MOPP update

Updates incorporated into the January 2014 version of the UKIPO Manual of Patent Practice (MOPP) include:

• the disclosure of a published divisional application entitled to a declared priority date, where the claims of the parent were not, constitutes novelty destroying prior art under Article 54(3) EPC, in view of T 1496/11 (see 15.22);
• brief explanations are to be added by search examiners to letters accompanying supplementary search reports, concerning highly relevant internet disclosures where a publication date cannot be established (see 17.54 and 17.83);
• details on citation formats in PROSE have been removed from 17.75 and are now accessible at http://www.ipo.gov.uk/practice-citation.pdf;
• updates stating that examination opinions may be issued to unrepresented applicants (see 17.83.4 and 17.94.10);
• updates to sections 17, 18 and 89A to reflect the UKIPO’s move to the CPC classification system;
• an update to reflect the introduction of a hearings guidance leaflet (see 18.79).

Updates in SPC Practice include:

• an update concerning the definition of “product” in SPCs relating to medicinal and plant protection products, in light of the judgement of the CJEU in C-210/13. The CJEU determined that an adjuvant does not fall within the definition of “product”, when considered either alone or in combination with an active ingredient (see SPM1.04.1);
• questions concerning the correct test to apply when deciding whether a product is protected by a basic patent under Article 3(a) of the SPC regulation, and the post-grant amendment of a patent or SPC grant certificate to provide the protection required under Article 3(a), have been referred to the CJEU in Actavis Group and Actavis UK v Boehringer Ingelheim Pharma [2013] EWHC 2927 (Pat) (see SPM3.02.1, SPM3.02.5 and SPM10.14.1);
• an update to what is required in a request for the grant of a SPC certificate, concerning the specification of the first authorisation in the EU, in light of the Judgment of the CJEU in C-617/12 (see SPM8.02);
• where the earliest authorisation is one granted by a decision of the European Commission following a favourable opinion from the EMA, the date of authorisation will be taken to be the date of notification with the duration of the SPC being calculated from this date, in light of the decision in BLO/418/13 (see SPM8.03.1, SPM10.15 and SPM13.05.1);
• in C-210/12 the CJEU confirmed that Article 3(1)(b) should be interpreted as precluding the issue of a SPC for a plant protection product in respect of which an emergency MA has been issued, and that Articles 3(1)(b) and 7(1) are to be interpreted as precluding an application for a SPC being lodged before the date on which the plant protection product has obtained the MA referred to in Article 3(1)(b) (see SPP3.02.1 and SPP7.01).

A summary of all changes can be found at http://www.ipo.gov.uk/practice-tablechange.pdf.

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