EPC 2000

The EPC 2000 or European Patent Convention 2000 is the version of the European Patent Convention (EPC) as revised by the Act Revising the Convention on the Grant of European Patents signed in Munich on November 29, 2000. On June 28, 2001, the Administrative Council of the European Patent Office (EPO) adopted the final new text of the EPC 2000. The EPC 2000 entered into force on December 13, 2007. European Patent Office (EPO) web site, [http://www.epo.org/patents/law/legislative-initiatives/epc2000/faq.html#answer2 "Frequently asked questions about the revised European Patent Convention (EPC 2000)"] , item 2. Consulted on October 31, 2007. ]

The EPC 2000 does not introduce any major changes in substantive patent law, EPO, [http://www.european-patent-office.org/news/epidosnews/epd_1_07/pinews_0107_en.pdf "EPC 2000 and its impact for patent searchers"] , "Patent Information News", Issue 1, 2007, page 1. ] [ EPO web site, [http://www.epo.org/patents/law/legislative-initiatives/epc2000/faq.html#answer9 "Frequently asked questions about the revised European Patent Convention (EPC 2000)"] , item 9. Consulted on October 31, 2007. ] except changes concerning novelty, [ Deletion of EPC 1973 Article|54|4, regarding the prior art effect of conflicting European patent applications. ] industrial applicability and priority rights. The EPC 2000 is however a comprehensive revision [ EPO web site, [http://www.epo.org/patents/law/legislative-initiatives/epc2000/faq.html#answer1 "Frequently asked questions about the revised European Patent Convention (EPC 2000)"] , item 1. Consulted on October 31, 2007. ] introducing "a considerable number of smaller amendments".

Background

A diplomatic conference was held from 20 November to 29 November 2000 in Munich to revise the Convention on the Grant of European Patents of 5 October 1973, amongst other things to integrate in the EPC new developments in international law, especially those of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement) and of the Patent Law Treaty, and to add a level of judicial review of the Boards of Appeal decisions.

Entry into force

Greece deposited its instrument of ratification on December 13, 2005, and was the fifteenth Contracting State to ratify or accede to the EPC 2000. [EPO web site, [http://patlaw-reform.european-patent-office.org/epc2000/status/ "Legislative Initiatives in European patent law" microsite, EPC 2000, Status of accession and ratification] ] In addition, since not all the contracting states had deposited their instruments of ratification or accession by September 30, 2007, the EPC 2000 will enter into force on December 13, 2007. [ Official Journal of the EPO, 2/2006, [http://www.european-patent-office.org/news/info/pdf/mitteilung_06_02_2006.pdf "Notice from the European Patent Office dated 27 January 2006 concerning deposit of the fifteenth instrument of ratification of the EPC Revision Act"] ] [ The EPC 2000 could have entered into force earlier, that is "on the first day of the third month following the deposit of the instrument of ratification or accession by the Contracting State taking this step as the last of all Contracting States, if this takes place earlier". However, as mentioned, since not all the contracting states had deposited their instruments of ratification or accession by September 30, 2007, the EPC 2000 entered into force on December 13, 2007.]

A Contracting State that would not have ratified or acceded to the EPC 2000 at the time of its entry into force, i.e. on December 13, 2007, would have ceased to be party to the EPC as from that time. [ EPC Article|172|4 ] All Contracting States ratified in due time.

Amendments

Prior art effect and double patenting

Under the EPC 1973, in order to preclude double patenting, OJ 2007, Special edition 4/2007, page 52, item 2. ] the prior art effect of a first European patent application (a so-called "conflicting patent application") filed before the filing date of a second European patent application, but published after said filing date, on the second application is limited to the designated states in common. [ EPC 1973 Article|54|4 ]

In the EPC 2000, this provision, i.e. Article 54(4) EPC, has been deleted. OJ 2007, Special edition 4/2007, page 52, item 3. ] This means in the EPC 2000 that "any European application falling underArticle 54(3) EPC constitutes prior art with effect for all the EPC contracting states at the time of its publication." EPC 1973 Rule|23a has been deleted following the deletion of Article 54(4). [ Special Edition No. 1 OJ EPO, p. 164. ]

The deleted Article 54(4) EPC remains applicable to the European patents granted before December 13, 2007 and the European patent applications pending on December 13, 2007. OJ 2007, Special edition 4/2007, page 52, item 4. ] In other words, Art. 54(4) EPC 1973 is still transitionally applicable. [ EPC 2000 Guidelines C-III, 8.1 (i). ]

This amendment along with the absence of a transitional provision for Rule 23a (providing that Rule 23a EPC 1973 would continue to apply for pending applications or granted patents at the date of entry into force of the EPC 2000) has raised concerns that, "if the provisions of the EPC 2000 are interpreted strictly", O. Griebling, " [http://216.92.57.242/patentepi/data/epi_02_2007.pdf EPC2000 invalidates existing patents?] ", epi Information 2/2007, June 2007, page 61. ] patent rights existing at the date of entry into force of the EPC 2000 may become invalid after the entry into force of the EPC 2000, on December 13, 2007. In September 2007, the European Patent Office published a notice indicating that "the provisions currently laid down in Article 54(3) and (4) in conjunction with Rule 23a EPC 1973 will continue to apply to European patent applications filed and patents granted before the entry into force of the EPC 2000". [ EPO, [http://www.european-patent-office.org/epo/pubs/oj007/10_07/10_5047.pdf "Notice from the European Patent Office dated 20 September 2007 on implementation of the transitional provisions of the EPC 2000 applicable during the transition from the EPC 1973 to the EPC 2000] , Official Journal EPO 10/2007, p. 504. ]

Requirements for obtaining a date of filing

The requirements to obtain a date of filing (for a European patent application), laid out in Article 80, have been amended. A reference is now made to the Implementing Regulations, which are now in line with "the wordwide standard laid out in Article 5 of the Patent Law Treaty 2000 (PLT)". OJ 2007, Special edition 4/2007, page 84, item 1. ] In particular, Rule 40 EPC 2000 is relevant. There is no requirement anymore to file claims to obtain a date of filing. OJ 2007, Special edition 4/2007, page 84, item 2. ] In addition the description may be filed in any language. Among the requirements, a reference to a previously filed application may also be used to obtain a date of filing. [ EPC Rule|40|1|c ] Furthermore, filing by reference to a previously filed application may incorporate the claims of the previously filed application. [ [http://documents.epo.org/projects/babylon/eponet.nsf/0/4C0AAA2182E5D2F2C125736700567D71/$File/guidelines_2007_part_A_en.pdf#page=19 EPC Guidelines A-II, 4.1.3.1] ] [ Andrea Veronese & Peter Watchorn, [http://www.epc-compass.com "Procedural law under the EPC-2000"] (1st Ed. Aug. 2008), Kastner AG, ISBN 13: 978-3-937082-90-5, Chapter II.6.4 ]

Priority rights extended to first filing in WTO members

The priority rights are extended to filing in or for any member of the World Trade Organization (WTO), in addition to any state party to the Paris Convention for the Protection of Industrial Property. [ Article 87(1) EPC 2000 ] This amendment has been made to align the European Patent Convention with Article 2 of the TRIPS Agreement. [ OJ 2007, Special edition 4/2007, page 88, item 2. ]

Legal remedies

Extensive changes were also made to the possibilities for the legal remedy of the failure to observe various time limits within the European patent system. Most particularly, the failure to pay various fees (filing fee, designation fee, search fee and examination fee) were, until the coming into force of the EPC 2000, excluded from the standard legal remedies of further processing [ EPC 1973 Article|121 ] and re-establishment of rights [ EPC 1973 Article|122 ] . Under the EPC 1973, the failure to observe the time limits for paying these fees could only be remedied by strict grace periods. [ EPC 1973 Rule|85a ] [ EPC 1973 Rule|85b ] These grace periods have now been replaced by the application of further processing [ EPC Article|121 ] and, if the further processing time limit is missed, re-establishment of rights, which although not directly applicable to the time limit missed originally, is applicable to the failure to observe the time limit for further processing. [ EPC Article|122 ] [ [http://www.epo.org/patents/law/legal-texts/html/guiex/e/e_viii_2_2_1.htm EPC Guidelines E-VII, 2.2.1] ]

One of the biggest changes, was to allow the excuse of the failure to observe the 12 month priority period. [ EPC Article|87|1 ] If this period is missed, this failure can be remedied by a request for re-establishment of rights filed within 2 months of the expiry of the priority period (in most other cases, the request for re-establishment must be filed within two months of the removal of the impediment to completing the act in question on time, up to a maximum of 12 months [ EPC Rule|136|1 ] ). This is provided that the failure to the observe the original period was despite the applicant having taken all due care (i.e. the applicant has a legitimate reason for missing the deadline). [ [http://www.epo.org/patents/law/legal-texts/html/guiex/e/a_iii_6_6.htm EPC Guidelines A-III, 6.6] ] There is some uncertainty as to whether this is an aggregate time limit or a unitary time limit, which can make difference of up to several days as to when it expires. [ Andrea Veronese & Peter Watchorn, "Procedural law under the EPC-2000", Chapter III.4.2.2 ]

Requests for limitation or revocation

Article 105a(1) EPC 2000 introduces a procedure for centrally limiting or revoking a European patent. [ Article 105a(1) EPC 2000. ] A request for limitation or revocation may be filed at any time throughout the term of the European patent. [ EPO web site, [http://www.epo.org/patents/law/legislative-initiatives/epc2000/faq.html#answer10 "Frequently asked questions about the revised European Patent Convention (EPC 2000)"] , item 10. Consulted on October 31, 2007. ]

Petition for review

Article 112a EPC 2000 introduces a procedure for contesting the decisions of the boards of appeal by filing a petition for review. [ Article 112a EPC 2000 ] The petition for review can only be based on a fundamental procedural defect and its purpose is not to obtain a review of the application of substantive law. [ EPO web site, [http://www.epo.org/patents/law/legislative-initiatives/epc2000/faq.html#answer14 "Frequently asked questions about the revised European Patent Convention (EPC 2000)"] , item 14. Consulted on October 31, 2007. ] The petition is in fact a restricted form of judicial review, limited to examining serious errors of procedure which might have been committed by the Legal or Technical Boards of Appeal, prejudicing the right to a fair hearing of one or more appellants. [ [http://documents.epo.org/projects/babylon/eponet.nsf/0/43F40380331CE97CC125727A0039243C/$File/00002a_en.pdf#page=139 Basic proposal for the revision of the EPC, MR/2/00] ] Previously it was not possible for a party who did not have his requests granted in an appeal to challenge the final decision of the Legal or Technical Board of Appeal on any grounds. [ [http://legal.european-patent-office.org/dg3/pdf/g970001ep1.pdf Enlarged Board of Appeal Decision G1/97] ]

The first petitions for review included "R1/08" (application no 97600009), "R2/08" (application no 00936978), "R3/08" (application no 01943244) and "R4/08" (application no 98116534). [ EPO web site, [http://www.epo.org/patents/appeals/petitions.html "Pending petitions"] , consulted on September 30, 2008. ] [ fr icon Laurent Teyssedre, [http://europeanpatentcaselaw.blogspot.com/2008/07/premires-requtes-en-rvision.html "Premières requêtes en révision"] , Le blog du droit européen des brevets, July 6, 2008. Consulted on July 6, 2008. ] [ fr icon Laurent Teyssedre, [http://europeanpatentcaselaw.blogspot.com/2008/09/premires-dcisions-statuant-sur-des.html "Premières décisions statuant sur des requêtes en révision"] , Le blog du droit européen des brevets, September 24, 2008. Consulted on September 30, 2008. ]

References

* European Patent Office, [http://www.european-patent-office.org/epo/pubs/oj007/08_07/special_edition_4_epc_2000_synoptic.pdf "Official Journal (OJ) 2007, Special edition 4/2007"] - "Revision of the European Patent Convention (EPC 2000). Synoptic presentation EPC 1973/2000" – Part I: The Articles (PDF, 1.72 MB)
* Andrea Veronese & Peter Watchorn, [http://www.epc-compass.com Procedural law under the EPC-2000] , 1st Edition August 2008, [http://www.kastner.de Kastner AG]

Notes

External links

* [http://www.epo.org/patents/law/legislative-initiatives/epc2000.html EPC 2000] on the European Patent Office web site
* [http://www.ige.ch/E/jurinfo/j100.shtm#a05 EPC 2000] on the Swiss Federal Institute of Intellectual Property web site
* [http://www.ipo.gov.uk/p-law-changes EPC 2000] on the United Kingdom Intellectual Property Office web site

Further links and readings

* EPO web site
** Special editions of the Official Journal of the EPO:
*** [http://www.european-patent-office.org/epo/pubs/oj007/01_07/special_edition_1_epc_2000.pdf 1/2007 - Revision of the EPC (EPC 2000), New texts relevant for patent practitioners] , 2007 (PDF, 1.6 MB).
*** [http://www.european-patent-office.org/epo/pubs/oj007/08_07/special_edition_3_epc_2000_decisions.pdf 3/2007 - Revision of the European Patent Convention (EPC 2000). Update of decisions of the President and notices from the European Patent Office of relevance to patent practitioners] , 2007 (PDF, 1.3 MB).
*** [http://www.european-patent-office.org/epo/pubs/oj007/08_07/special_edition_4_epc_2000_synoptic.pdf 4/2007 - Revision of the European Patent Convention (EPC 2000). Synoptic presentation EPC 1973/2000 – Part I: The Articles] , 2007 (PDF, 1.72 MB).
*** [http://www.european-patent-office.org/epo/pubs/oj007/12_07/special_edition_5_epc_2000_regulations.pdf 5/2007 - Revision of the European Patent Convention (EPC 2000). Synoptic presentation EPC 1973/2000 – Part II: The Implementing Regulations] , 2007.
** [http://www.european-patent-office.org/epo/dipl_conf/documents.htm Diplomatic Conference to revise the European Patent Convention - EPC 2000]
** [http://academy.epo.org/e_learning/epc_2000/player.html European Patent Academy, "e-learning module on the EPC 2000"]
** [http://www.epo.org/patents/law/legal-texts/guidelines.html EPC 2000 Guidelines - status December 2007]
* [http://www.bgblportal.de/BGBL/bgbl1f/bgbl107s2166.pdf "Gesetz zur Umsetzung der Akte von 29. November 2000 zur Revision des Übereinkommens über die Erteilung europaïscher Patente, Vom 24. August 2007"] , Bundesgesetzblatt Jahrgang 2007 Teil I Nr. 45, page 2166-2168.
** See also: de icon [http://frei.bundesgesetzblatt.de/pdf/bgbl2/bgbl207s1082.pdf Ratification Act] and de icon [http://frei.bundesgesetzblatt.de/pdf/bgbl2/bgbl207s1199.pdf Implementing Regulations] published in the German Federal Law Gazette or "Bundesgesetzblatt"