EPC2000 TOP TEN CHANGES

This is a brief summary of the top ten changes, from the many changes that are to be expected under the EPC2000, coming into force on December 13, 2007.

1) New practice for according a filing date (A. 14(2), 80; R. 40)

Accordance of a filing date under new Rule 40 requires the indication that a European patent is sought, the information identifying the applicant or information allowing the applicant to be contacted, and - in any language - the description or a reference to a previously filed application. When filing the papers, it is no longer required to designate at least one contracting state or to contain at least one claim. It is, however, recommended to file the complete documents, including the desired claims, in order to avoid any difficulties with regard to new matter objections when filing new claims after the filing date.

2) Filing of missing parts (R. 56)

New Rule 56 allows now, in addition to the filing of missing drawings, the filing of missing parts of the description. The filing date, however, may be re-dated to the filing date of the missing parts, unless said parts were completely contained in the priority document. The filing of missing parts may be withdrawn within one month from notification by the EPO of a new date of filing resulting in the accordance of the original filing date.

3) Claiming priority (A. 87; R. 53(3); R. 52(1))

Priority may now be claimed from any WTO member state. The translation of the priority document is required only upon request by the EPO, which will be requested only if validity of the priority claim is relevant for the assessment of the patentability. The priority declaration may still be made within 16 months from the earliest priority date. Furthermore, a priority declaration can be corrected within the 16 months period (R. 52(3)). Finally, re-establishment into the 12-month priority period is now provided by new Article 122. Such a request, however, must be filed within two months of expiry of the 12-month period.

4) Further processing (A. 121; R. 135)

Further processing will be the main legal remedy for fixing missed deadlines. The use of further processing will be extended to partial loss of rights (in addition to the total loss of rights already provided under the current practice) and is applicable to time limits set by the EPO as well as time limits set by law. Finally, further processing replaces the periods of grace of R. 85(a) and R. 85(b) of the current practice, which govern the action required in case of missed deadlines for the payment of fees. The fee for further processing in case of late payment is 50% of the non-paid fee(s). There still remain deadlines excluded from further processing.

5) Reinstatement of rights (A. 122; R. 136)

Reinstatement of rights into the priority period will be possible. There is, however, a limitation in that the request for reinstatement of rights must be filed at the latest within the two months following the 12-month priority period. Reinstatement is excluded for all deadlines for which further processing is available.

6) Supplementary searches (A. 153(7); R. 164)

In the case that a PCT application is found to lack unity by the International Search Authority, it should be kept in mind that, for the regional phase before the EPO, only one invention will be searched by way of a supplementary search and this will be the invention first mentioned in those claims that were filed with entry of the regional phase. Therefore, it is advisable to review the claims of a PCT application which was found to lack unity before entering the regional phase in order to ensure that the most important invention is the first invention mentioned in the claims. Further inventions not covered by the supplementary search can be further prosecuted only by way of a divisional application. Therefore, to keep the option open to select any of the inventions of the PCT claims for the examination at the EPO, it would be best to have all inventions searched during the PCT stage.

7) European patent applications under A. 54(3) form prior art for novelty regardless of the designated states

Contrary to former provisions, the novelty destroying effect of European patent applications filed before a younger European patent application, but being published after the filing date of the younger application, is no longer limited to identical designation states (Article 54(3)). This is a consequence of the deletion of current Article 54(4) EPC.

8) Purpose limited product protection for second and further medical use possible (A. 54(5))

Under new Article 54(5) product protection for second and further medical uses will become available. Such a claim may have the form “Substance X for treating disease Y”. It remains to be seen whether, in addition to this new type of claim, the well-established second medical use type claim may be prosecuted additionally.

9) New limitation procedure (A. 105(a) – 105(c); R. 90 – 96)

Completely new proceedings are made available under new Articles 105(a) to (c), which allows the proprietor to file a request with the EPO to limit the claims or revoke the patent in its entirety. In the case that opposition proceedings should be installed against the same patent, the opposition proceedings prevail and the request for limitation is deemed to be not filed.

10) Petition to the Enlarged Board of Appeal for reviewing a decision of an Appeal Board (A. 112(a); R. 104 – 110)

Article 112(a) gives any party to appeal proceedings and adversely affected thereby the possibility to file a petition for review of the decision by the Enlarged Board of Appeal, provided that certain grounds are met. One such ground is that a fundamental violation of Article 113 (right to be heard) occurred. The petition for review must be filed in writing accompanied by a reasoned statement. In case that the petition is allowable, the Enlarged Board of Appeal shall set aside the decision and reopen the proceedings before the Boards of Appeal.

Concluding remarks

In addition to the above top ten changes, the EPC2000, and in particular its implementing regulations, contain a fairly large number of amendments. The complete text of the new Articles in redline version was recently published by the EPO in the Official Journal special edition 4/2007.

The above is a short summary of a lengthy story (EPC2000) and does not replace the taking of legal advice in order to meet the requirements of the new law.