Patent Baristas

Filing Requirements

The minimum requirements for obtaining a filing date have been relaxed. It is now sufficient to provide the European Patent Office with: i) an indication that a patent is sought; ii) information identifying the applicant; and iii) a description or a reference to a single previous application which will form the description. If a reference to a previous application is relied on, the applicant must supply a copy of the previously filed application within two months of the filing date and, where the previously filed application is not in an official language of the European Patent Office, a translation.

Furthermore, it will no longer be necessary to provide any claims in order to obtain a filing date. If the application is filed without claims, but satisfies all other requirements for obtaining a date of filing, the applicant will be requested to provide claims within a set term. However, the claims cannot be broader than the original disclosure.

Claiming Priority

The provisions on priority have been extended. In particular, priority may be claimed not only from an application filed in any State party to the Paris Convention, but now also from an application filed in any World Trade Organization state.

A further change to the priority provisions is a relaxation of the time limit for claiming priority. Under new Rule 52 EPC it will be possible to add or correct a priority claim up to 16 months from the earliest priority date claimed.

Prior Art Effect of Prior-Filed European Patent Applications

From the date that EPC 2000 comes into force, there will be an amendment to the novelty provisions of Article 54 EPC. From this date, all Contracting States will be deemed to be designated in an application, and it will not be a requirement that designation fees have been paid for a given contracting state in order for a European patent application to have a prior art effect. Thus, the contents of all European patent applications as filed, which have an earlier filing date, but a later publication date, will be considered relevant to the novelty of a European patent application. It should be noted that this revision will not have a retroactive effect.

Further Processing

Further processing (Article 121 EPC) is a procedure permitted under the EPC which allows an applicant, simply by virtue of payment of a fee, to reinstate an application deemed withdrawn when a deadline had been missed. The particular deadlines for which further processing was available were quite restricted. Under EPC 2000 the provisions for further processing have been significantly broadened and the new provisions will apply to any time limit vis-à-vis the European Patent Office, not just those set by the European Patent Office.

A number of time limits are specifically excluded under new Article 121 EPC, these include: the time limits for filing a petition for review by the Enlarged Board; the six month grace period for paying the renewal fee with surcharge; making a declaration of priority; the correction of deficiencies in claiming priority; requesting re-establishment of rights; requesting an appeal; and the one year priority period.

Re-Establishment of Rights

The circumstances where it is possible to make a formal application for re-establishment of rights (Article 122 EPC), in the absence of the availability of further processing, are also extended.  Re-establishment of rights is now possible in respect of the priority year. The request for re-establishment must be filed within two months of the end of the priority year.

The time limit for requesting re-establishment is extended in respect of failure to pay a renewal fee. In particular, the six-month grace period for paying the renewal fees is not to be deducted from the one year grace period for requesting re-establishment of rights (new Rule 37(4) EPC).

It should be noted that the evidential burden on the applicant for re-establishment remains the same and the applicant still needs to show that all due care has been taken.

Consideration of Unity by the European Patent Office

Previous Rule 112 EPC has been replaced by new Rule 164 EPC. This has removed the opportunity to have further searches undertaken on PCT applications upon entry into the European regional phase. The opportunity to have multiple inventions searched within the framework of one application will now be limited to the international phase. On entry into the European phase, non-unitary subject matter should be deleted or consigned to a divisional application.

Medical Use Claims

A new Article 54(5) EPC has been introduced which effectively formalizes the patentability of second and subsequent medical uses without requiring “Swiss-type claiming”. Therefore, under EPC 2000, second and further medical use claims may be of the form “substance or composition X for use in the treatment of disease Y.”

Transitional Provisions

Transitional provisions have been introduced to ensure that, wherever possible, the revised provisions will be applicable to pending European patent applications and granted European patents.

Limitation (new Article 105a EPC 2000)

Under EPC 2000, it will be possible for an applicant to limit the claims of a European patent centrally at the European Patent Office (new Article 105a EPC). This is a very significant change, as there is no provision for post-grant amendment under the current version of the EPC other than in the course of opposition proceedings.

Under the existing law, an applicant who wishes to limit aEuropean patent has to make use of national provisions in the designated states where they are available. As the procedure is governed by national law, the process can be time-consuming, costly and complex. Moreover, certain countries, such as France, have no provision for post-grant amendment under their national law.  Other countries, such as the UK, only allow post-grant amendments in certain circumstances.

The EPC 2000’s new limitation procedure is intended to be quick and straightforward. No examination of the patentability of the claims will be carried out. The European Patent Office will restrict its examination to whether the requested limitation actually narrows the scope of the claims, whether the amendments are clear (Article 84 EPC) and whether they have basis in the original application as filed (Article 123(2) EPC). Broadening amendments that extend the scope of the claims beyond the scope of the claims as granted will not be allowed (Article 123(3) EPC). A major advantage for the patent proprietor is that there is no provision for a third party to oppose an application for limitation.

Once the European Patent Office decides to allow a request for limitation, the limitation will have a retroactive effect from the date of grant of the patent.

The limitation procedure is available for all European patents, including those that have already been granted at the time EPC 2000 comes into force. A request for limitation may be filed at any time after the patent is granted. However, if a request for limitation is filed while an opposition is pending, the opposition proceedings will take precedence. If limitation proceedings are pending when an opposition is filed, the limitation proceedings will be terminated.

EPC 2000’s new post-grant limitation procedure is expected to provide a useful mechanism for patent proprietors to limit the claims of their patents to distinguish from newly discovered prior art. This will allow patent proprietors to strengthen their patents from a validity perspective prior to enforcement proceedings in the national courts.

Limitation in National Proceedings (Article 138(3) EPC 2000)

EPC 2000 also provides patent proprietors with the right to limit the claims of their Euro-National patents in validity proceedings before national courts (new Article 138(3) EPC).

This new provision provides patent proprietors with a useful tool for improving their position or even circumventing nullity or invalidity proceedings brought against their patents in the national courts.

Review of Board of Appeal Decisions (Article 112a EPC 2000)

Under the current provisions of the EPC it is not possible for an adversely affected party to appeal a decision by a Board of Appeal of the European Patent Office. This will change under EPC 2000. In particular, under new Article 112a EPC 2000, it will be possible for any party adversely affected by a decision of the Board of Appeal to file a petition for review by the Enlarged Board of Appeal.

Such petitions, however, may only be filed under specific circumstances (Article 112a(2) EPC 2000). These include situations where a member of the Board of Appeal took part in the decision despite having a personal or previous interest in the case, or where a criminal act took place that may have had an impact on the Board of Appeal’s decision. Petitions may also be filed in cases where a fundamental procedural defect or violation took place (e.g. if the decision of the Board of Appeal was not based on grounds or evidence on which the parties have had an opportunity to present their comments (Article 113(1)EPC)).

Protocol to Article 69 EPC

Article 69 of the EPC indicates that the extent of protection is determined by the claims. The Protocol”to Article 69 indicates that the scope of protection should combine a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties. The “Protocol” now has an additional article indicating that due account shall be taken of any element which is equivalent to an element specified in the claims.

In the UK case of Kiren & Amgen (RPC 2004, UK House of Lords) the following test was formulated in determining the construction of the claims:

“What would a person skilled in the art have understood the patentee to have used the language of the claim to mean?”

Although a 2004 case, the test was formulated in the knowledge of the new second limb to the Protocol”and so reflects the UK Courts view of how the protocol should now be applied. It remains to be seen how other European Courts apply the amendment to the protocol.

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