Abstract

The EPC2000, the first major revision of the European Patent Convention (EPC) since its creation in 1973, entered into force on December 13, 2007 bringing some substantial changes in the procedures with the European Patent Office (EPO). These changes bring the EPC more in line with international treaties like the TRIPs and PLT, clarify some points of law in the light of some decisions by the EPO-Boards of Appeal, and tend to streamline the workload of the EPO. Some of the changes are purely administrative, but others will affect the applicants’ and patentees’ habits. The present paper attempts to give a clear and precise overview of these changes, and the effects thereof on the applicants.

Introduction

The European Patent Convention (EPC) of October 1973 provides an autonomous legal system according to which European patents are granted. The Act Revising the Convention on the Grant of European Patents was signed at a diplomatic conference in Munich on November 29, 2000 and the final new text of the EPC2000 was adopted by the Administrative Council of the EPO on June 28, 2001. The EPC2000, the first major revision of the EPC since its creation in 1973, entered into force on December 13, 2007. The changes brought by EPC2000 to the 1973 version of the EPC (EPC1973) have several objectives:

(1) first, they bring the EPC more into line with the latest provisions in international law, especially those of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement) and of the Patent Law Treaty (PLT), and they clarify several points of law in the light of some decisions by the EPO-Boards of Appeal: these include in particular new provisions concerning the right to priority (Art.87(1) EPC); definition of the scope of protection of a European patent (protocol on interpretation of Art.69 EPC); request for limitation or revocation of one’s own patent (Art.105a c EPC), petition for review of a second instance final decision (Art.112a EPC); European patent attorney-client privilege (Art.134a EPC): etc.

(2) second, they aim at simplifying and streamlining the procedures for the benefit of both the EPO and the applicants; these concern in particular the new provisions on the filing requirements (Art.14(2)&80 and Rule 40 EPC); anchoring BEST in the EPC (Art.16-18); second and further medical indications (Art.54(5) EPC), non-unity Euro-PCT applications (Rule 164(1) EPC); etc.

(3) third, they tend to enhance the flexibility of the EPC by transferring many provisions to the implementing regulations, which are more easily amended¹  (these changes will not be addressed in this paper as they do not affect directly the applicants and patentees).

These new or amended provisions are reviewed here in below in an order following roughly the chronology of the patent granting procedure.

Priority (Art.87 (1) EPC)

In line with Article 2 of TRIPs and with Art.8 and rule 4.10(a) of PCT, Article 87(1) EPC recognizes the right to claim priority on a specific IP-application filed in any state party to the Paris convention and in any member of the World Trade Organization (WTO), whilst in the 1973 version of the EPC this right was recognized exclusively for states party to the Paris convention. This seemingly innocuous change may be of great importance to applications first filed in WTO-member states not party to the Paris convention like Angola, Brunei, Fiji, Hong Kong, Macao, Maldives, Myanmar, Solomon Island, Taiwan, and Thailand.

In G2/02 the enlarged Board of Appeal had to answer a question referred thereto by a legal board of appeal, as to “whether [under EPC1973] a European patent application filed in the first place as an international application under the [...] PCT could validly claim the priority of an Indian application at a time when India was a party to [WTO/TRIPs agreement], but not yet a party to the Paris Convention”. Unfortunately for Astra Zeneca AB, the applicant and appellant, the enlarged board of appeal decided in 2002 that the TRIPs agreement [did] not entitle the applicant for a European patent application to claim priority from a first filing in a state which was not at the relevant dates a member of the Paris Convention but was a member of the WTO/TRIPs Agreement”, because inter alia, Art.87 89 EPC1973 do not provide for priorities based on applications from states not party to the Paris convention and the EPO is not a member of the TRIPs agreement (although most EPC-contracting states were at the priority date).

The enlarged board of appeal had no choice but to take this hard decision against the appellant who lost all hopes of getting patent protection in Europe for the invention called for in said application, although the board was aware of the new text of the EPC2000 adopted ten months earlier but not in force yet at the date the decision was taken (cf. point 3.6 of the Reasons for the Decision).

Requirements for obtaining a filing date (Art. 80 and Rule 40 EPC)

In order to align the European convention with Article 5 of the Patent Law Treaty 2000 ² (PLT), the requirements for obtaining a filing date have been simplified substantially compared with the provisions laid down in the EPC1973 in two aspects:

(1) In case of urgency, it is now possible to file an application “without claims” (Rule 40(1) EPC), whereas previously “one or more claims” had to be filed to obtain a filing date (cf. Art.80(d) EPC1973). If a filing date is accorded without filing one or more claims, the applicant shall be informed accordingly and invited to file a set of claims within a period of two months from the notification (Art.90(3)&(4) and Rules 57(c) & 58 EPC). Regardless of whether a filing date is required for founding priority or to obtain a European patent, this new provision allows in particular to file very rapidly a description in the form of an internal report or a scientific paper ready for publication and to shape it into a patent form at a later stage, taking care of course that the filed documents disclose all the features required to define the invention to be claimed.

(2) If the European application is identical to a previously filed application ―for instance, one used to claim a priority date―, a filing date may be obtained by simply stating the number and filing date of that previously filed application and the office with which it was filed, and to indicate that said previous application replaces the description and any drawings of the European patent application being filed (Rule 40(1)&(2) EPC). A certified copy of the previous application shall, however, be filed within two months from the filing of the application, together with a translation thereof if not in an EPO official language (French, English, or German) (Rule 4(3) EPC). Here again this provision eases the applicant’s —and its representative’s— life by not requiring the filing of a document which, for one or the other reason, may not readily be available, e.g., in case said previous application  had been assigned to a new party close to the end of the year of priority.
 

Language for filing a European patent application (Art. 14(2) & 80 and Rule 40 EPC)

A patent application may be filed with the EPO in any language regardless of the applicant’s origin (Art.14(2) EPC) whereas under EPC1973 it had to be filed in one of EPO official languages: English, French, and German; European applicants, however, were allowed to file in one of the official languages of their country of origin, provided a translation in one of EPO official languages was filed within three months from the filing date (Art.14(2) and Rule 6 EPC1973). Today a translation is still required in one of the EPO official languages within two months of the filing date (Rule 6 EPC), but there is no more restriction on the language of the original filing. This softer provision than in the EPC1973 aligns the EPC with Article 5 PLT and is of great advantage to the applicant, who disposes of two extra months (on top of the 12-month priority period) to file a translation. This provision would have been agreeable to this company located in Curaçao in the Dutch Antilles which filed a European patent application drafted in the Dutch language and claiming priority from a Dutch national application and which was denied a filing date because the application was not filed in one of EPO official languages (cf. J9/01). By the time the translation was filed, the 12-months priority period was passed and the priority lost. This decision contradicted an earlier decision (J15/98) which reversed a decision of the receiving section which refused to grant a filing date to an application drafted in the Spanish language and filed by an applicant from Uruguay. Although these contradictory decisions were never referred to the enlarged board of appeal, new Art.14(2) EPC clarifies the question by following the decision of J15/98, much to the advantage of the applicants (in particular the non-European ones). Indeed by filing a European patent application in a foreign language ―the applicant’s mother tongue― followed by the filing of a translation, the latter can always be brought into conformity with the original text throughout the proceedings before the EPO (Art.14(2) EPC).

Anchoring best in the EPC (Art.16-18 EPC)

Since the mid 90’s the EPO progressively passed from a system where searches and substantive examinations were dealt with by different examiners, located in The Hague (NL) and Munich (DE), respectively, towards the so called BEST-system (Bring Examination and Search Together) wherein the search examiner acts also, as far as possible, as first examiner in the examining division responsible for the substantive examination of a patent application. Although in the early 2000-2005, BEST implementation could be considered as substantially completed, Article 17 EPC1973 still referred to the search divisions as being located in the branch at The Hague and was replaced by a provisionally applicable amendment corresponding to present Article 17 EPC which is mute concerning the location of the search division in accordance with the application of BEST at the EPO. Although the passage to BEST represented a major procedural change for the EPO, this provision does not change anything for the applicant since it merely anchors in the EPC a practice currently followed at the EPO for the last few years.

Supplementary search for non-unity Euro-PCT applications (Art. 153(6) & (7) and Rule164(1) EPC)

Although the international search report (ISR) established during the PCT phase shall take the place of the European search report for a PCT application upon its entry into the European phase ―thus becoming a Euro-PCT application―, the EPO carries out a supplementary search for all Euro-PCT applications but the ones in respect of which the EPO drew up the international search report, and which ISR is still relevant to the claims entered into the European phase (Art.153(6)&(7) EPC).

If only a part of the application was searched by the international search authority because of lack of unity, and the applicant did not pay all the corresponding additional search fees in the PCT-phase, the EPO formerly would have first assessed whether or not the Euro-PCT application complied with the unity requirements and, if not, would have invited the applicant to pay additional search fees for those parts of the Euro-PCT application which had not been searched previously (Rule 112 EPC1973).

This applicant-friendly procedure was replaced by a more restrictive approach defined in Rule 164(1) EPC, which restricts the supplementary search to the invention first mentioned in the claims and does not give any opportunity to the applicant to obtain a European search for the additional inventions claimed. This provision was introduced to give a more equal treatment to applications filed through the EP-direct and Euro PCT routes, since in the former the applicant is given a single opportunity to have additional searches covering further inventions, whilst in the latter it could theoretically be given two opportunities: one by the international search authority upon establishment of the ISR and a second one by the EPO’s search division upon carrying out the supplementary European search. This new approach should also help expedite the proceedings, saving the search examiner in charge of the file extra work and time by carrying out a single supplementary search.

It was argued that it would not involve any loss of rights for the applicant since additional searches could be obtained by filing divisional applications.³  This reasoning, however, does not take account of the additional costs associated with the filing of a divisional application (filing fees, renewal fees, and representative fees). This is particularly critical in cases where the search examiner takes an overly narrow and academic approach to unity ⁴ or if the search report on the second invention searched reveals documents so relevant that the only option is the withdrawal. Under EPC1973, this information was available with the payment of an additional search fee of EUR1050 (Rfee Art.2.2), whilst now it would cost about EUR1500 in official fees⁵ plus representative costs, which are much higher for amending the application and filing a divisional than for the payment of a second supplementary search fee.

Furthermore, it is not clear that this new regulation really enhances equal treatment of EP applications filed by the EP direct and the Euro-PCT routes for the following reasons. Imagine a PCT application searched by an international search authority other than the EPO, which did not raise any objection of lack of unity. If upon entry into the European phase the EPO considered that the application lacked unity, it would restrict the supplementary search to the invention first mentioned without giving the applicant any other option than to file a divisional application to obtain a European search report covering the unsearched subject matter. On the other hand, if the applicant had filed the same application through the EP direct route, it would have been invited to pay additional search fees to get the further invention(s) searched by the EPO.

In case the applicant wished to get a second invention searched without having to file a divisional application straightaway ―and assuming it was not searched in the PCT phase―, it is recommended upon entry into the European phase to invert the order the two groups of inventions are mentioned in the set of claims as allowed by Rule 161 EPC such that the unsearched invention is mentioned first. The supplementary search report should theoretically cover said unsearched invention pursuant to Rule 164(1) EPC against the payment of a single additional search fee of EUR1050 (Rfee A.2.2).

Second and subsequent medical indications (Art. 54(5) EPC)

According to Article 53(c) EPC “methods for the treatment of human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body” are excluded from patentability, which was construed by the enlarged board of appeal in G5/83 as excluding from patentability claims “directed to the use of a substance or composition for the treatment of the human or animal body by therapy.” Art. 54(5) EPC1973 corresponding to Art. 54(4) EPC, however, does not exclude protection for a product “for use in a method as referred to in [Art.53(c) EPC as cited supra]”. The enlarged board of appeal further decided in G5/85 that, under EPC1973 first medical indications could therefore be protected by a claim of the type: “[known] product for use as [any] medicament”, and a second and further uses of said product could only be protected by a rather cumbersome expression of the type “use of a [known] product for the manufacture of a medicament for the treatment of a [specific] disease” known as Swiss type claim. Swiss type claims, however, were not always fully construed as in G5/83 by national courts of the EPC-contracting states, creating some legal uncertainty.

With Article 54(5) EPC any second and further medical uses can be protected by the former and simpler expression of the type “[known] product for use as a medicament for a [new] specific treatment.” It follows that manufacturing and selling a known medicament with an explicit mention of a specific therapeutic use protected by a patent as a second medical indication should be considered as contributory infringement. Note that this type of formulation is at odds with, and constitutes an exception to the general way novelty of a product is assessed at the EPO, which construes the expression “product for use as...” merely as “product suitable for use as...” which is much broader ―and therefore more easily anticipated by a prior art teaching― than in the case of medical indications.

Request for limitation or revocation (Art. 105a-c EPC)

Since 1993 when the enlarged board of appeal ruled in decision G9/93 that the proprietor of a patent was not entitled to file an opposition against its own patent, there has been no possibility offered to the patent proprietor to limit the scope of its own patent in a centralized proceedings before the EPO if, for instance, made aware of a piece of prior art relevant in a national phase only and thus not identified or used during the European examination phase. Since that decision, a patentee could only amend the scope of its European patent with each national patent office of the states where the patent was in force. G9/93 based its decision inter alia on the fact that an opposition was by definition an inter parts proceedings, which could no longer be the case if the opponent was the proprietor, thus reducing it to an ex parte proceedings. This was the first (and last) time the enlarged board of appeal overruled one of their own previous decisions, G1/84, which read the expression of Art.99 EPC1973 “any person may give notice [...] of an opposition” as including the patent proprietor.⁶ 

The patent proprietor of a European patent may now, at any time after grant thereof, request for limitation or revocation ab initio of its patent (Art.105a-c and Rule 92 EPC). Such request is deemed as not to have been filed if opposition proceedings are pending (Rule 93(1) EPC). Actually, revocation takes precedence over opposition proceedings, the latter taking precedence over limitation proceedings. If the request is considered  as admissible, the examining division examines whether the amended claims constitute a limitation vis-à-vis the claims of the European patent in force (as granted or amended in opposition or limitation proceedings) and that they do not add subject matter and are clear (Rule 95(2) EPC). If the request for limitation is allowable and the corresponding formalities and fees fulfilled, a new specification will be published.

The legislator intended to provide a swift proceedings for limitation of a patent by, first, not providing a new examination on patentability of the amended set of claims in terms of novelty and inventive step and, second, by allowing one opportunity alone to correct any deficiencies (Rule 95(2) EPC). Reality, however, could be slightly different than expected as any of the issues of whether the amendments constitute a limitation, add subject matter, or are clear can lead to much debate. After six months from the entry into force of this provision, about 50 requests for limitation and about 13 for revocation have been filed with the EPO ⁷ showing that it was welcome by the patent proprietors.

Petition for review of a second instance final decision (Art.112a EPC)

The EPC is based on a two instance system wherein a first instance decision may be appealed with the boards of appeal of the EPO, whose decisions concluding an appeal are final and have the force of res judicata (Art.106 EPC). ⁸ In 1997, however, the question was raised as to whether a second instance decision biased by an alleged fundamental procedural violation by a board of appeal could be reviewed? The enlarged board of appeal addressed this question in detail in its decision G1/97 concluding that, “within the context of the [EPC1973], requests [for the revision of a second instance decision] based on the alleged violation of a fundamental procedural principle cannot be validly filed” (cf. point 9 of the Reasons for the decision). The enlarged board of appeal, however, stressed the legislator “to provide [in the convention itself] for a possibility of reviewing final decisions of the boards of appeal in specific, clearly defined cases where a serious violation of a fundamental procedural principle has occurred” (op.cit.).

Apparently, the legislator took good notice of the enlarged board of appeal’s suggestion since the legal frame for a new proceedings concerning the petition for review of a decision was included into the EPC2000 with Art.112a and Rules 104-111 EPC, which define the cases for which such petition is admissible and  establish the necessary arrangements for dealing with them. The cases justifying the filing of such petition are listed in Art.112a(2) EPC and comprise (i) wrong composition of the board of appeal which took the contested decision, (ii) fundamental procedural violation, and (iii) criminal act having had an impact on the decision. The body competent for examining a petition for review is the enlarged board of appeal (Art.112a(5) EPC), which role was previously restricted pursuant to Art.112 EPC1973 to ensuring uniform application of the law or to addressing important points of law upon reference of a specific question thereto by a board of appeal or upon reference by the president of the EPO of a point of law where two boards of appeal had given different decisions (note that Art.112 was not amended in the EPC2000).

This newly introduced proceedings is, as emphasized in G1/97, of great importance for the European patent system as a whole because “while, on the one hand, legal certainty and the principle that all litigation must end within a reasonable interval are essential elements in any jurisdictional system, a flagrant violation of a fundamental procedural principle is inimical, on the other hand, to the very idea of justice and does serious harm to the image of the judicial body concerned” (cf. point 9 of the Reasons for the decision).

Definition of the scope of protection of a European patent (Protocol on Interpretation of Art.69 EPC)

If the granting proceeding of a European patent is centralized at the EPO, the enforcement of a European patent is the competence of the national courts of the EPC contracting states. In order to ensure as uniform an interpretation of the claims of a granted European patent by the courts of the EPC-contracting states, Art.69 EPC, which defines that the extent of protection conferred by a European patent shall be determined by the claims, is complemented by a protocol of interpretation of Article 69 of the convention. In the EPC1973, said protocol was inserted as footnote 40 at the bottom of Art.69 EPC1973. In practice, however, the 1973-protocol failed to impose Europe-wide uniform criteria for the interpretation of European patents and the interpretation of their extent of protection. In particular, the courts of the various European nations diverged in the way they treated so-called equivalents and on the importance they attributed to prior statements made by the patentee or applicant during any proceedings concerning a European patent. ⁹

Newly added Article 2 of the protocol of interpretation of Article 69 addresses the question of equivalents and explicitly specifies that “any element which is equivalent to an element specified in the claims” shall be taken into account for determining the extent of protection conferred by a European patent. Experience will show how the different national courts will construe the term “equivalent” and whether this additional article will contribute to a more harmonized interpretation of the extent of protection conferred by a European patent by the various national courts of the EPC-contracting states.

European patent attorney-client privilege (Art. 134a EPC)

In many countries clients have a privilege in correspondences with attorneys at law but not necessarily with IP-attorneys, especially where the latter need not be qualified lawyers. ¹⁰ Although Art.2 of the regulation on discipline of the EPI ¹¹ states that “a professional representative shall be bound not to disclose information accepted by him in confidence in the exercise of his duties, unless he is released from this obligation,” privilege between a European patent attorney and its client had been denied in the past by courts, e.g., in the US (cf. Bristol-Myers Squibb v. Rhône Poulenc Rorer) and in Australia (cf. Eli Lilly v. Pfizer Ireland), with the result that the entire content of the files of the European patent attorneys in charge of the respective cases were made available to the judges.

To ensure that the secrecy relating to confidential communications provided under Art.2 of the Regulation on Discipline of the EPI be respected by national courts, Art.134a(1)(d) EPC was added into the EPC2000.  A critical issue with patent attorney privilege is to determine which documents are covered by the confidentiality privilege. Rule 153 EPC was added to clarify this point listing the cases where such privilege should apply.

It is not clear at this stage, however, whether any national court of justice, be it within or out of Europe, will recognize the European patent attorney-client privilege defined in the EPC, because Art.134a(1)(d) EPC explicitly links “the obligation of confidentiality on the professional representative and the privilege from disclosure [to the] proceedings before the European Patent Office” and not to judicial proceedings before a court. It follows that the various national jurisprudences will reveal which states recognize the privilege of European patent attorneys with their clients and the scope thereof. In the meantime, it could be suggested to stamp the message “privileged and confidential information under Art. 134a (1)(d) EPC” on all the written communications between a patent attorney and its client.

Conclusions

The entry into force of the EPC2000, the first major revision of the EPC since EPO’s creation constitutes a milestone for the EPO. Overall, most of these changes are to the benefit of the applicants for and proprietors of European patents and to the public in general, as they usually soften certain requirements for obtaining a right (e.g., the conditions for obtaining a priority date and a filing date; simpler claims for protecting second medical indications) and align the provisions of the EPC with the international legislations (e.g., TRIPs agreement, PCT, PLT). Finally, the EPC2000 seems to tend to extend the benefits of a centralized procedure beyond the date of grant of a European patent with the inclusion of a number of post-grant provisions, such as Art.2 of the protocol of interpretation of Article 69, European patent attorney privilege, the introduction of a petition for review of a decision by a board of appeal and, in particular, the possibility given to patentees to request the EPO to limit or revoke their own European patent, both operations being previously only possible before each national court of the states where the European patent was in force.

Endnotes:

1. Amendment of a provision of the EPC can only be decided in a Diplomatic conference, whilst the implementing regulations may be amended by the administrative council.
2. cf. OJEPO(2007), special edition 4/2007, p.84 (“Article 80 EPC”).
3. D. Visser, “The Annotated European Patent Convention 2000” (2006), Tel, publisher, 14th Ed., p.301, note 3.
4. Although this should normally not happen since the EPO Guidelines clearly state that an objection for lack of unity “should neither be raised nor persisted in on the basis of a narrow, literal or academic approach (EPO-Guidelines, C III, 7.7)
5. filing fee (EUR100, Rfee A.2.1) + search fee (EUR1050, Rfee A.2.2) + renewal fee for 3rd year (EUR400, Rfee A.2.4) = EUR1550.
6. Note that Art.99(1) EPC maintains the same wording which, construed in the light of G9/93, does not include the proprietor, who is still not entitled to file an opposition against its own patent. This, however, should not be considered as necessary anymore in view of Art.105a EPC.
7. Unofficial source (to be confirmed).
8. Decisions of the EPO’s boards of appeal may be challenged before national judicial instances.
9. cf. D. Visser, “The Annotated European Patent Convention 2000” (2006), Tel, publisher, 14th Ed., p.304.
10. Appendix1, on pp. 49-54 of http://www.ipria.com/publications/Reports/IPRIA%20Patent%20Attorney%20Privilege%20Report%202007v2.pdf, indicates the requirements for becoming a national patent attorney in different states.
11. EPI = European Patent Institute is an international non-governmental public law corporation regulating the European patent attorney profession; the regulation on discipline of the EPI can be consulted in http://216.92.57.242/patentepi/english/100/120/123/

About the author:

Marco Tom Connor, Ph.D., is presently head of the patent department at Kirkpatrick, one of the leading IP firms established in Brussels (Belgium).
Details: http://www.kirkpatrick.eu