Monday, 15 February 2010

Non-EPC law for the EQE

Someone asked me what they need to know about US, JP, KR, CN patent law.

The Examination Board has provided the PCT Applicants Guide - you can, in principle be asked about the national entry requirements found in National Phase part, per state. For each state an overview is given of the requirements. I have limited the list that I think could possible be relevant to:
- National chapters for biggest offices CN, EP, JP, KR, US
- "National" chapters for other regions: AP, EA, OA
- National chapters for all EPC members states; and all Extension states (AL, BA, RS)
- National chapters for top 15 dO/eO's not yet mentioned: AU, BR, CA, IL, IN, MX, NZ, RU, SG, ZA

You never need to cite the national legal basis - only EPC / PCT and PC is required.
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US and JP
Officially (from Art.13 REE), you are expected to know
(b) the United States of America and Japan to the extent that they are of importance in connection with
proceedings before the EPO.
This is rather vague, but the assumption is that you encounter these topics during your 3 years of practical experience. The topics you should know something about are:

US
  • 1 year grace period to file from a disclosure
  • Interference
  • First to invent (generally)
  • Inventors are applicants (see also PCT)
  • Information disclosure statement (IDS)
  • Continuing patent application (continuations and continuations-in-part)
  • Possibility to patent business methods
  • Doctrine of equivalence
  • Provisional applications
  • Attorney-client privilege as implemented in EPC (Art.134a(1)(d), R.153)

JP
  • 6 month grace period to file from a disclosure
You do not need to know the details. It is more about knowing the possibilities under US and JP law which are different from the EPC. You never need to cite US or JP national law of office guidelines.

Unfortunately, I do not have a single document dealing with these points. However, a good resource is Wikipedia for the US and JP. This is about the level you need to know it.

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