J.A.Kemp & Co.

London

Munich

Oxford

FICPI ABC MEETING 2007

EPC 2000

Alan M. Senior

30 May 2007

The EPOOpened for business 1 June 1978• 8 contracting states• about 18,000 applications per annumBy 1990• 13 contracting states• 63,000 applicationsBy 2000• 19 contracting states• 100,000 applicationsBy 2005• 29 contracting states• 130,000 applications

The EPC

• Agreed in 1973.• Moves to revise and update throughout 80’s and

90’s.• Prospective new members who would join the

debate, plus TRIPS etc obligations force action.• Reduced aims.• Diplomatic Conference November 2000 to agree.

Diplomatic Conference

Main objectives included• Transfer Procedural Matters to Rules• Central Limitation System• Improve legal remedies• Comply with International law

Things left for another day include• Re BEST project• Board of Appeal autonomy• Removing computer program exclusion• Further work on Article 69 protocol• Any person may oppose

Result

The Revision Act 29 November 2000• Amendment to Articles, some new, some dropped• Complete re-write of Rules• Entry into force on the earlier of

– two years after 15th ratification– 1st day of 3rd month after the last state deposits its instrument

• 15 have, those not are BE, CY, FR, DE, IE, IT, LU, PT, SE and TR

• Kicked out of EPC if don’t ratify by when it comes into force (but this being Europe ….).

Entry into force of EPC 2000

• Many of the changes apply to pending applications

• Some of the changes affect practice now

• Revision Act (Article 7)– EPC 2000 applies to all cases filed after the entry into force

– Administrative Council can decide to make some of EPC 2000 apply to cases pending or granted by 13 December 2007

Things that are not changing

• No changes in substantive patent law, with minor exceptions

• Structure of search/examination, opposition and appeal procedure unchanged, with a couple of significant exceptions

Summary of main changes• Claiming inventions based on new medical use (Article

54(5)• Prior art effect of EP applications that were filed before, but

published after, the filing date of the application in suit (whole contents – Article 54(4) deleted)

• Interpretation of claims for purposes of infringement (Protocol to Article 69)

• Central post-grant amendment procedure introduced (New Article 105a(1))

• Further layer of appeal introduced (New Article 112a)• Procedure for dealing with disunity in EP regional phase

(Rule 164 replaces Rule 112)

Medical use inventions - summary

Current form of claim (“Swiss claim”)Use of compound X for the manufacture of a medicament for treating condition Y

New form of claim under EPC 2000Compound X for use in a method of treating condition Y

(Article 54(5))

Medical use inventions

• New form of claim will be allowed in any application pending on the date EPC 2000 enters into force, provided a “Decision to Grant” has not issued (Transitional provisions, Revision Act -Article 7)

Swiss-style claims will continue to be available

Novelty – Whole ContentsArticle 54(5)

• At present an application of earlier date (EP1) unpublished at the date of a later application (EP2) is only effective as prior art, (as in Article 54(3)) and then only for novelty, in states for which it was designated

• Changes in designation routines, in particular the delay, make the situation hard to work

• In future EP1 will be citable for novelty again all designations in EP2

• But only for applications and subsequent patents with filing date after 13 December 2007

The scope of the claims

• New Article 2 on equivalents has been added to the Protocol on Interpretation of Article 69:

“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.”

• Proposal to introduce file wrapper estoppel dropped.

The scope of the claims (continued)

• In UK, currently there is no doctrine of equivalents

• “…we have article 69 which, as it seems to me, firmly shuts the door on any doctrine which extents the scope of protection outside the scope of the claims” (House of Lords, Kirin-Amgen v. TKT)

• this said with the new Article 2 of the Protocol on Interpretation of Article 69 in mind

Central post-grant amendment

• EPC 2000 provides for central amendment at the European Patent Office of claims of a granted European patent (New Article 105a(1))

• “At the request of the proprietor the European patent may be revoked or be limited by an amendment of the claims …”

Central post-grant amendment (continued)

• Examining Division examines whether– amended claims constitute limitation compared to

claims as granted– amended claims comply with Article 84 EPC

(clarity/support)– amended claims do not add new matter

(Rules 90 to 96)

• No examination of novelty, inventive step, etc.

Central post-grant amendment (continued)

• Request may not be filed when opposition or opposition appeal pending

• Under transitional provisions, the procedure can be used in respect of patents already granted at the date of entry into force of EPC 2000

Petition for Review of Appeal Decisions by the Enlarged Board of Appeal

• Currently, the EPO’s Enlarged Board of Appeal hears cases of general legal significance only

• EPC 2000 provides that any party adversely affected by a decision of the Board of Appeal may file a petition for review of the decision by the Enlarged Board of Appeal (new Article 112a)

• Grounds essentially limited to serious defects of procedure or criminal acts

Unity of Invention for European Regional Phase Applications

• If PCT application is searched by the USPTO, EPO conducts supplementary search

• Current situation: if lack of unity of invention, first is invention searched, an opportunity is provided to get further invention(s) searched by paying additional search fees

Unity of Invention for European Regional Phase Applications (continued)

• Under new Rules: if lack of unity of invention, first invention is searched, but no opportunity will be provided to get further invention(s) searched by paying additional search fees (new Rule 164)

• Substantive examination can then only proceed on first invention

• To pursue a further invention, a divisional application must be filed

Unity of Invention for European Regional Phase Applications (continued)

• In Euro-PCT applications where the EPO did the international search

• The EPO will not do a supplementary search in the EP regional phase at all (new Rule 164 does not apply, old Rule 112 to be dropped)

• Only an invention searched in the international phase can be elected for examination and prosecution

• Divisional application must be filed to pursue another invention

Unity of Invention for European Regional Phase Applications (continued)

• Put the invention that you wish to elect first to make sure that it gets searched and can therefore be elected

• If the invention that you wish to elect is not first in the claims at the time of EP phase entry, file preliminary amendment to put it first

• Where the EPO does the international search and raises disunity objection, pay further search fee to get a search done on the invention that you want to elect in the international phase

LONDON AGREEMENT

• This was concluded in October 2000• Will enter into force on 1st day of 4th month after

France ratifies; there are enough ratifications including UK and Germany which, like France, are essential

• Is there political or practical change?

PROVISIONS1. States with an EPO official language (UK, DE,

FR, along with LU, CH) will dispense with translation requirements.

2. States without an EPO official language will dispense with translation requirements if the EP is granted in or translated into a named EPO official language.

3. But such states can ask for the claims to be translated into their own official language.

PROVISIONS continuedStates within 2 and 3 who have ratified:

DK

NL

SE

are, I think, expected to take the option of 3.• Prominent omissions include

IT

ES

But diversity also expands

• Under EPC 2000 Article 14 an application can be filed in any language

• Translation needed within 2 months

UK Intellectual Property OfficeWelsh Language Scheme

Prepared in accordance with Section 21(3) of the Welsh Language Act 1993

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• Only 76 paragraphs fortunately

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The End

Thank You

Any Questions?

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