IPL-6769

We provide below an unofficial translation of the prominent articles in the patents part of the recently enacted Industrial Property Law (IPL 6769). This summary only includes critical substantive law articles and Rule 76 is based on the draft regulations for the time being. A basic correspondence table can better summarize the essence of the following substantive law articles:

A82: A52+A53 EPC
A89: A69 EPC + the protocol thereof
A99: A100+A101 EPC
R76: Partly comprising R42 EPC

IPL 6769 Art. 82

(1) Patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.
(2) The following shall not be regarded as inventions. In cases where the subject matter of a patent application or a patent falls within the following subject-matters or activities, only said subject-matters or activities are excluded from patentability:
a) Discoveries, scientific theories and mathematical methods.
b) Schemes, rules and methods for performing mental acts, playing games or doing business.
c) Programs for computers.
ç) Aesthetic creations, works of literature and art, works of science.
d) Presentations of information.
(3) Patents shall not be granted for the following inventions:
a) Inventions against public order or public morals.
b) Plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof.
c) Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body.
ç) The human body, at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene, cannot constitute patentable inventions.
d) Processes for cloning human beings, processes for modifying the germ line genetic identity of human beings, uses of human embryos for industrial or commercial purposes, processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes.
(4) In the context of paragraph 3 subparagraph a, banning of commercial use of the invention by legislation does not imply said invention is against public order or public morals.
(5) Microbiological processes referred to in paragraph 3 subparagraph b specifies any process involving microbiological material, carried out by microbiological material or resulting in microbiological material, process for the production of plants and animals which contains or consists of natural steps such as crossing, selection and essentially biological processes.
(6) Provision of paragraph 3 subparagraph c shall not be applicable to products, especially materials and compositions used in any method given in said paragraph.

IPL 6769 Art. 89

(1) The extent of the protection conferred by a patent application or a patent shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.
(2) The interpretation of the claims shall not be restricted by the strict, literal meaning of the wording used in the claims. However, the scope of protection of the claims shall not be extended to include features intended to be covered by the inventor yet not claimed but on the other hand understood by a person skilled in the art using the description and drawings while determining said scope of protection.
(3) Claims are to be interpreted as conferring a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.
(4) For the period up to grant of the patent, the extent of the protection conferred by the patent application shall be determined by the claims contained in the application as published. However, the patent as granted or as amended in opposition, limitation or revocation proceedings shall determine retroactively the protection conferred by the application, in so far as such protection is not thereby extended.
(5) For the purpose of determining the extent of protection conferred by a patent application or patent, due account shall be taken of any element which is equivalent to an element specified in the claims at the time of the alleged infringement. An element shall generally be considered as being equivalent to an element as expressed in a claim if the equivalent element performs substantially the same function in substantially the same way and produces substantially the same result as the element as expressed in the claim.
(6) For the duration of the process of granting the patent or the duration in which the patent is in force, the statements of the proprietor of the patent application or patent to determine the extent of protection of the claims.
(7) The interpretation of the claims shall not be restricted by the examples disclosed in the description if such examples exist. Especially in cases where additional features of the product or method are not present in the examples disclosed in the patent, do not cover features disclosed in said examples or realize every objective or feature described in said examples, the product or method shall not be excluded from the extent of protection conferred by the claims.

Art. 99

(1) After the patent has been granted, third parties may file an opposition within six months of the grant being mentioned in the Bulletin based on the following grounds:
a) The subject-matter of the patent is not patentable under Articles 82 and 83,
b) The invention is not disclosed in a sufficient manner with regards to Article 92 (1) to (3).
c) The subject-matter of the patent extends beyond the content of the application as filed, or, if the patent was granted on a divisional application under Article 91 or on an application filed under Article 110(3)(b), beyond the content of the earlier application as filed.
(2) In cases where the opposition fee has not been paid within the time period given in paragraph 1 or the opposition has not been filed in accordance with the regulations, the notice of opposition shall not be deemed to have been filed.
(3) In cases where no opposition has been filed or the opposition has been deemed to not be filed, the final decision to grant the patent is published in the Bulletin.
(4) The patent proprietor is notified of the opposition by the Institute. The patent proprietor may file observations or amend the patent within three months of said notification. Opposition is examined by the Board taking into account the observations of and amendments proposed by the patent proprietor.
(5) If the Board is of the opinion that, the patent as is or as amended does not meet the requirements of this Law, it shall revoke the patent giving rise to revocation consequences given in Article 139. The decision to revoke the patent is published in the Bulletin.
(6) If the Board is of the opinion that, the patent as is or as amended partially meets the requirements of this Law, it shall decide to maintain the patent as of said part and call for the patent proprietor to file required amendments within two months of the date of notification. In the case where said amendments are not filed or the filed amendments are rejected, the patent is revoked, giving rise to revocation consequences given in Article 139. The decision to revoke the patent is published in the Bulletin.
(7) Final decision of the opposition procedure is published in the Bulletin. In regards to paragraphs 5 and 6, in cases where the Board has decided to maintain the patent as amended, the patent in amended form is published in the Bulletin.
(8) The procedures and bases for opposition and examination of opposition is determined by the regulations.

Draft Regulations Rule. 76

(1) The application shall contain one or more claims whereby the invention is disclosed in a sufficiently clear and complete manner. The claims shall define the matter for which protection is sought in terms of the technical features of the invention.
(2) Each claim is drafted as one sentence. The claims shall be drafted to contain the following two parts: a statement indicating the designation of the subject-matter of the invention and those technical features which are necessary for the definition of the claimed subject-matter but which, in combination, form part of the prior art, and a characterizing portion concisely specifying the technical features for which protection is sought. In such cases terms such as "comprising”,” characterized in that", “consisting of”, “wherein” or "characterized by" or any other term imparting a similar meaning is used to separate the two parts. The invention shall not be defined by a result to be achieved in the claims.
(3) The essential features of an invention shall be stated in an independent claim. Any independent claim may be followed by one or more dependent. Dependent claims shall include all the features of the other claim to which they are dependent. Any dependent claim shall contain, if possible at the beginning, a reference to the other claim and then state the additional features. A dependent claim directly referring to another dependent claim shall also be admissible. All dependent claims referring back to a single previous claim, or to several previous claims, shall be grouped together to the extent and in the most appropriate way possible.
(4) A dependent claim may separately refer to more than one claim using the expression “or”.
(5) Without prejudice to Article 91(1) and (2), a patent application may contain more than one independent claim in the same category (product, process, apparatus or use) if the subject-matter of the application involves one of the following:
a) A plurality of interrelated products.
b) Different uses of a product or apparatus,
c) Alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim.
(6) The number of claims shall be reasonable and sufficient to disclose the features of the invention in detail with regard to the nature of the invention claimed. The claims shall be numbered consecutively.
(7) Except where absolutely necessary, claims shall not rely on references to the description or drawings in specifying the technical features of the invention. In particular, they shall not contain such expressions as "as described in part ... of the description", or "as illustrated in figure ... of the drawings".
(8) The claims shall be supported by the description. They shall define the matter for which protection is sought, be clear and concise and should extend beyond the scope of the invention. Technical features that are present in the claims but not in the description of the application shall be added to the description.