HOFFMANN EITLE Quarterly Newsletter 3/23

Veröffentlichung | 15.03.2023

Dear Colleagues and Friends,

In this first issue of the Hoffmann Eitle Quarterly for 2023, we begin by concluding our four-part series on the patenting of computer-implemented inventions and artificial intelligence (AI) at the EPO by looking at how knowledge of the EPO's practice on computer-implemented simulation methods can help in assessing the inventive step of AI inventions. In the second article, we look at recent EPO case law on the patentability of second medical use claims in view of clinical trial reports as prior art, followed by an article on the new EU Clinical Trials Regulation and its impact on the patenting of new medical uses of known pharmaceuticals. In the fourth article, we examine new administrative procedures for invalidity and revocation of trademarks in Italy, and in the fifth article we take a look at how to oppose French national patents and how the procedure for doing so differs from the EPO opposition procedure. The next article discusses T 1042/18, an important decision of the EPO Boards of Appeal on the admissibility of inventive step objections in appeal proceedings, and we then conclude by looking at the forthcoming end of the "ten-day rule" at the EPO. We very much hope that you will find this issue of the Hoffmann Eitle Quarterly informative, and, as always, we welcome your feedback.  

Nicolas Douxchamps
Editor-in-chief of the Hoffmann Eitle Quarterly
Ir. (Electrical Engineering)
Partner - Belgian and European Patent Attorney
HE Electrical Engineering & IT Practice Group 


Driven by Technology: Patenting AI Before the European Patent Office (Part IV) 

In this fourth and final article of our series on AI inventions at the EPO, we look at computer-implemented simulation methods and how knowing the EPO's practice in relation to these methods can help in assessing the inventive step of AI inventions. 

Link to the article

Pre-published Clinical Trials: A Sudden Death for Second Medical Use Claims? 

The EPO Boards of Appeal issued numerous decisions in the past on the patentability of second medical use claims in view of clinical trial reports as prior art. This article reviews selected recent decisions and highlights relevant aspects that have been considered by the Boards in their inventive step analyses. 

Link to the article 

The EU Clinical Trials Regulation: Implications of the New Transparency Rules on Patenting 

Clinical trials (CTs) are scientifically controlled studies in humans to establish or confirm safety and effectiveness of investigational medicinal products (IMP). CTs can be particularly important for obtaining patent protection for new medical uses of known pharmaceuticals. 

Link to the article 

New Administrative Procedures for Invalidity and Revocation of Italian Trademark Registrations 

In Italy, new administrative procedures for invalidity and revocation of registered trademarks have recently come into force, making it possible to bring these actions before the Italian Patent and Trademark Office (UIBM) and not only before the ordinary courts as was previously the case. These new procedures are faster and cheaper than litigation in the Italian Courts. However, the more accessible administrative procedures will expose Italian trademark registrations to a higher risk of challenge. Trademark owners should therefore consider adopting preventive strategies. 

Link to the article 

Opposition to French Patents - A First Assessment 

Since April 2020, a new procedure introduced under French Patent Law allows for the opposition of granted national patents before the French National Institute of Intellectual Property (INPI). Compared to the better-known opposition procedure of the EPO, some aspects of French opposition appear to make it more patentee-friendly.

Link to the article 

Late-Filed Inventive Step Submissions - Lessons From T 1042/18 

T 1042/18 sets a high bar for admitting inventive step objections late during EPO appeal proceedings. Even if, in the opponent's view, a claim lacks novelty in view of a piece of prior art, the opponent must come forward with specific inventive step objections, at least on an auxiliary basis, at the beginning of the appeal proceedings. Otherwise, the objections may be rejected as late filed. 

Link to the article 

Abolition of the EPO's "Ten-Day Rule": Simplification and Closing of Gaps 

The European Patent Convention (EPC) currently stipulates that a communication is deemed delivered ten days after the date the EPO stamps on the document. This will no longer be the case as of November 1, 2023, bringing an end to the "Ten-Day Rule". 

Link to the article 

Should you have any questions or need more information, please do not hesitate to contact us. 

With best regards,