EPC 2000: How is it Going?
It is now more than nine months since the amendments to the European Patent Convention (EPC) that are collectively known as EPC 2000 came into force, and the European Patent Office (EPO) has issued some initial statistics to show use of the new features. An analysis of the changes can be found in our earlier article. Although the majority of the changes have not had any significant impact on European patent practice, some of the changes are worth re-visiting. In addition, it is also six months since the European Community (EC) joined the International Design System.
The European Patent Office (EPO) has reported that a total of 27,923 applications were filed in the six months following the EPC 2000 coming into force on 13 December 2007. Only a small number of applications have taken advantage of or been affected by the new law and we have seen little change in day to day practice. We will now look at the main changes of the EPC 2000 and their utilisation.
Filing Requirements
One of the major changes of EPC 2000 entering into force was a relaxation of the requirements for filing a European application. Only 0.47% of applications have taken advantage of the opportunity to replace the description and drawings by a reference to a previously filed application. The majority of these applications - 114 out of 132 - are divisional applications that were filed by reference to the earlier parent application from which they derived.
Although it is now possible to obtain a filing date without filing claims, Venner Shipley strongly advises our clients to include claims in a European patent application at the time of filing due to the strict European interpretation of 'added matter'.
Priority
Under EPC 2000 it is now possible to make a priority claim after filing an application, up to 16 months from the earliest priority date to be claimed. Furthermore, priority claims may also be corrected within the later of 16 months from the earliest priority date, or 4 months from the filing date.
Perhaps surprisingly, the EPO has counted only 10 applications where the priority declaration was made after the date of filing. However, Venner Shipley recommends that this provision is used only in the event that a priority claim is forgotten or missed at the time of filing.
One of the most important changes is that it is now possible to claim priority and file an EP application within 2 months of the missed 12 month priority deadline, by requesting re-establishment of rights. Ideally this should only be used as a last resort, because it is necessary to provide evidence that the European application was not filed despite 'all due care' having been taken. This requirement requires evidence of a greater level of diligence than the requirement of showing that missing the deadline was 'unintentional', as required by many other patent offices. However, Venner Shipley has already successfully applied for re-establishment of a priority right for an application filed outside the priority period of an earlier application.
Furthermore, it is no longer necessary to file a translation of a priority document unless the validity of the priority claim is relevant to the determination of the patentability of the invention. This provision has seen significant cost savings for those of our overseas clients that claim priority from applications filed in languages other than English.
Central Limitation and Revocation
EPC 2000 introduced a new centralised procedure for limiting or revoking a patent at the request of the patent proprietor. Its aim is to avoid costly national disputes over the validity of a patent and provide a fast procedure by enabling patentees to limit the scope of or revoke a granted European patent centrally. The EPO conducts only very limited examination in central limitation proceedings and the EPO intends to complete the proceedings within about 2 months. This procedure is not available to third parties.
Notably, the EPO has recorded 50 requests for central limitation, of which 41 were made within the 9 month opposition period following grant. The EPO also received 13 requests for central revocation, although 10 of these requests were a batch request from a single applicant.
Petition for Review of a Board of Appeal Decision
EPC 2000 provides the option for any party to appeal proceedings adversely affected by the board of appeal to file a petition for review of the decision by the Enlarged Board of Appeal. However, the grounds for filing a petition are very restricted and, as such, only two petitions for review were filed and one decision issued by the Enlarged Board of Appeal, as a result of the new provision. As expected, the Board of Appeal's decision confirmed that the provisions are limited to the occurrence of a fundamental procedural defect or criminal act during proceedings.
A brief summary of the other major changes
Some of the other important changes implemented by the EPC 2000 are:
• It is now possible to file applications in any language, not just European languages, subject to a translation being filed within two months.
• The rules governing the EPO's approach to unity of invention for applications entering the European Regional Phase have been revised, and there is no longer any possibility to have an unsearched invention searched upon entry to the European Regional Phase.
• 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, which notably extends the possibility of claiming priority from first filings in Thailand and Taiwan.
• Applicants no longer have to rely on the 'Swiss' claim format in order to obtain patent protection for a second or further medical use of a known substance or composition
International Design System
It is also now nine months since the EC joined the International Design System by acceding to the Geneva Act of the Hague Agreement. Since 1st January 2008, EU nationals and residents have had the option of filing an International Design application in order to obtain protection in non-EU countries that are party to the Hague Agreement, and it is now possible to obtain a Registered (European) Community Design using this system.
Venner Shipley has filed a number of design applications using the International Design System, and we are happy to provide advice to clients on the procedure of doing so.