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EPC 2000

EPC 2000

01/05/07

The changes effected will come into force on 13 December 2007.

 

The majority of changes in EPC 2000 concern the transfer of procedural matters from the Convention to the Implementing Regulations. This will allow future revisions to be made more easily since they can be effected by the Administrative Council, thereby removing the need to convene a Diplomatic Conference.  Important changes are made in relation to priority claims, the introduction of a new limitation procedure, and the broadening of the further processing and re-establishment provisions. Some procedural changes are also made to implement various aspects of the Patent Law Treaty (PLT) 2000.

 

 

Substantive Patent Law  

 

Patentable Inventions

 

  • granted for any inventions, in all fields of technology, provided that they are new and comprise an inventive step.

 

This change is thought to clearly define the scope of the EPC clarifying that patent protection is available for technical inventions of all kinds.

 

Novelty

 

European applications filed prior to the filing date of an application in suit, but which are published after that date, will now constitute prior art for novelty purposes with effect for all contracting states rather than just those commonly designated in both  application

 

Second and subsequent medical use claims have been formalised in the Convention. The patentability of substances/compositions already known for use in methods of treatment shall not be excluded provided that the specified use is not comprised in the state of the art. This will result in “first medical use” claim format being allowed for second and further therapeutic indications.

 

 

Extent of Protection – Interpretation.

 

The provisions on interpretation have been amended to include an indication that when 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. It is hoped that the reference to equivalents in this respect will ensure uniform interpretation of claims and thereby contribute to more uniform practice across Europe in relation to questions of infringement.

 

 

Applications

 

Languages of European Patent Applications

 

  • any language

 

In light of the provisions in the PLT 2000 relating to the minimum requirements for according a date of filing, a European application can now be filed in any language to achieve a filing date. However, a translation into one of the official languages must be filed within one month of filing.

 

 

Priority Right

 

  • any member of the World Trade Organisation

 

This change is in line with the TRIPS Agreement which requires that priority rights are extended to earlier filings in any WTO member state.

 

 

Request for Examination

 

The time limit applicable for filing a request for examination has been transferred to the Implementing Regulations. It is not envisaged to change the 6 month time limit at present. However, excessive increase in examiner workload may result in a change and the introduction of deferred examination has not been ruled out.

 

 

 

Opposition and Limitation Procedure

 

The limitation procedure introduces a means for tactical post-grant amendment.

 

Request for Limitation or Revocation

 

  • At the request of the proprietor, a European patent may be revoked, or limited by an amendment of the claims.

 

This provides the possibility for post-grant amendment even though the validity of the patent has not been called into question.

 

Should the filing of such a request for limitation be followed by initiation of opposition proceedings, the opposition proceedings will continue in favour of the limitation request.

 

Such central limitation proceedings will not take precedence over national proceedings. Where national proceedings resulting in limitation have already concluded, the limitation can be extended to further contracting states in which the patent has been made effective via the such central limitation proceedings.

 

  • The EPO shall examine whether the requirements for limiting or revoking the patent have been met.

 

The request can be filed at any time.

 

When limiting, consideration must be given to clarity and added matter issues as well as questions of novelty and inventive step but not of excluded subject matter.

 

 

 

Appeals Procedure

 

Petition for review by the Enlarged Board of Appeal (EBA)

 

  • Any party to appeal proceedings adversely affected by the decision of the BoA may file a petition for review by the EBA if a fundamental procedural defect occurred in the appeal proceedings, or if a criminal act may have had an impact on the decision.

 

The petition for review shall not have suspensive effect.

 

The procedure relates to fundamental defects only such as “intolerable deficiencies” rather than minor procedural defects. Examples might be that a member of the EBA took part despite having a personal interest in the decision, or that a fundamental procedural defect arose from a failure to into take account a request made by a party.

 

A criminal act can qualify as a ground for petition only following a conviction in a criminal court of the person concerned.

 

 

 

Common Provisions

 

Further Processing

 

The scope of the further processing provisions has been greatly increased. The provisions no longer relate to time limits set by the EPO (as opposed to those set in the Convention and Implementing regulations) but now relate only to time limits ‘vis-à-vis’ the EPO. According to the explanatory notes accompanying the revision, this change is to be interpreted as now relating to all time limits with the exception of priority claims, the time limit for appeal, petition for review, re-establishment of rights and further processing itself.

 

Re-establishment of rights

 

A previous specific exclusion in relation to the priority year has been removed. This amendment was introduced to implement the PLT 2000. It is therefore possible to reinstate within two months of expiry of the priority year. The requirement for “all due care” remains.

 

Institute of Professional Representation before the EPO

 

This will allow the Administrative Council to adopt a provision governing the obligation of confidentiality and privilege for client-representative communications. This follows previous problems establishing privilege before the US courts in relation to corresponding EPO proceedings.

 

 

Transitional Provisions

 

The majority of the revised Convention will apply to European patent applications pending and those already granted at entry into force of EPC 2000.

The provisions formalising second and subsequent medical use claims will apply to pending applications, as long as no decision regarding the grant of a patent has taken place at the date EPC 2000 enters force.

The broader effect of earlier filed published applications will only apply against applications filed after entry into force.