Innovation and Rights - Developing Biomedical Devices: Design, Innovation and Protection - page 28

• the holder can ile a petition for review 16 ;
• further processing is extended (it covers almost all those cases of non-obser-
vance of a time limit) also for the payment of fees;
• art 51(1) has been amended: inventions in all ields of technology are patenta-
ble (as established by the TRIPS agreement and by the Strasbourg Convention),
although the patenting of computer software is still forbidden:
• Other amendments are:
- Art. 52(4), now 53(c) (therapeutic, surgical and diagnostic methods are
excluded from patentability for ethical reasons and no longer for lack of
industrial application);
- Art. 54(4) (which was removed—now any European patent application filed
before but published later is prior art , regardless of the shared designated
States);
- Art. 54(5) (relating to the second medical use—instead of the Swiss - style
claim, protection of the product is allowed);
- Art. 69 (establishing that the scope of protection is determined by the
claims 17 ) and the relevant Protocol (a new paragraph has been added, 18 where
equivalent elements are mentioned for the first time);
• it is no longer necessary to designate at least one contracting State (all are auto-
matically designated upon filing the patent application);
• the cases where a translation of the priority application need to be iled are limited:
- (a) in case an opposition procedure is issued,
- (b) if filing by reference was made or (c) if missing parts have been found in the
description and/or in the drawings and these are disclosed in the priority document.
Some of these amendments are particularly relevant for examiners: now important
elements may be postponed (for example claims, the statement of existence of a
priority document) or strategies may be adopted (for example, the limitation of
a granted patent) which will certainly affect the examination stage of the patent
application and the publication of the same [ 3 , 26 ].
3.2.6 International Patent — The PCT Procedure
The international PCT 19 patent system allows patent protection to be applied for in
145 member states. The procedure involves the submission of a single application,
16 Only for procedural infringements (for example, the Board of Appeal has not summoned a
hearing requested by the appellant) and not for a substantive re-examination of patentability.
17 The description and the drawings are meant to help interpret the claims, but cannot be used to
integrate them and hence broaden the subject matter of the exclusive right.
18 “For the purpose of determining the extent of protection conferred by a European patent, due
account shall be taken of any element which is equivalent to an element specified in the claims.”
19 Patent Cooperation Treaty: a cooperation treaty signed in Washington relating to patents,
administered by the World Intellectual Property Organization (WIPO) located in Geneva.