modernized
announced a revision of the law and provided a
Spain’s patent system and replaced the 1929
draft for comments on 8 October 2013. The draft
Statute (“Estatuto de la Propiedad Industrial”),
takes into account several factors, such as: the
which was outdated. The new law was based on
reduction in the number of national filings
the Strasbourg Convention on the unification of
replaced
substantive patent law, and brought the Spanish
international
patent system in line with that of many EU
represent more than 90% of the patent rights in
countries. This modernization also allowed Spain
Spain; the globalization and effects of WTO
to join the European Patent Convention (EPC) on 1
agreements, in particular TRIPS; the Patent Law
October 1986.
Treaty (PLT) recently ratified by Spain; and the
Over the past 27 years, the law has triggered
implementation of EPC 2000, among others.
many changes in the Spanish patent landscape: a
The proposed law emphasizes the simplification
substantial
of procedures and the quick grant of Spanish
Economic
Community
(EEC),
rise in the number of patent
applications, better protection of patentees’ IP
rights;
clear
enforcement
and
litigation
procedures; changes in the Spanish Patent Office,
which is now a PCT Search and Preliminary
Examination Authority; and the development of
the patent profession. Moreover, the parallel
modernization of the civil litigation procedures
and the court system contributed to more
by
applications
agreements
(PCT,
made
under
EPC) which
national patents.
Some of the changes proposed are the following:

The introduction of the legal fiction (novelty)
in the case of product claims for therapeutic
Page 3
use, in line with Art. 53(c) and 54(4) and (5)
discussion. Post-grant opposition will replace
EPC2000, replacing current practice which
the current pre-grant opposition. Third parties
only allows Swiss type claims for national
can file observations;
patents;



“continuation in part” system, that introduced
European patent applications and PCT patent
much confusion and were rarely used, are
applications designating Spain and published
abolished;
Spanish,
in
addition
to
national

Only the parties (applicant and eventually
applications;
opponents) will be able to appeal decisions
In accordance with the PLT, the requirements
of the Spanish Patent and Trademark Office
to obtain a filing date are reduced;
(OEPM);
The internal priority is recognized much like

The draft law makes explicit reference to
in the EPC, as well as the possibility of
Supplementary
reinstating the priority right in accordance
stating that the OEPM will not examine:
with PLT. During the procedure, it will not be
whether the product has already been the
necessary to file certified copies of priority
object of a certificate; whether the product is
applications or their translations, unless the
protected by the basic patent; or whether the
priority becomes relevant on account of prior
Marketing authorization of the medicament is
art;
the first one in the EU;
To improve the legal certainty for third

Protection
Certificates,
Concerning the scope of protection, the draft
parties, all national applications will now
law explicitly mentions that equivalents have
proceed through substantive examination
to be taken into account, as in Art. 2 of the
(patentability,
step),
protocol on interpretation of Art. 69 EPC, and
excluding the registration procedure which
in line with Spanish court jurisprudence that
most applicants used up to now and was a
uses the doctrine of equivalents;
novelty,
inventive
source of doubtful patent rights;

The addition certificates, a sort of Spanish
Conflicting prior rights are extended to
in



In nullity proceedings, the patentee will be
The grant procedure will include a search and
allowed to amend the claims and limit the
a patentability opinion, to which the applicant
scope of protection. He can also request
will have to respond. There will be a
limitation or revocation of his patent at the
possibility of opposition after grant although
OEPM, as in the EPC;
the period for filing said opposition is still in

The law regarding utility models, which have
a duration of 10 years, will be changed in
part. According to the proposal it will be
possible to file them for more kinds of
inventions than in the current law. As to
Page 4
“Spanish Law will have to be amended to
comply with the provisions of the PLT, as
it contains a few issues currently
discrepant with the Treaty”
novelty, everything made accessible to the
public anywhere will classify as prior art, and
not only publications disclosed in Spain, as it
is currently defined. The inventive step
Gustavo A. de Dios
Patent Adviser
requirement is lower than for patents, as it is
at present. There is no examination for utility
model applications. In the proposal there is a
post-grant opposition procedure, instead of

THE PATENT LAW TREATY ENTERS INTO FORCE
IN SPAIN
the present pre-grant opposition; and
The Patent Law Treaty (PLT) is an international
The proposed law includes a 50% reduction
agreement,
of fees for entrepreneurs and small sized
entities.
ratified
during
a
Diplomatic
Conference of the World Intellectual Property
Organization (WIPO) in Geneva (Switzerland) on 2
In summary, the draft of the new law builds on
June 2000. Its aim is to harmonize the formal
the successes of the 1986 patent system and
requirements
intends to harmonize the Spanish Patent Law with
Offices of the Contracting Parties on patent
international
in
applicants and patentees. The harmonization has
Europe, modelling, in my view, a truly modern and
been undertaken with the ultimate goal of easing
treaties
uncontroversial
patent
and
developments
system
to
foster
innovation.
Once comments from the interested parties are
requested
by
national
Patent
access to worldwide patent protection and cost
reduction for applicants, as well as reducing the
administrative cost of the Patent Offices.
received, the proposed draft needs to be accepted
The PLT does not establish a uniform procedure
and approved by the Spanish government and
for all Contracting Parties; rather, it merely
parliament. We will keep you informed on the
indicates
progress of this interesting project in future
Contracting Parties may impose (except in the
issues of this newsletter.
maximum
requirements
that
case of obtaining a filing date, in which the PLT
establishes also the minimum requirements). The
PLT Contracting Parties are, however, free to
provide requirements that have shown to be more
favourable
than
the
PLT
requirements
for
applicants and owners.
The PLT mentions the requirements for Paris
Page 5
Convention Parties which ratify this Treaty in Art.
21.2(ii): “This Treaty shall bind each other State,
from the expiration of three months after the date
Affected Practices
Obtaining filing date
on which the State has deposited its instrument
According to Art. 5(1)(a) PLT, the requirements to
of ratification or accession with the Director
obtain a filing date are:
General, or from any later date indicated in that
(i) an indication that what is filed is intended to
instrument, but no later than six months after the
be a patent application;
date of such deposit”. Specifically, in the case of
Spain, a ratification instrument was deposited
before the WIPO on 6 August 2013, without
(ii) indications identifying the applicant or
allowing the applicant to be contacted; and
mentioning any reservations. As a result, the PLT
(iii) a part which on the face of it appears to be a
entered into force on 6 November 2013.
description.
The PLT will affect all Spanish patent applications
Hence, PLT Contracting States may not impose
filed on or after 6 November 2013. Moreover,
any additional requirement to accord a filing date.
Spain is not obliged, according to Art 22(2), to
In particular, a PLT Contracting Party cannot
apply the Treaty to the procedure of applications
require one or more claims as a filing date
filed before this date, and there is no obligation
requirement (as current Spanish Law does). In
for the contracting States to apply the provision
addition, according to Art. 5(2)(b) PLT and Art.
of the PLT to utility model applications.
5(7) PLT, an applicant may file the description in
Spanish Law will have to be amended to comply
with the provisions of the PLT, as it contains a few
issues currently discrepant with the Treaty. A
draft of the modified Spanish Patent Law is being
prepared by the government and will soon be
brought before the Parliament for discussion.
Meanwhile, the Spanish Patent and Trademark
Office (OEPM) has issued a Notification1 detailing
how the OEPM will start applying the PLT.
1
To download this Notification, please click on the
following link:
http://www.oepm.es/export/sites/oepm/comun/documentos_relacionados/Noticias/2013/2013_11_
06_Instruccion_PLT_15_10_13.pdf
any language (unlike the current Spanish Law
established), or replace the description and/or
drawings by a reference to a previously filed
application. Moreover, a PLT Contracting Party
may, for the purposes of according a filing date,
accept a drawing as the description (Art. 5(1)(b)
PLT). All of these options, which are not in the
current
Spanish
Patents
Law,
have
been
implemented (see OEPM Notification).
The PLT also states how to establish the filing
date when a part of the description or drawing is
missing from the initially filed application. Before
the implementation of the PLT by said Notification,
the filing of a missing part resulted in the
accordance of a later filing date if this missing
Page 6
part contained matter which was not comprised
extension was 15 days or 1 month) and required
in the application as filed. However, Art. 5(6)(b)
that the request for time extension is filed before
PLT states that if the application claims priority of
the expiration of the original deadline.
an earlier application and the missing part or
drawing is “completely contained” in the earlier
application, the originally accorded filing date
shall be maintained.
Standardized application and forms
Regarding this matter, PLT incorporates in Art. 6(1)
the provisions of the Patent Cooperation Treaty
(PCT) and its Regulations. PLT Contracting States
will not require compliance with any requirement
which is not included in this Treaty.
On the other hand, the PLT provides three types of
relief procedures, in Arts. 11(1) and 11(2). Firstly,
an extension of the time limit (for at least two
months) may be requested wherein an applicant
or owner requests the extension prior to the
expiration of the time limit. This is the option
which has been adopted by the OEPM (as detailed
in the Notification). Secondly, an extension of the
time limit (for at least two months) may be
requested wherein an applicant or owner requests
the
extension
after the
expiration
of the
Time limit extension
unobserved time limit. The third remedy is the
The OEPM Notification states that a two-month
provision of continued processing, which is
extension of time will be granted if no third party
available within two months from the notification
is affected. The current Law provides an extension
by the Office reporting the failure to comply with
of time equal to half the time period to be
the originally set time limit.
extended.
A PLT Contracting Party is not obliged to provide
No extension will be granted for the following
the first type of extension (extension prior to the
time periods:
expiration of the time limit), but Spain has
- an already extended period;
decided to adopt this option. However, the OEPM
is also obliged to provide either the second type
- the period to request an extension or a
of extension (extension after the expiration of the
reestablishment of rights;
time limit) or continued processing. Relief under
- the period to pay annuity fees; and
these provisions is limited to non‐compliance with
- the period to restore or correct the right of
priority.
Avoiding loss of rights
Spanish Law only contemplated the possibility to
extend any period by 50% of its duration (as time
limits are usually either one or two months, the
a time limit fixed by the Office regarding an action
to a procedure before said Office; specifically, it
does not apply to time limits the duration of
which are fixed in the law. The Notification lists
Page 7
the cases when no extension can be requested:
periods: the period to request an extension or a
an already extended period; the period to request
reestablishment of rights; the period to restore or
an extension or a reestablishment of rights; the
correct the right of priority; the period to issue an
period to pay annuity fees; the period to restore
appeal or the period to file a response in an “inter
or correct the right of priority; the period to issue
partes” procedure.
an appeal; or the period to file a response in an
“inter partes” procedure).
Correction and addition of a priority claim
The PLT adopts provisions according to Article 13
Reinstatement of rights
enabling the possibility of addition and correction
Art. 12 PLT regulates reinstatement of rights in
of
cases where an applicant or owner fails to meet a
applications. This provision closely mimics those
time limit and, as a consequence, loses his/her
established in Rule 26bis.1 of the PCT and has
rights with respect to an application or patent
been confirmed by the Notification, which,
unintentionally or in spite of all due care required
contrary to the PCT, does not require that a
by the circumstances. Rule 13(2) PLT provides
request for correction or addition be filed during
that the time limit to request reinstatement of
the
rights should be not less than two months from
international filing date.
the date in which the reason of the non‐
compliance with the time limit is removed, or no
priority
claims
four-month period
for
national/regional
extending
from the
Restoration of the priority right
less than twelve months from the expiration of
The PLT also provides the restoration of the
the missed time limit, whichever is shorter. In
priority right in two cases. The first, according to
contrast to relief in respect of time limits,
Art. 13(2), applies when an application is filed
reinstatement of rights is applicable to all time
after the expiration of the 12‐month priority period,
limits, including time limits in which the duration
if the failure to claim priority within the Paris
is fixed in the law, but this requires proving all
Convention period occurred in spite of all due
due care or non-intentionality. The Notification
care taken by the applicant or was unintentional.
confirms the availability of this remedy, which
The request for restoration including the filing of
was already introduced in patent law by the 7
th
the application must be made within a time limit
Additional Regulation of Spanish Trademarks Law,
of at least two months from the date in which the
in the same terms as the PLT provides. However,
priority period expired. This option was not
the Notification establishes that reinstatement
present under Spanish Law until the Notification
should not be available in respect of the following
was issued, as Spain had previously established a
reservation regarding this aspect. The reservation
has since been withdrawn, and the OEPM has
notified the International Bureau that, in its
capacity as a Receiving Office and a Designated
Page 8
“The due care criterion applied by
the Receiving Offices has been
assessed”
Office, it applies the “due care” criterion to
practices of several Offices acting as Receiving
requests for restoration of the right of priority.
Offices and Designated Offices under the PCT
The second case, mentioned in Art. 13(3),
were re-assessed. Based on this review, a number
provides restoration of the priority right wherein
of modifications have been made to the PCT
an applicant cannot submit a copy of an earlier
Receiving Office Guidelines (paragraph 166), with
application within sixteen months from the
effect from 1 July 2013, so as to provide detailed
priority date because of a delay in the Office with
guidance to Receiving Offices on how to process
which the earlier application was filed. This
incoming requests for restoration of the priority
possibility is not mentioned in the Notification.
right and on the interpretations of the “due care”
and “unintentional” criteria.
Paper and electronic communications
PLT Contracting Parties are given the opportunity
to exclude paper filing, but they are obligated to
accord a filing date for any application filed in
paper
form
and
to
accept
the
filing
of
communications on paper for the purpose of
meeting a time limit.
In principle, each Receiving and Designated Office
is free to apply either the less strict criterion of
“unintentionality” or the stricter criterion of “due
care”. Each Office must apply at least one of
those criteria but may also apply both. The only
exception to this general rule is set out in PCT
Rules
26bis.3(j),
49ter.1(g)
and
49ter.2(h),
according to which those Offices applying a
national law that by 5 October 2005 was
incompatible with the PCT provisions dealing with
the restoration of the priority right were given the
Laura de la Vega
option not to apply the rules relating to
Associate
restoration of the priority rights if they had
European Patent Attorney
informed
the
International
Bureau
(IB)
RESTORATION OF THE PRIORITY RIGHT UNDER
accordingly not later than 5 April 2006.
THE PCT
A.- Request for restoration of the priority right
In 2007 the Patent Cooperation Treaty was
before the Receiving Office
amended
of
In order to validly request restoration of the
requesting restoration of the priority right with
priority right during the international phase, the
the aim of aligning the PCT with the provisions of
applicant is required to file a request for
to
introduce
the
possibility
the Patent Law Treaty. This possibility was
governed by PCT Rules 26bis.3 (Receiving Offices)
and 49ter (Designated Offices) and entered into
force on 1 April 2007. In 2012 the restoration
Page 9
restoration, submit a statement of reasons for the
Based on the statement of reasons filed by the
failure to file the international application within
applicant, the concerned Receiving Office decides
the priority period, claim priority of an earlier
whether to restore the priority right, with the
application
for
proviso that if the Office intends to refuse the
requesting restoration, if applicable, within two
request for restoration, it must notify the
months from the date in which the priority period
applicant
expired. The request for restoration of the priority
observations within a reasonable time limit
right may be made on the request form of the
and/or to submit a declaration or other evidence.
international application or by filing a separate
The Receiving Office shall then notify the final
request within the mentioned time limit.
decision to restore or to refuse to both the
and pay the
fee
required
In the event where the competent Receiving
Office has notified the IB of the incompatibility of
the restoration of the priority right with its
and
allow
him/her
to
submit
applicant and the IB, indicating the facts and
reasons for its decision, as well as the criterion
for restoration applied.
national law and receives a request to restore the
A decision by a Receiving Office to restore a
priority right, the Office shall request that the IB
priority
act as the Receiving Office for said international
“unintentionality” will be effective only in those
application. Today, the Offices whose notice of
Designated States that apply that criterion,
incompatibility is still in force correspond to the
whereas a decision to restore the priority right
following
Algeria,
based on the “due care” criterion will, as a
Belgium, Brazil, Colombia, Cuba, the Czech
general rule, be effective in all Designated Offices,
Republic, Germany, Greece, India, Indonesia, Italy,
except those Offices which have submitted a
Japan, the Republic of Korea, Norway and
notification of incompatibility with their national
Philippines*.
law under Rule 49ter.1(g). Nowadays, these
PCT
Contracting
States:
* In the Sixth Session of the PCT Working Group held in
Geneva in May 2013, the Delegations of Japan, Spain
and the United States of America indicated that they
expected to be able to withdraw their notifications of
incompatibility under the rules relating to restoration of
the right of priority in the near future. Spain notified
the International Bureau of the withdrawal, with effect
from 6 November 2013, of the notifications of
incompatibility with its national law of the provisions
related to the restoration of right of priority.
right
based
on
the
criterion
of
Offices correspond to the following contracting
States: Algeria, Brazil, Canada, China, Colombia,
Cuba, the Czech Republic, Germany, India,
Indonesia, Japan, the Republic of Korea, Lithuania,
Mexico, Norway, Philippines, Turkey and the
United States of America*.
A decision by a Receiving Office to refuse to
restore the right of priority can always be
reviewed by a Designated Office. On the contrary,
a positive decision may be reviewed by a
Designated
Office
only
when
there
exists
Page 10
reasonable doubt that one of the substantive
failure to file the international application within
requirements for restoration was in compliance,
the priority period occurred in spite of “due care”
in which case the Designated Office shall notify
required by the circumstances having been taken.
the applicant, giving an opportunity to submit
observations within a reasonable time limit.
Generally, an applicant is considered to have
exercised “due care” if he/she can demonstrate to
B.- Request for restoration of the priority right
have taken all the necessary measures that a
before a Designated Office
reasonably prudent applicant would have taken.
The PCT also provides for requests for restoration
of the right of priority before Designated Offices
during the national phase (Rule 49ter.2). In this
case, the applicable time limit for filing said
request for restoration, stating the reasons for
failure to file the international application within
the priority period and paying any required fee for
requesting restoration, is one month from the
time limit under Article 22 for entry into national
phase. Based on the statement of reasons filed by
the applicant, the concerned Designated Office
decides whether the criterion applied by that
Office is satisfied. This provision is applicable to
Although the “due care” criterion is assessed on a
case-by-case basis, the updated Guidelines for
the Receiving Offices explain the application of
the “due care” criterion to a number of factual
circumstances, aiming to be of assistance to both
the
Receiving
Offices
and
the
applicants.
Specifically:
Lack of knowledge by the applicant
Failure to file the international application within
the priority period due to lack of knowledge of the
PCT system or of the priority period is generally
considered not to meet the due care criterion.
all Designated Offices, except those for which the
Lack of financing
notice of incompatibility under 49ter.2(h) is still
An applicant failing to file the international
in force, namely: Algeria, Brazil, Canada, China,
application within the priority period due to
Colombia, Cuba, the Czech Republic, Germany,
financial constraints is generally considered not
India, Indonesia, Japan, the Republic of Korea,
to have acted with due care.
Mexico, Norway, Philippines, Turkey and the
United States of America*.
Applicable criteria
Human error
Human errors attributable to increased workload,
lost files and incompletely filed PCT applications
The “unintentional” criterion is considered to be
is generally evidence of lack of “due care”. A
satisfied if the applicant demonstrates that
human error by an assistant is not attributed to
he/she did not deliberately refrain from filing the
international application within the priority period.
The “due care” criterion is harder to satisfy, since
the applicant must reasonably prove that the
Page 11
the agent if it can be shown that the assistant
applicant’s/agent’s
was reliable, experienced and well trained and
applicant/agent
that the failure to observe the priority period was
vigilance when filing an international application
an isolated human error.
on the last day or even during the last hours of
Miscommunication between applicant and agent
control.
takes
A
particular
prudent
care
and
the priority period. Where technical problems
exist during the submission of an international
Where the failure to observe the priority period
application, a prudent applicant/agent exhausts
was caused by technical difficulties leading to
all reasonable alternative means to timely file the
miscommunication between applicant and agent,
international application.
both may have acted with due care if they can
demonstrate that the system had worked reliably
Postal Service Difficulties
in the past and that the breakdown was
A prudent applicant/agent mails an international
unforeseeable.
application to the Receiving Office at least five
Absence from the office
days prior to the expiration of the priority period
by registered airmail (applicants or agents need
Illness or vacation is generally not sufficient to
not use airmail if surface mail normally arrives
satisfy the due care criterion unless the illness of
within two days of mailing or if airmail is
the applicant/agent is unexpected and requires
unavailable). The due care criterion may be met if
urgent treatment prohibiting communication with
the international application would have been
other persons.
timely filed under normal circumstances and the
Docketing system error
postal delay was unforeseeable.
Due care can be shown where the failure to file in
Force Majeure
due time the international application was due to
An event of force majeure means external,
an unexpected and unforeseeable technical error
unforeseeable and/or unavoidable circumstances
in a reliable and well-functioning reminder system
beyond the control of the applicant/agent, such
used by sufficiently trained and supervised staff.
as natural disasters, international conflicts and
Facsimile or Software Submission Failure
war. Generally, if such circumstances make it
In order to satisfy the due care criterion, it must
be shown that the error occurred due to an
external technical problem that was beyond the
impossible for an applicant/agent to file the
international application within the priority period,
the failure to file the application is considered to
have occurred in spite of due care having been
taken. An applicant/agent generally acted with all
due care if he/she is able to demonstrate that the
consequences of the event could not have been
predicted and/or avoided.
Page 12
“EBoA decisions G2/12 and G2/13 are
expected to clarify the patentability of
claims directed to products obtained
by essentially biological processes”
Conclusion
have created doubts regarding the interpretation
In conclusion, it should be stressed that it is
generally hard to prove to the satisfaction of the
concerned office that the failure to file the
international application within the priority period
occurred in spite of due care required by the
circumstances having been taken. Also, it should
of said Rule.
Background
European patent EP 1 211 926 B1 was granted with
the following independent claim:
1.
A method for breeding tomato plants that
be noted that even when the restoration of the
produce tomatoes with reduced fruit
priority right is granted, it will have no effect in a
water content comprising the steps of:
number of potentially relevant states.
crossing
at least one
Lycopersicon
esculentum plant with a Lycopersicon
spp….;
collecting the first generation…;
growing plants…;
Irene Vázquez
pollinating the plants…;
Patent Adviser
collecting the seeds…;
European Patent Attorney
growing plants from the seeds…;
allowing plants to remain on the vine…;
THE TOMATO AND BROCCOLI CASES: A NEVER-
and
ENDING STORY
screening
for
reduced
fruit
water
content...
According to Article 53(b) of the European Patent
Convention (EPC), European patents shall not be
Similarly, European patent EP 1 069 819 B1 was
granted in respect to plant or animal varieties or
granted with the following independent claim:
to essentially biological processes for the
production of plants or animals.
Rule 26(5) EPC defines an essentially biological
process as the following: “a process for the
production of plants or animals is essentially
biological if it consists entirely on natural
phenomena such as crossing or selection”.
However, the famous Tomato and Broccoli cases,
still pending before the European Patent Office,
1.
A method for the production of Brassica
oleracea […] which comprises:
(a) crossing
wild
Brassica
oleracea
species…; and,
(b) selecting hybrids...
Notices of Opposition were filed in both cases.
Page 13
One of the alleged grounds (in both cases) was
based on the exclusion of essentially biological
processes according to Article 53(b) EPC.
The Opposition Division decided to maintain
European Patent EP 1 211 926 B1 in amended form
based on a third auxiliary request having claims
directed to a raisin-type tomato fruit which could
be obtained by the process of claim 1 as initially
Opposition Division was appealed.
First referral
The Technical Board of Appeal for the Broccoli
case (T0083/05) and for the Tomato case (T
1242/06) decided to refer similar questions of law
to
the
Enlarged
Board
of
Appeal
(EBoA)
concerning Article 53(b) EPC.
granted but comprising no features related to the
The Enlarged Board of Appeal concluded in
process.
consolidated decisions G2/07 (Broccoli case) and
Similarly,
during
opposition
proceedings,
European patent EP 1 069 819 B1 claim 1 was
amended to include the use of molecular markers
in the selection steps, and the Opposition Division
considered
that
this
claim
fulfilled
the
requirements of Article 53(b) EPC. Thus, claim 1
was amended to read:
1.
G1/08 (Tomato case) that a biological process
should be excluded from patentability if it
contains steps of sexually crossing the whole
genomes of plants and subsequently selecting
plants. Said exclusion would still apply even if it
further contains a step of technical nature serving
to enable or assist plant selection. Therefore, the
processes claimed in these two patents were
A method for the production of Brassica
excluded from patentability under Article 53(b)
oleracea […] which comprises:
EPC, falling under the category of essentially
(a) crossing
wild
Brassica
oleracea
The patentees’ responses
species...;
(b) selecting hybrids…;
(c) backcrossing
biological processes.
and
After decisions G2/07 and G1/08, the patentees of
selecting
plants…; and
the Broccoli and Tomato patents deleted the
unpatentable process claims for breeding broccoli
and tomatoes and subsequently filed product
(d) selecting a broccoli line
claims directed to fruits, plants and parts of the
wherein molecular markers are used in
plant obtained by the essentially biological
steps (b) and (c) to select hybrids…
process (i.e., product-by-process claims).
However, in both cases the decision of the
Specifically in the Broccoli case, new claim 1
literally incorporates the rejected process claims:
1.
An edible Brassica plant produced
according to a method for the production
Page 14
of Brassica oleracea […] which
The following are the current pending questions:
comprises:
1. Can the exclusion of essentially biological
(a) crossing wild Brassica oleracea
processes for the production of plants in Article
53(b) EPC have a negative effect on the
species…;
allowability of a product claim directed to plants
(b) selecting hybrids…;
or plant material such as plant parts or a fruit?
(c) backcrossing and selecting
2. In particular:
plants…; and
(a)
(d) selecting a broccoli line
Is a product-by-process claim directed to
plants or plant material other than a plant variety
wherein molecular markers are used in
allowable if its process features define an
steps (b) and (c) to select hybrids…
essentially biological process for the production
The main request also contained claims relating
of plants?
to an edible portion of the broccoli plant and a
(b)
seed of a broccoli plant produced according to
material other than a plant variety allowable even
this method. Thus, these claims cover plants and
if the only method available at the filing date for
plant parts produced by an excluded process.
generating the claimed subject-matter is an
During proceedings auxiliary requests were filed
essentially biological process for the production
containing certain disclaimers. Specifically, claim
of plants disclosed in the patent application?
1 of the first auxiliary request was identical to
3. Is it of relevance in the context of questions 1
claim 1 of the main request but adding the
and 2 that the protection conferred by the product
disclaimer:
not
claim encompasses the generation of the claimed
encompass an essentially biological process for
product by means of an essentially biological
producing the plant”.
process for the production of plants excluded as
Second referral
such under Article 53(b) EPC
The answers provided in G2/07 and G1/08 were
4. If a claim directed to plants or plant material
not directed to fruits or plants obtained by an
other than a plant variety is considered not
essentially biological process. Therefore, the
allowable because the plant product claim
Technical Boards of Appeal has decided to refer
encompasses the generation of the claimed
further questions of law to the Enlarged Board of
product by means of a process excluded from
“wherein
the
claim
does
Appeal in a second referral (case numbers G2/12
and
G2/13)
which
will
consolidated proceedings.
be
considered
in
Is a claim directed to plants or plant
Page 15
patentability under Article 53(b) EPC, is it
claims
possible to waive the protection for such
essentially biological processes when formulated
generation
as product by process claims.
by
"disclaiming"
the
excluded
process?
directed
to
plants
obtained
from
The Dutch court found that the claimed plants are
Considerations
patentable under Article 53(b) EPC. According to
Prima facie, it seems that maintaining product
claims directed to the fruit and the plant would be
contradictory to decisions G2/07 and G2/08.
Since the protection conferred by a product claim
is absolute, the patent proprietor would have the
right to exclude others from making the patented
the court, in view of the distinction made under
the EPC between processes and products, it has
to be assumed that the legislators, when using
the word “process” in Article 53(b) EPC,
deliberately choose not to bring products within
the scope of this part of the Article.
product by the unpatentable essentially biological
Regarding the pending Tomato and Broccoli cases,
process, thus making the process for breeding
third parties were given the opportunity to file
these products not freely available for use by
written statements for case number G2/13 until
other breeders for commercial purposes. If
the end of November 2013.
product
claims
were
considered
allowable,
propietors could easily overcome the process
exclusion by claiming the product and obtaining a
protection broader than the one they could have
obtained by the excluded process claim.
In this respect, it seems that the patentee of the
Broccoli patent has tried to avoid such an
objection by disclaiming the part of the product
claim that causes the violation of the process
exclusion.
However,
Thus, an end of these proceedings and a final
clarification of the relevant questions for the
parties to the proceedings and the public are not
yet in sight.
However, the President of the European Patent
Office has decided that, considering the potential
impact of the two referrals, all substantive
proceedings
before
the
EPO
first-instance
departments (examining and opposition divisions)
wherein the decision depends entirely on the
these
considerations
have
not
outcome of the decision of the Enlarged Board of
prevented national courts to rule in favor of
Appeal will be stayed ex-officio until the Enlarged
patentability of similar product claims. In the case
Board of Appeal issues its decision.
Taste of Nature vs Cresco, on 8 May 2013 the
Dutch Courts confirmed the patentability of
Page 16
“The ECJ ruled that the last ‘may’
mentioned in Article 76(2) grants
OHIM broad discretion to decide to
accept newly filed evidence.”
evidence of use that had been filed by the
Rocío Jiménez Duch.
Spanish Patent & Trademark
Agent
European Community Trademark
and Design Attorney
opponent after the original deadline for filing
EUROPEAN COURT OF JUSTICE (ECJ) CONCLUDES
“FISHBONE”, New Yorker Jeans requested that
THAT SUBMISSION OF ADDITIONAL PROOF OF
the opponent provide proof of use of the earlier
USE REMAINS POSSIBLE AFTER THE EXPIRY OF
national trademark relied upon for the purposes
THE TIME LIMIT.
of the opposition, pursuant to Article 43 of the
Rule 22(1) of Regulation 2868/95 provides that
“Where pursuant to Article 43 (2) or (3) of the
Community Trademark Regulation (90/94) [now
proof of use had ended.
During the course of opposition proceedings
concerning its application for the word trademark
Community
Trademark
Regulation
(40/94)
(actually Article 42 of the Community Trademark
Regulation, 207/2009).
Article 42 (2) or (3) of the Community Trademark
The opponent proceeded to file evidence of use
Regulation, 207/2009], the opposing party has to
within the deadline given by OHIM, but New
furnish proof of use or show that there are proper
Yorker Jeans claimed that such evidence was
reasons for non-use, OHIM shall invite him to
insufficient to prove genuine use. OHIM gave the
provide the proof required within such period as it
opponent a further period within which to submit
shall specify. If the opposing party does not
observations
provide such proof before the time limit expires,
response, the opponent submitted more proof of
OHIM shall reject the opposition”.
use that consisted of various catalogues.
The language used in said provision seems to
Further in the proceeding, OHIM upheld the
indicate that any evidence submitted after the
opposition, taking into account, in particular, one
deadline set by the OHIM will not be taken into
of the mentioned catalogues.
account. However, a recent decision issued by the
European Court of Justice (ECJ) makes such a
conclusion not inevitable when relevant proof of
use has indeed been submitted within said time
limit.
in
response.
When
filing
its
The Board of Appeal and, hereinafter the General
Court, likewise, upheld the decision adopted by
OHIM, taking the view, first, that it had been
correct to take into account the additional
evidence lodged after the initial deadline for filing
In New Yorker SHK Jeans vs. Office for
proof of use and, second, that there was, in this
Harmonisation in the International Market (OHIM),
case, sufficient proof of use of the earlier
Case C-621/11 P of 18 July 2013, the ECJ has
dismissed an appeal brought by New Yorker SHK
Jeans GmbH& Co KG and has decided that OHIM
was entitled to take into account additional
Page 17
trademark.
New Yorker Jeans appealed the decision before
production of additional evidence of that use after
the initially set time limit.
the ECJ arguing that, since the evidence
The ECJ ruled that the last ‘may’ mentioned in
produced within the period initially set by OHIM
Article 76(2) grants OHIM broad discretion to
was not sufficient to establish genuine use of the
decide to accept newly filed evidence.
earlier trademark, OHIM was obliged to reject the
opposition under the second sentence of Rule
22(2) of Regulation No. 2868/95. The appellant
argued that Rule 22(2) had to be interpreted in
light of the rule set out in Article 76(2) of
Regulation No. 207/2009 which provides that
“OHIM may disregard facts or evidence that are
not submitted, within due time.”
It also clarified that, although, admittedly, the
literal wording of Rule 22(2) indicates that, when
no proof of use of the trademark concerned is
submitted within the time limit set by OHIM, the
opposition must be automatically rejected by
OHIM; such a conclusion is not, on the other hand,
inevitable when proof of use has indeed been
submitted within the initially fixed time limit. In
According to New Yorker Jeans, such an
such case, and unless it appears that the newly
interpretation would not unduly disadvantage the
filed evidence is irrelevant to prove genuine use,
opposing party, since it knew, before filing its
the evidence should be accepted.
opposition, that, on demand, it might have to
prove genuine use of its earlier mark, to prevent
the rejection of its opposition. The appellant also
argued that the opponent had ample time to do
so, and additionally it also had the possibility to
request an extension of the period for filling proof
of use.
The ECJ also explained that Article 42(1) of
Regulation No 207/2009 provides that the OHIM
shall invite the parties, as often as necessary, to
file their observations with respect to any
notification sent by the Office or to any
communication from the other parties. In such
situation, if the opposition is subsequently
OHIM contended that the General Court, in the
rejected due to lack of sufficient proof of genuine
judgment under appeal, correctly interpreted Rule
use of the earlier mark, that rejection does not
22(2) of Regulation No. 2868/95 holding that,
result
where relevant proof of use of the trademark had,
Regulation No 2868/95--a provision that is
as in the present case, been submitted within the
essentially procedural--but exclusively from the
initial time limit set by the Office under such
application of the substantive provision in Article
provision, the Rule does not prevent subsequent
42(2) of Regulation No 207/2009.
from
application
of
Rule
22(2)
of
For the above-mentioned reasons, the ECJ
concluded
that
where
evidence
considered
relevant for the purposes of establishing use of
the trademark at issue is produced within the
Page 18
“On 25 September 2013, ABG staff
met together to celebrate the firm’s
10th anniversary”
time limit set by OHIM under Rule 22(2) of
and should, as well, keep in mind that the OHIM
Regulation No 2868/95, the submission of
decisions are not exempt from judicial review.
additional proof of said use remains possible
after the expiry of that time limit. In such case,
OHIM is in no way prohibited from taking this
evidence into account even if it was submitted
after the time-limit through use of the discretion
ABG’S NEWS AND ACTIVITIES
conferred on it by Article 76(2) of Regulation No
ABG Patentes celebrates its 10th Anniversary
207/2009.
Ten years ago, three patent attorneys founded
In my opinion, this judgment creates additional
complexity for professionals advising trademark
proprietors in opposition procedures, since they
will have to decide whether or not to challenge
perceived insufficient evidence of use, namely in
circumstances wherein doing so might provide
the opponent with another opportunity to improve
its position with additional evidence in reply.
On the other hand, a professional advisor of the
ABG Patentes with the aim of providing high
quality IP services to their clients. Since then, the
firm has grown steadily to become a well-known,
internationally recognized Spanish IP firm with
one of the largest team of patent and trademark
attorneys in Spain, including twelve European
Patent Attorneys, six Spanish Patent & Trademark
Agents and four Attorneys-at-Law, and offices in
Madrid and Barcelona.
opponent has the option of filing new evidence
after the expiry of the initially set time-limit if the
applicant alleges that the initially filed evidence is
insufficient to prove use. Furthermore, for the
case the opposition division rejected the evidence
newly filed out of time limit, the opponent has the
possibility to file it again with an appeal, so it can
be taken into account by the appeal division.
Nevertheless, although the ECJ grants broad
discretion to the OHIM to decide whether or not to
take into account evidence filed after the expiry of
On 25 September, ABG staff met together to
the initial time-limit set by the Office in opposition
celebrate the firm’s 10th anniversary. The day
proceedings, opponents’ advisors should not
forget that in this judgment the ECJ also
establishes the limits to exercise such discretion,
Page 19
started with a visit to “La Granja de San
Trademark Agents working at ABG Patentes.
Ildefonso” Royal Palace in Segovia, including a
guided tour of the best-preserved 18th century
gardens. After the tour the team was offered
some time to fleet before concluding the event
New
with a delightful lunch in the “Parador de La
Patentes
Granja”.
European
Vicente
Patent
González
Attorneys
(M.Sc.,
at
ABG
Chemistry
(Biochemistry & Molecular Biology) and M.Sc.,
Irene
Biotechnology),
Biomedicine)
Organic
Marta
and
Chemistry)
Vázquez
(Ph.D.,
Rodríguez
(Ph.D.,
recently
passed
the
demanding European Qualifying Examination
(EQE) and are now in the register of qualified
European Patent Attorneys. This brings up to
twelve the number of qualified European Patent
Attorneys working at ABG.
New Spanish Patent and Trademark Agent at
ABG Patentes
We are pleased to announce that Gustavo A. de
Dios (M.Sc. in Aeronautical Engineering) recently
passed the “Spanish Industrial Property Agent”
Qualifying Examination and will be able to act as
Spanish Patent and Trademark Agent before the
Spanish Patent and Trademark Office (SPTO), as
well as before the Office of Harmonization for the
Internal Market (OHIM). This will bring up to
seven the number of qualified Spanish Patent and
ABG
Patentes
increases
its
educational
initiatives
On 8 November 2013, Dr. Paula Carrero, patent
adviser for ABG Patentes Chemistry Department,
spoke at the “Company and chemical industry”
workshop as part of the “X Symposium of Young
Researchers of the Spanish Royal Society of
Chemistry (RSEQ) and Sigma-Aldrich” organized
by the Universidad Rey Juan Carlos, the
Universidad Autónoma de Madrid and the
Instituto
Madrileño
de
Estudios
Nanociencia (IMDEA Nanoscience).
Avanzados
Page 20
On 11 November 2013, Fernando Prieto, European
Patent
Attorney
and
a
Head
of
the
Electromechanical Department at ABG Patentes,
together with Dr. Laura de la Vega (European
Patent
Attorney
and
an
associate
of the
Electromechanical Department at ABG Patentes),
spoke at the conference entitled “Patent Session
and Intellectual Property” as a part of the Master
and Doctoral Program “Research in advanced
technologies and processes in the industry”
organized by the Universidad de Vigo and held at
the Escuela Técnica Superior de Ingenieros
Industriales de Vigo.
On 26 November 2013, three ABG partners, Juan
Arias (M.Sc. in Chemistry and a European Patent
Attorney), Vicente González (M.Sc. in Chemistry
(Biochemistry
&
Molecular
a European
Patent
Attorney)
Biology)
and
and
Agustin
Alconada (Ph.D. in Pharmacology and a European
Patent Attorney), have delivered the workshop
entitled “Technology transfer through patents”
as
part
Session
of
the
Technology
Transfer
“From scientific knowledge to the
market”, organized by the Universidad de Navarra
and the Enterprise Europe Network in Pamplona
(Navarra).
ABG Patentes, S.L.: The firm
ABG Patentes, S.L. (ABG) is one of the leading Spanish IP firms and provides highly-qualified advice on
intellectual property in all its fields and aspects.
ABG, founded in Madrid in 2003, now boasts almost sixty expert staff in all IP fields in its Madrid and Barcelona
offices. ABG staff combines in-depth technical knowledge (over twenty ABG attorneys and advisers have
advanced degrees covering a full range of technical disciplines, including chemistry, biotechnology and
electronics and most of them hold PhDs and have industrial or academic work experience in Spain, other parts of
Europe, and the United States) and legal expertise (including three former EPO examiners, twelve qualified
European Patent Attorneys, six Spanish Industrial Property Agents, four Attorneys-at-Law, and Community
Trademark & Design Attorneys).
This combination reinforces high quality service and dedication to the creation and enforcement of our clients’ IP
rights.
Our specialist practice groups serve clients in the fields of:
Chemistry, Pharmaceutical and Chemical Engineering
Biotechnology, Biology and Life sciences
Electronics, Mechanics and Telecommunications.
Newsletter No. 2 – December 2013