EPC 2000: When will it take effect changes in law, practice

1
EPC 2000When will it take effect changes in
law, practice procedure update

• Tibor Gold M.B.E.
• Kilburn Strode

2
Who are the EPC States? How did we get to todays
position?

• 32 members, 5 extension States - see
  http//www.european-patent-office.org/epo/members.
  htm Next accession expected Norway (NO)
• Includes all member States of the European Union
  incl. new EU accessions Bulgaria (BG) and Romania
  (RO) and some non-EU members
• so EU and EPC not co-extensive
• As things stood under EPC 1973, amendment
  possible by Diplomatic Conference only clearly
  very slow and cumbersome
• Revision Act adopted by Diplomatic Conference
  2000 requires 15 ratifications 2 years for
  entry into force
• Greece became 15th State to ratify on December
  13, 2007 22 out of 32 have ratified unlikely
  that there will be any advance on it

3
Overview - 1

• Main aims of the revision
• Adaptation to TRIPs and PLT (e.g. achieving
  filing date)
• Increased legislative flexibility (more in I.R.,
  less in Convention
• User needs (e.g. further processing enlarged)
• EPOs own needs (incl. removing need for
  separation of Office tasks between Germany and
  the Netherlands)

4
Overview - 2

• A comparison with EPC 1973
• New provisions
• Significant changes
• Transitional provisions
• Further information

5
A structural comparison with EPC 1973

• EPC made more streamlined and adaptable
• including transfer of many procedural/administrati
  ve details from Articles to Rules (to make future
  changes easier)
• Articles
• numbering unchanged, Arts 1-178 (as per EPC 1973)
• but some moving of provisions, deletions,
  additions and clarification of language
• Rules
• completely renumbered, Rules 1-165 (EPC 1973
  1-112)
• Rules relating to fees
• clearer, renumbered, some new fees, some revised
  fees
• (New protocol on the staff complement of the EPO
  at the Hague)

6
New provisions(Main new Articles)

• Art 4a Conference of ministers of the
  Contracting States
• Arts 105a, 105b and 105c Central limitation or
  revocation of the European patent
• Art 112a Petition for review by the Enlarged
  Board of Appeal
• Art 134a Institute of Professional
  Representatives before the EPO (privilege for
  EPAs)

7
Limitation or revocation of the European patent -
1(Arts 105a, 105b and 105c Rules 90 -96)

• A centralized procedure by which a European
  patent may be revoked or limited
• At the request of the proprietor (ex parte)
• Follow simple prescribed form of Rule 92(2) and
  pay fee
• Not possible while opposition proceedings are
  pending

8
Limitation or revocation - 2(Arts 105a, 105b and
105c Rules 90 -96)

• If granted, the effect is ab initio (see Art 68)
• Amended specification is published
• Art 138(3) In proceedings before the competent
  court or authority relating to the validity of
  the European Patent, the proprietor of the patent
  shall have the right to limit the patent by
  amending the claims. The patent as thus limited
  shall form the basis for the proceedings.

9
Petition for review by the Enlarged Board of
Appeal(Art 112a Rules 101 - 110)

• Art 112a(1) Any party to appeal proceedings
  adversely affected by the decision of the Board
  of Appeal may file a petition for review of the
  decision by the Enlarged Board of Appeal.

10
Petition for review - 2

• Likely to be of limited use because the ONLY
  available grounds are that
• (a) a member of the Board of Appeal took part in
  the decision in breach of Art 24(1) or 24(2)
  (bias)
• (b) the Board of Appeal included a person not
  appointed as a member of the Boards of Appeal
• (c) a fundamental violation of Art 113 occurred
  (decision violates audi alteram partem rule)
• (d) any other fundamental procedural defect
  defined in the Implementing Regulations occurred
  in the appeal proceedings
• (e) a criminal act established under the
  conditions laid down in the Implementing
  Regulations may have had an impact on the decision

11
Institute of Professional Representatives before
the EPO(Art 134a Rule 153)

• Under this clumsy heading lies a new provision of
  considerable importance privilege, Art 134a(1)
• The Administrative Council of the EPO shall be
  competent to adopt and amend provisions
  governing
• (d) the obligation to confidentiality on the
  professional representative and the privilege
  from disclosure in proceedings before the EPO in
  respect of communications between a professional
  representative and his client or any other
  person.
• Also see new Rule 153 for further details of what
  communications are privileged

12
Significant changes for practitioners

• Arts 14, 70 - Languages
• Arts 52-54 - Patentability
• Art 69 - Extent of protection - and the Protocol
  on its interpretation
• Art 80 - Date of filing
• Art 87 - Priority
• Art 121 - Further processing
• Art 122 - Re-establishment of rights

13
Languages - 1(Arts 14, 70 Rules 3 -7)

• Art 14(2) A European patent application shall be
  filed in one of the official languages or, if
  filed in any other language, translated into one
  of the official languages
• Rule 6(1) A translation under Art 14(2) shall be
  filed within two months of filing the European
  patent application.

14
Languages - 2(Arts 14, 70 Rules 3 -7)

• Art 70(2) If, however, the European patent
  application has been filed in a language which is
  not an official language of the EPO, that text
  shall be the application as filed within the
  meaning of this Convention.
• Rule 7 Unless evidence is provided to the
  contrary, the EPO shall assume, for the purpose
  of determining whether the subject matter of the
  European patent application or European patent
  extends beyond the content of the application as
  field, that the translation as filed under Art
  14(2) is in conformity with the original text of
  the application.

15
Patentability - 1(Art 52 - Patentable
Inventions Art 53 - Exceptions to patentability
and Art 54 - Novelty)

• Art 52(1) European patents shall be granted for
  any inventions, in all fields of technology,
  provided they are new, involve an inventive step
  and are susceptible of industrial application.
• Art 52(4) deleted and transferred to Art 53(c)
• European patents shall not be granted in respect
  of ..methods for treatment by surgery or
  therapy and diagnostic methods

16
Patentability - continued

• Art 54(3) Additionally, the content of European
  patent applications as filed, the dates of filing
  of which are prior to the priority date and
  which were published on or after that date, shall
  be considered as comprised in the state of the
  art.
• Art 54(5) EPC 2000 the patentability is not
  excluded of any substance or composition for
  any specific medical use in a method referred to
  in Article 53(c), provided that such use is not
  comprised in the state of the art.
• In other words, novel and inventive
  purpose-related product protection for second
  (and subsequent) medical use of a substance
  already known for a different medical use will
  be patentable

17
Extent of protection - 1(Art 69 and the Protocol
on its interpretation)

• Art 69(1) The extent of protection conferred by
  a European patent or a European patent
  application shall be determined by the claims.
  Nevertheless, the description and drawings shall
  be used to interpret the claims.
• Protocol on interpretation of Art 69
• Art 2 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.

18
Extent of protection - 2(Art 69 and the
Protocol on its interpretation)

• Open issues
• What is due account?
• At what point in time is equivalence to be
  considered? (Application, publication, grant,
  opposition, act of infringement.)
• What does equivalent mean? What will the
  national courts make of it?

19
Date of filing(Art 80 Rule 40)

• The requirements for according a filing date are
  now in the Implementing Regulations.
• Rule 40(1) The date of filing of a European
  patent application shall be the date on which the
  documents filed by the applicant contain
• (a) an indication that a European patent is
  sought
• (b) information identifying the applicant or
  allowing the applicant to be contacted and
• (c) a description or reference to a previously
  filed application. SO CLAIMS NOT REQUIRED
• Rule 40(3) Where the application contains a
  reference , a certified copy of the previously
  filed application shall be filed within two
  months of filing the application

20
Priority(Arts 8789 Rules 52-54)

• Art 87(1) Any person who has duly filed, in or
  for
• (a) any State party to the Paris Convention for
  the Protection of Industrial Property or
• (b) any Member of the World Trade Organisation
  (WTO),
• Rule 52(2) The declaration of priority shall
  preferably be made on filing the European patent
  application. It may still be made within sixteen
  months from the earliest priority date claimed.
• Related point see Rule 56(3) using the
  priority document to maintain filing date in the
  event of missing parts of the description or
  missing drawings.

21
Further processing

• Further processing more widely available almost
  a universal panacea.
• Art 121(1) If the applicant fails to observe a
  time limit vis-à-vis the EPO, s/he may request
  further processing of the European patent
  application.

22
Further processing - 2

• In contrast to EPC 1973, further processing made
  available by EPC 2000 for
• Time limit for paying filing fee
• Time limit for paying search fee
• Time limit for paying designation fees
• Time limit for paying examination fee
• Time limit for requesting examination
• Time limit for designating inventor(s)

23
Further processing - 3

• Rule 135(2) rules out further processing for
• Period for filing translation of application
• Period for action by entitled person (Art 61,
  Rule 16(1)(a))
• Period for depositing biological material
• Period for filing copy of referenced application
  (Rule 40)
• Periods for payment of renewal fees and further
  search fees
• Period for filing or correcting declaration of
  priority or correcting priority claim (but note
  provision of Rule 59)
• Period for correcting deficiencies to obtain
  filing date other formal requirements, missing
  parts of description or drawings
• Period for applying for decision on loss of
  rights

24
Re-establishment of rights(Art 122 Rule 136)

• Re-establishment less widely available. Largely
  replaced by further processing. But what if the
  problem is NOT identified during time limit for
  further processing?
• Re-establishment not available for
• Time limit for requesting re-establishment of
  rights (Art 122(4), Rule 136(3))
• Any period for which further processing is
  available (Rule 136(3))

25
Re-establishment of rights -2

• Re-establishment explicitly available for
• Priority period, provided request within 2 months
  of expiry of that period (Rule 136(1))
• Period for filing petition for review (Art
  112a(4)), again provided request is within 2
  months of expiry of that period (Rule 136(1))
• Re-establishment apparently also available for
• Period for further processing itself
• Periods where further processing is not available
• Periods for payment of renewal fees

26
Transitional provisions

• Art 7 of the Revision Act EPC 2000 applies to
  all European patent applications filed after its
  entry into force, as well as to all patents
  granted in respect of such applications. It
  shall not apply to European patents already
  granted at the time of its entry into force, or
  European patent applications unless otherwise
  decided by the Administrative Council.

27
Transitional provisions - 2

• Administrative Council has decided
• Arts 14(3) to (6), 52, 53, 54(3) and (4), 69, the
  Protocol on Interpretation of Art 69, Art 70 and
  various others not discussed in this
  presentation, shall apply to pending
  applications at the time of their entry into
  force and to European patents already granted at
  that time.
• Art 54(4) 1973 continues to apply to these
  applications and patents.
• Arts 105a-c and 138 (and some others not
  discussed in this presentation) shall apply to
  European patents already granted at the time of
  their entry into force and to European patents
  granted in respect of European patent
  applications pending at that time.

28
Transitional provisions - 3

• Art 54(5) shall apply to European patent
  applications pending at the time of its entry
  into force, if a decision on the grant of the
  patent has not yet been taken.
• Art 112a shall apply to decisions of the Boards
  of Appeal taken as from the date of its entry
  into force.
• Arts 121 and 122 shall apply to European patent
  applications pending when they enter into force
  and to European patents already granted at that
  time, if the time limits for requesting further
  processing or re-establishment of rights have not
  yet expired at that time.

29
Some basic observations

• By December 13 2007
• We all need to understand the new law
• All of us need to update our personal and firm
  systems, e.g. update fee information, forms,
  standard letters to account for law changes, Art
  or Rule numbering changes

30
Further information

• http//patlaw-reform.european-patent-office.org/
• http//www.epo.org/patents/law/legislative-initiat
  ives/epc2000/new.html
• EPC 2000 e-learning module
• Special Edition No 1 of the OJ EPO 2007
• The Annotated EPC 2000 Derk Visser (publ. H.
  Tel http//www.htelpublisher.com/boek2.html)
• EPO Draft Guidelines only in EN at
• http//www.epo.org/patents/law/legislative-initiat
  ives/epc2000/draft-epc-2000-guidelines.html

31
Summary and bluffers guide

• Articles are the same, Rules arent
• There is a centralised limitation procedure
• More flexibility
• Further processing for more things
• Rule 51(4) becomes Rule 71(3)
• EPC2000 applies to most pending and already
  granted patents even if filed before Dec 13, 07

32

• Thank you very much!
• Kilburn Strode
• 20 Red Lion Street
• London WC1R 4PJ
• T 44 (0) 20 7539 4200
• F 44 (0) 20 7539 4299
• E tgold_at_kstrode.co.uk
• W www.kstrode.co.uk