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1 November 2007

Changes in EPC 2000

EPC 2000 will enter into force on or before December 13, 2007, and it will introduce a number of changes to the European patent procedure. EPC 2000 was drafted with a number of aims:

  • to harmonise the EPC, dating from 1973, with new developments in international law such as TRIPS and the Patent Law Treaty
  • to make the procedure for future changes easier by transferring some subject matter from the Articles of the EPC to the Implementing Regulations; and
  • to provide a sound legal basis for the EPO practice of allocating all search and examination functions on a case to a single Examiner, which had been forbidden under the original EPC.

This wholesale revision has required a substantial renumbering of the EPC 2000 Rules (but not the Articles). In drafting EPC 2000, the opportunity was also taken to delete redundant provisions of the EPC.
EPC 2000 will enter into force on or before December 13, 2007, and it will introduce a number of changes to the European patent procedure. The main changes will be in the areas of:

Patentability
Requirements to obtain a filing date
Priority rights
Further processing and re-establishment of rights (restitution)
Central limitation and revocation procedure
Miscellaneous

 

Patentability

There will be only be a few, limited, changes to the patentability requirements under EPC 2000. The legal fiction concerning methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body will no longer apply. Previously, the legal fiction existed that such methods "shall not be regarded as inventions which are susceptible of industrial application". In EPC 2000 this legal fiction has been deleted and such methods are instead specifically excluded from patentability.

Use-limited product claims may now be drafted for a second or further medical use of a known substance, and applicants will no longer be required to use the Swiss form of claim for such inventions. Although the EPO has indicated that the patentability of such claims will not be considered differently, it will be interesting to see if any disputes arise in national courts e.g. in infringement proceedings over the interpretation of a use-limited product claim compared with a conventional Swiss form of claim which arguably requires "the manufacture of a medicament" for infringement to occur.

 

Filing Date Requirements

The filing date requirements under EPC 2000 will be in accordance with the Patent Law Treaty. Under EPC 2000, it will no longer be necessary to file claims or perhaps even a description in order to get a filing date!

Claims can be added to an application after filing under EPC 2000, without affecting the filing date. However, patent applicants and attorneys should be wary of filing the claims after the filing date, as the strict requirements forbidding any new subject matter after filing will of course apply to late-filed claims.
In relation to the description, EPC 2000 provides that the applicant may omit the description and any drawings in favour of a reference to a previously filed application. The applicant may declare that the same reference also replaces the claims. The applicant must:

  • state the filing date and number of the previous application and the Office with which it was filed
  • indicate that it replaces the description and any drawings, and optionally the claims
  • file a certified copy of the previous application within two months of filing
  • file a translation of the previous application (if in another language) into English, French or German within the same two month period.

 

Priority Rights

It is currently not possible to file a European patent application claiming priority from an application filed in a WTO country but which is not party to the Paris Convention. Under EPC 2000, the priority provisions will conform to TRIPS in that, when filing a European patent application, priority rights may be claimed from any WTO country, whether or not it is party to the Paris Convention.

Another change in relation to priority is that, under EPC 2000, it will no longer be necessary to file the priority declaration at the time of filing a European patent application. It will be possible to correct or add a priority claim after filing, provided that it is done within sixteen months from the priority date.

 

Further Processing and Re-Establishment of Rights (Restitutio)

The original EPC provided two procedures to excuse missed deadlines, other than appeals. These were "further processing" and "restitutio" (or "re-establishment of rights").

Further processing requires only a fee payment and a simple request, and there is no need to explain why the deadline was missed. Restitutio on the other hand also requires one to prove that the deadline was missed despite "all due care" having been taken, making it a much more burdensome option. The problem for applicants under the current EPC is that further processing is only available in limited circumstances, and it is difficult for applicants to meet the high standard required for restitutio.

Under EPC 2000, further processing will become the standard remedy for missed deadlines, which will be a very welcome change. Further processing will still be ruled out in respect of a small number of situations, including the time limits in respect of:

  • requesting further processing or re-establishment of rights;
  • the 12 month priority deadline;
  • paying renewal fees under extension;
  • filing the declaration of priority;
  • filing an appeal; and
  • filing a petition for review by the Enlarged Board of Appeal.

It is disappointing to note that under EPC 2000, further processing will not be an available remedy for a failure to pay renewal fees on time. Nevertheless, the application of further processing to a wider range of situations will naturally be of benefit to patent practitioners who miss a deadline during the grant procedure.

For missed renewal fees, the ultimate deadline for requesting restitutio under EPC 2000 is now six months later than under EPC 1973. For example, suppose a renewal fee had been normally due by March 31, 2006, or under extension until September 30, 2006. If both deadlines were missed, restitutio could have been applied for until March 31, 2007, but no later.

Under EPC 2000, in contrast, if a renewal fee is normally due by March 31, 2008 and payable under extension until September 30, 2008, it will be possible to apply for restitutio until September 30, 2009. Note that this year is an absolute cut-off, and in all cases one must apply for restitutio within 2 months of becoming aware of the missed deadline, even if this is long before the ultimate cut-off date.

 

Central Limitation and Revocation Procedure

The central limitation procedure is a new procedure provided by EPC 2000. Currently, if a patent proprietor wishes to limit the scope of the claims of a granted European patent, it is necessary to apply to each national patent office to request a post-grant amendment. The new central limitation procedure is a welcome procedure, since it will enable a patent proprietor to limit a patent through a single application to the European Patent Office. The patent may be limited or even revoked at the request of the patent proprietor. Some points to note concerning central limitation are the following:

  • the central limitation procedure will be only initiated on the request of the patent proprietor;
  • no other parties will be involved - the proceeding will be ex parte before an EPO examining division;
  • opposition proceedings take precedence over limitation proceedings;
  • the request for limitation is only examined for formalities to check whether what is requested is actually a limitation of the patent, whether the claims are still clear and concise, and to ensure no addition of subject-matter or extension of protection; patentability of the amended claims is not considered; and
  • there is no limit to the number of times limitation may be requested.

 

Petition for Review

Another new procedure under EPC 2000 allows a party adversely affected by a decision of a board of appeal to file a petition for review by the Enlarged Board of Appeal, although the grounds for filing such a petition are restricted. The main grounds for filing a petition for review are as follows:

  • wrong composition of the board of appeal;
  • fundamental violation of Article 113 (right to be heard and basis for decisions);
  • fundamental procedural defect (e.g. requested oral proceedings not arranged; no decision made on a relevant request); and
  • a criminal act which may have had an impact on a decision.


There is an obligation to raise any objections to fundamental procedural defects as they arise during appeal proceedings. It will be interesting to observe how this procedure will play out over the next few years once EPC 2000 is in force.

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