A diplomatic conference in November 2000 (EPC 2000) suggested a substantial revision to the European Patent Convention (EPC) 1977 (see footnote 1). As the requisite number of EPC Contracting States has now ratified EPC 2000, EPC 2000 will enter into force no later than 13 December 2007.
Some of the major changes introduced in the EPC 2000 are outlined below:
Priority
Under EPC 2000, it will no longer be necessary to have a priority document translated into an official language of the EPC or to file a declaration that the patent application is a complete translation of the priority document. Translations or declarations may still be required where the validity of the priority claimed is relevant for determination of patentability (see footnote 2).
European Patent Application May Be Filed in Any Language
Under EPC 2000, a European application may be filed in any language. A translation into one of the official languages will need to be filed within 2 months of filing the European patent application.
Establishment of a Filing Date by Reference to a Previously Filed Application
To establish a filing date under EPC 2000 it will be possible to either file a description (and drawings) or to reference a previously filed application. A reference to a previously filed application will need to give the filing date and number of that application and the Office with which it was filed. A copy of the previously filed application will need to be filed within two months of filing the application. Where the previously filed application is not in an official language of the EPO, a translation will need to be filed into one of these languages within the same period.
Novelty
Documents citable pursuant to Article 54(3) EPC (i.e. intervening European patent applications) under EPC 2000 will be citable for novelty in respect of all EPC designated states irrespective of the states actually designated in the intervening patent application.
For patent applications pending when EPC 2000 enters into force, the current law will apply. Hence, documents citable pursuant to Article 54(3) EPC will only be citable in respect of states designated in both patent applications (i.e. overlapping designated states).
Under EPC 2000, at the time of filing all states will be deemed to have been designated.
Request for Prior Art Details
The EPO will be entitled to invite the Applicant to provide details of prior art taken into consideration in national or regional patent proceedings and concerning an invention to which the European patent application relates. Failure to provide such information may lead to withdrawal of the patent application.
Second Medical Use Claims
Second medical use and subsequent use claims in a non-Swiss-type format will be allowable under EPC 2000 (see footnote 3). Thus there will be no longer a requirement to use the "Swiss-type language", i.e. use of X in the manufacture of a medicament for the treatment of Y, to protect second and subsequent medical uses.
Publication to Identify When Claims Filed After Initial Filing Date
Where amended claims have been filed after the filing date of the patent application, the published application will explicitly state that the claims as published were submitted after the original filing date.
Further Processing
If an EPO time limit is missed such that the patent application is deemed withdrawn, in some circumstances it is possible to utilise the Further Processing provisions of the EPC to request revocation of the withdrawal.
EPC 2000 has extended the circumstances in which the Further Processing provisions can be used to any time limit of the EPO which is not explicitly exempted. Exemptions include the time limit for claiming a priority right, the time limit for filing an appeal and the time limit for filing a petition seeking review of a decision of the Board of Appeal, for example.
Appeal to the Enlarged Boards of Appeal
In exceptional circumstances where there has been a "fundamental procedural defect", it will be possible to file a petition to request a review of a Board of Appeal decision by the Enlarged Board of Appeal.
Claim Interpretation
Article 69 EPC relates to the extent of protection conferred by a European Patent. Article 2 of the Protocol on the Interpretation of Article 69 EPC has been amended by EPC 2000 such that:
"due account shall be taken of any element which is equivalent to an element specified in the claims"
Such an amendment would appear to follow for a form of doctrine of equivalents. The original proposal for amendment to Article 2 (which was more in line with the US style of doctrine of equivalents), however, was rejected. Thus, this new doctrine of equivalents may be narrower than the US doctrine of equivalents. At the time of writing it remains to be seen how this will be applied in practice.
Introduction of Centralised Limitation/Revocation
Centralised limitation and revocation procedures have been added to provide the Patentee with a simplified and more economical way of amending or revoking their European Patent provided that the European Patent is not in opposition proceedings. The Patentee will need to simply request revocation or limitation and pay the requisite fee (see footnote 4).
Where limitation is sought the Patentee needs to provide a new set of amended claims. However, a statement of reasons for the limitation and an amended description and/or drawings will not generally be essential.
Provided that the amendments made are limiting, clear and do not add subject matter, the request for limitation will be allowed. The European Patent Office (EPO) will notify the Patentee by issuing a Communication inviting the translation of the claims into the Official Languages of the EPO. It is not clear at this stage how quickly limitation requests will be processed by the EPO.
Individual contracting states may decide that "revalidation" is required. At the time of writing it has yet to be clarified which (if any) states require "revalidation".
Privilege
Privilege from disclosure in proceedings before the EPO for all communications between a professional representative in his capacity as such and his client or any other person (unless the privilege is expressly waived by the client) is explicitly mentioned in the EPC 2000 (see footnote 5).
Euro-PCT Changes
• The EPO Board of Appeal no longer has an appellate position in relation to the EPO's handling of PCT (Patent Cooperation Treaty) matters. Therefore, by way of example only, a refusal to search all or some of the claims and/or a finding of non-unity by the EPO as International Search Authority (ISA) would appear to be no longer challengeable by appeal.
• If there is any conflict between the EPC and the PCT the provisions of the PCT or its Regulations will now prevail.
• Unsearched subject matter in a PCT case will apparently be lost forever from the Euro-PCT case and an Applicant will need to file divisional application(s) to recover the subject matter. Arguably this may mean that if the EPO as ISA refuses to search the whole application during the International Phase of the PCT application then it may be necessary to file a divisional application after entering the European Regional Phase as no claims will be examined on the parent application.
Summary
The revisions made to the EPC by EPC 2000 have moved a substantial amount of text from the Articles of the EPC into the Implementing Regulations and will provide greater flexibility for future changes to the EPC as the Implementing Regulations can now be amended by the administrative council. Notably the Articles of the EPC have not been renumbered whereas the Rules have been.
Some of the major changes introduced in the EPC 2000 are outlined above. This is not an exhaustive review. However, for further information please contact D Young & Co.