EPC 2000 IS JUST AROUND THE CORNER

November 2007

The revision of the European Patent Convention, referred to as the EPC 2000, will enter into force on December 13, 2007.

New texts relevant for patent practitioners are then the EPC 2000, the Implementing Regulations to the EPC 2000, the respective transitional provisions, and the Rules relating to Fees of December 7, 2006. Furthermore, the EPO has issued revised Guidelines for Examination in the EPO which will be applicable as of the date of entry into force of the EPC 2000 on December 13, 2007.

In the following we summarize and briefly discuss the major amendments of the EPC 2000 which we consider most relevant for our valued clients and colleagues.

1. Requirements for establishing a filing date, Art. 90 and R. 40

The filing requirements do not require anymore that the application comprises at least a single claim. The application must include a description (which now may be in any language) or reference to a previously filed application anywhere in the world irrespective of their language. The reference to a previously filed application then replaces the description, drawings and claims.

2. Priority, Arts. 87 – 89

A European patent application under the EPC 2000 can now enjoy the priority of an application filed in or for any member state of the WTO even if not party to the Paris Convention. Now, a restitutio in integrum is also possible for the priority term.
A translation of priority documents into an official EPO language will now only be required if the validity of the priority claim is considered relevant to the patentability of the claimed invention during examination proceedings.

3. Novelty – prior rights under Art. 54(3)

European patent applications filed prior to but published on or after the filing date of another European patent application (so called secret prior art) are considered to be relevant for novelty only and irrespective of the states which are designated in the earlier European patent applications.

4. Second medical use claims, Art. 54(5)

So far the Swiss type claim language was used to claim a second medical use of a known substance. Under the EPC 2000 this will no longer be necessary and a claim may be directed to „substance X for the treatment of medical condition Y“.

5. Central limitation and revocation procedure, Art. 105 a – c

At the request of the proprietor, a European patent may be revoked or limited by an amendment after grant in a centralized procedure at the EPO. The limitation or revocation is performed as an ex-parte procedure and is deemed to have effect for all validated states ab initio. A limited European patent will be published by the EPO.

6. Petition for review by the enlarged Board of Appeal, Art. 112 a

This new provision of the EPC 2000 now allows for any party which is adversely affected by a decision of a Board of Appeal to file a petition for review of the decision by the Enlarged Board of Appeal based on fundamental violation of procedural rules during the appeal proceedings.

7. Further processing and restitutio in integrum, Arts. 121 and 122

Under the EPC 2000, further processing of a European patent application is now applicable for any time limit vis-à-vis the EPO except for some notable exceptions like, e. g., priority, appeal and petition term to the Enlarged Board, Art. 121(4) EPC 2000.
The possibility of a restitutio in integrum according to Art. 122 EPC 2000 has been adapted accordingly but is now applicable for re-establishing the priority right.

8. Attorney-Client Privilege, Art 134a and R. 153

The EPC 2000 now provides that all communications between the EPO attorney and his client are permanently privileged from disclosure. The privilege in particular applies to any communication or document relating to: the assessment of the patentability, the preparation or prosecution of an application, and any opinion relating to the validity, scope of protection or infringement of a European patent or patent application.

In summary it can be said that the general goal of the new provisions of the EPC 2000 is to harmonize the EPC with different international patent treaties like TRIPS, PLT 2000 and the PCT, to simplify procedures and to provide further options to applicants for, e. g., post-grant revocation and further processing. This newsletter addresses some remarkable but not all revisions of the new EPC 2000. If you have any further comments or questions regarding particular new provisions of the EPC 2000, we would be pleased to answer them.

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