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EPC 2000 Now in Force
The amendments to the EPC that are collectively known as EPC 2000 came into force on 13 December 2007. Although there have been a large number of changes, the majority of these will not have a significant impact on European patent procedure. Where there have been more substantial changes, these are likely to benefit applicants, as a result of additional flexibility in areas such as filing requirements and correction of errors.
The various changes will affect different applicants in different ways. Aspects which may be of interest to our clients are set out below:
Overview - A Brief Summary of the Main Changes
Relaxation of Filing Requirements
• Applicants having a Non-EPC Language
• Relaxation of Filing Date Requirements
• Restoration of Priority Right
• Other Priority Related Issues
Lack of Unity of Invention on Entry into the EP Regional Phase
• Petition for Review of Appeal
• Centralised Patent Limitation and Revocation Procedure
Overview - A Brief Summary of the Main Changes
In general terms, applicants will see little change in day to day European practice. However, EPC 2000 has introduced additional flexibility into the European patent system, which may assist applicants in maximising the possibilities for obtaining patent protection in circumstances where such protection would not previously have been available.
Brief highlights of some of the more important changes are set out below:
• It is possible to file applications in any language, not just European languages, subject to a translation being filed within two months.
• An application can be filed by reference to a previous application, without needing to file a description or claims.
• Restoration of the priority right is possible, if an application is inadvertently not filed within the 12 month priority period.
• A centralized process for limiting a patent post grant has been introduced.
• The procedure for dealing with unity of invention for applications entering the European Regional Phase have been amended
Relaxation of Filing Requirements
Applicants having a Non-EPC Language: Language requirements relaxed
Previously, European patent applications had to be filed in one of three official languages, English, French or German, or the language of the applicant, provided the applicant was a resident or national of an EPC contracting state. EPC 2000 allows for European patent applications to be filed in any language, subject to a translation into one of the three official languages being filed within two months of the filing date. This may be particularly useful where time constraints are an issue.
An application may therefore be validly filed in, for example, Korean, Japanese or Chinese.
Relaxation of the Requirements for establishing a Filing Date
Claims are no longer required to obtain a filing date. This provision may be useful where the European patent application is the first filed application and does not claim priority. However, claims must subsequently be filed within two months of receipt of a notification from the European Patent Office. Including claims in a European patent application at the time of filing is still advisable, to avoid the relatively strict European interpretation of “added matter”.
Similarly, instead of filing a description, the applicant can file a reference to an earlier application. The previously filed application does not need to be claimed as priority. The reference should include the filing date and number of the earlier application, and the country in which it was filed. A certified copy, and translation where necessary, should then be filed within two months.
Claiming second and further medical uses
EPC 2000 does not change the exclusion of methods of treatment from patentability. However, applicants will no longer have to rely on the rather artificial “Swiss” claim format which was previously necessary in order to obtain patent protection for a second or further medical use of a known substance or composition.
Under EPC 2000, a claim in the format 'substance or composition X for use in treating condition Y' will no longer be anticipated by any therapeutic use of X disclosed in the prior art. Rather, for a prior art disclosure to be novelty-destroying, it will have to specifically disclose the use of X for treating condition Y.
The new law applies to pending applications and our usual practice will now be to re-formulate “Swiss” claims. Whilst the inclusion of “Swiss” claims is still permitted, it is likely that they will only be of value in particular circumstances.
Issues relating to Priority and Priority Documents
Late filing of application after 12-month priority period
An important, if ideally little used change, is that it is now possible to claim priority and file an EP application within 2 months of the missed priority deadline, by requesting re-establishment of rights. This provides a safety net not previously available for such situations.
Re-establishment of the priority period is available to applications filed prior to entry into force of EPC 2000, provided that the 2-month period referred to above has not expired on that date.
Therefore applicants who realise that they did not file a European patent application claiming priority from an earlier application at the correct time because of an error, despite all due care having been taken, have a window of opportunity to try to remedy the situation.
Similarly, the EPO has withdrawn a number of reservations relating to the PCT. It is therefore now possible to apply for restoration of a priority right that was missed in the international phase, providing that the international application was filed before the end of 14 months from the earliest priority date. As with normal EP applications, the EPO will only accept the restoration if it can be shown that the failure to file the international application before the end of 12 months from the earliest priority date occurred in spite of 'all due care required by the circumstances'.
In addition, the EPO acting as the Receiving Office will now accept priority claims from non-Paris convention WTO member states and will also (in certain circumstances) allow for the incorporation of missing elements and parts into the application.
WTO member state priority recognition
One major change introduced with EPC 2000 is that a European patent application can now validly claim priority from a member state of the World Trade Organisation that is not a Paris Convention country. This extends the possibility for EP applications to now claim priority from first filings in Taiwan and Thailand, as well as Angola, Brunei, Fiji, Kuwait, Maldives, Myanmar, and the Solomon Islands.
Translation of priority documents
The EPO will no longer require a translation of a priority document (which is not in German, French or English) as a matter of course. A translation will only be required if the validity of the priority claim is relevant to the determination of the patentability of the invention. This change will present significant cost savings to our overseas clients for whom obtaining translations of priority documents has been an expensive exercise in the past.
This provision applies to pending applications where the time limit for requesting the translation expires after entry into force of EPC 2000.
Late declaration of priority or change to existing declaration of priority
It is now possible to make a priority declaration after filing an EP application, up to 16-months from the earliest priority date to be claimed.
In addition, an existing declaration of priority can be corrected within the later of 16 months from the earliest of the corrected and uncorrected priority dates, or 4 months from the filing date.
These changes bring the EPC into line with the provisions of the PCT and are applicable to pending applications, provided the above time limits expire on or after entry into force of EPC 2000.
Lack of unity of invention upon entry into the European phase
One area in which practice has significantly changed is in the EPO's approach to international applications entering the European phase, which are deemed by the EPO to lack unity of invention. The EPO will now be taking a very strict approach, and so this is of particular interest to our US clients where an application is more likely to contain multiple independent claims.
Under the previous practice, where the EPO found lack of unity, it was possible to have several inventions searched in a single application during the European regional phase by paying further search fees. However, as from the date of entry into force of the EPC 2000, the EPC no longer issues an invitation to pay additional search fees and so the opportunity to receive additional searches no longer exists. This practice also applies to applications which were pending at the date of entry of the EPC 2000, but for which no invitation to pay additional fees has been issued. However, if an invitation has already been sent out, then it is still possible to pay additional fees and receive additional search reports.
Under the new practice, where the EPO finds lack of unity, a supplementary search report is only issued for the first mentioned invention in the claims, and only if the International Searching Authority is not the EPO. Therefore it is possible to amend the first mentioned invention on entry to the European phase to have different claims searched to those searched in the International Search Report.
However, if the International Searching Authority is the EPO, then no supplementary search report is issued and the Applicant is invited to limit the application to one of the inventions searched in the international phase.
It will be appreciated that it is still possible to obtain additional searches during the international phase. Additionally, divisional applications may still be filed for any excised claims.
It is important to note that, in a situation where the EPO is not the International Searching Authority, it is possible that a lack of unity objection may arise for the first time during the European regional phase. In this situation the only option is to pursue the invention first mentioned in the claims and file divisional applications, if necessary. Therefore, we strongly advise that the application is reviewed prior to entry into the European phase to ensure that the most important invention is placed first in the claim set.
To implement changes in UK national law brought about by the new EPC, the UK Patents Act has been amended by the introduction of sections 1-5 of the Patents Act 2004. These amendments came into force on 13 December 2007.
The introduction of these changes into UK patent law is intended to make the same standards apply to patents which have come into force in the UK through the direct UK route and the European patent (i.e. EP (UK)) route. It also makes it easier for applicants as they can adopt much the same approach when seeking a UK or a European patent.
The amendments introduce changes in the following areas:
Methods of treatment or diagnosis and compositions for use in such methods
The UK provisions corresponding to patentability of methods of treatment or diagnosis and compositions for use in such methods are being brought into line with the new provisions of EPC 2000.
Post-grant amendment
EPC 2000 introduces a new central amendment process for post-grant amendment of European patents at the European Patent Office; an amendment made at the EPO will be effective in all contracting states designated by the European patent.
It will still be possible to amend a European (UK) patent separately by applying to the UK Intellectual Property Office and such an amendment will only be effective in the UK.
The provisions in the UK Patents Act on relief for a partially valid patent or revocation of a patent have therefore been amended in view of the new central amendment process.
Prior art effect of European Patent applications
Under EPC 2000 all EPC Contracting States will be designated automatically when a European application is filed and prior art status of a European patent application for assessing novelty under Article 54(3) EPC will not be affected by removal of a designation prior to publication of the application.
The corresponding UK provisions have been amended to reflect that now every European patent application has prior art effect (under section 2(3)) on publication.
Review by the Enlarged Board of Appeal
EPC 2000 introduces the possibility for decisions by the Board of Appeal to be reviewed by an Enlarged Board of Appeal.
The UK Patents Act has been amended to allow for the fact that the decision of the Board of Appeal is not suspended for the duration of the review. The amended UK Patents Act provides terms which allow protection for third parties who have, in good faith, commenced working a patent subsequent to a decision of the Board of Appeal such that they can continue to do so after restoration of the patent.
For more information see http://webdb1.patent.gov.uk/patent/p-decisionmaking/p-law/p-law-changes.htm
Article 112a Petition for Review of Appeal
EPC 2000 introduces a new option of petitioning the Enlarged Board of Appeal (EBA) for review of a decision of a Board of Appeal.
Any party to the appeal proceedings who is adversely affected by the decision may file a petition. However, generally speaking, the grounds for filing a petition are limited to procedural violations or that a decision has been influenced by a criminal act. The most likely ground to be of interest to our clients is that of violation of the right to be heard, in other words violation of the provision that a decision must be based on grounds on which all parties have had the opportunity to comment.
There are a number of important conditions that must also be satisfied for a petition to be allowed. For instance, an objection to the procedural defect must have been made during the Appeal proceedings, if this was possible. An exception to this is for the ground that the decision may have been influenced by a criminal act. There is also a time limit for filing a petition for review, of 2 months after notification of the decision.
It should be noted that the act of filing a petition for review does not postpone the effect of the original decision. In addition, in the event that the decision is eventually overturned, any third parties who make use of the invention or make “serious and effective preparations” to do so, between the issuance of the decision of the Board of Appeal and publication of a decision of the EBA, will acquire a defence to infringement (provided that they have been acting in good faith).
We do not foresee these new provisions being commonly used, as the grounds for filing a petition are quite limited. Importantly, there is still no possibility of a further appeal if a matter of purely substantive law in an Appeal Board's decision is disputed; once handed down, the decision is final. However, we welcome the fact that an inequitable gap in the law has been filled by the new provisions.
Centralised Patent Limitation and Revocation Procedure
As EPC 2000 comes into force it brings with it a new centralised mechanism for a patent proprietor to request revocation or limitation of their patent, for example, due to prior art which was not known about during the examination phase of the patent before the European Patent Office or because of prior national rights which were not taken into account at that stage.
This new procedure is not open to third parties, but it enables patentees to narrow down the protection conferred by a patent post-grant by means of a simple, quick and inexpensive administrative procedure. The patent proprietor will need to file a request for limitation or revocation and pay the associated fee (€1000 for a request for limitation or €450 for a request for revocation). A statement explaining the reasons behind the limitation and an amended description and/or drawings will not, in general, be required. Prior to EPC 2000, the only means for a patentee to voluntarily limit the scope conferred by their patent was to request such limitation at the national level, i.e., before each national patent office or competent court, if permitted. Self-Opposition was not possible.
A request for limitation or revocation may be filed at any time during the life of the European patent and there is no limit on the number of times a patent proprietor may make use of the procedure, i.e., a request for limitation or revocation may follow one or more earlier requests for limitation. However, if such a request is filed when opposition proceedings are pending the request will be deemed inadmissible. If an opposition is filed after the request for limitation or revocation is made then proceedings will be terminated in the case of a limitation request, but will continue in the case of a revocation request. In the latter case, opposition only proceeds if revocation is unsuccessful.
Amended claims must be filed where a request for limitation is made and these must meet the requirements of Article 84 EPC (clarity, conciseness and support) and Article 123(2) and (3) EPC (the amendments cannot add subject-matter which goes beyond the content of the application as filed and the scope of protection cannot be extended after grant). No examination as to the patentability of the amended claims will be made. “Limitation” is to be interpreted as a reduction in the extent of protection conferred by the claims and, therefore, mere clarifications or changes made to protect different subject matter are not allowable. It is also not possible to submit description amendments, without claim amendments, even if they would arguably reduce the scope of protection provided by the claims.
If limitation or revocation is allowed, it will have retroactive effect - in the situation where a patent is revoked, for example, the patent will be deemed never to have existed. A decision to limit or revoke the European patent will also apply to the European patent in all Contracting States in which the patent is granted.
The wording of the law governing how contracting states should determine what the claims of a European patent cover has changed. It is now provided that “due account” should be taken of “equivalents” in relation to infringement. The change in wording is intended to bring greater harmonisation between European national courts, but is it unclear what impact it will have in practice. In the UK at least, we expect the status quo to be maintained.
EPC 2000 includes explicit provisions regarding attorney-client privilege for communications between an Authorised Representative and client that would otherwise be disclosable in proceedings before the EPO. This includes communications assessing the patentability of an invention and opinions regarding validity and infringement of a European patent. The new provisions introduce such rights in many non-UK EPC contracting states for the first time. It is thought that these provisions could be of use in US litigation, as it could potentially avoid clients of both UK and non-UK patent attorneys being compelled to disclose documents relating the preparation and prosecution of corresponding European patents and patent applications. However, UK patent attorneys already benefit from a more extensive legal advice privilege, which is recognisable in the US courts under the principles of comity.
