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Compare the EPC 2000 with the EPC 1973 in the "Synoptic presentation – Part I: The Articles" and "Part II: The Implementing Regulations"
Frequently asked questions about the revised European Patent Convention (EPC 2000)
Questions
- What is the object of the EPC 2000?
- When will the EPC 2000 enter into force?
- Does the EPC 2000 apply only to European patent applications, and the resulting European patents, filed after its entry into force?
- Are there any transitional provisions governing the Rules in the Implementing Regulations to the EPC 2000?
- Does previous practice in filing European patent applications have to change in order to meet the requirements under the EPC 2000 for accordance of a date of filing?
- What happens if the patent claims are not filed with the application?
- Does the declaration of priority have to be filed at the same time as the European patent application?
- Can declarations of priority be corrected?
- How does the EPC 2000 affect substantive patent law?
- Is there a time limit for filing requests for limitation or revocation of a European patent under Article 105a(1) EPC 2000?
- Who is entitled to request limitation or revocation of a European patent?
- What aspects have to be considered in limitation or revocation proceedings where the requester is the proprietor of the patent only for some of the contracting states in which the European patent is valid?
- Under the new procedure, can a European patent be limited or revoked for only one or some of the contracting states for which it was granted?
- Under what conditions can decisions of the boards of appeal be contested?
- What changes does the EPC 2000 involve with regard to further processing as a remedy (Article 121 EPC 2000)?
- What changes does the EPC 2000 introduce with regard to re-establishment of rights (Article 122 EPC 2000)?
- What changes does the EPC 2000 make in the PCT protest procedure?
- What changes does the EPC 2000 entail with regard to international applications entering the regional phase before the EPO which do not meet the requirements of unity of invention?
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What transitional arrangements apply to the translation of priority documents?
Answers
1. What is the object of the EPC 2000?
The European Patent Convention of 1973 was comprehensively revised at a Diplomatic Conference in November 2000. The new version of the Convention - abbreviated as "EPC 2000" - and the new Implementing Regulations adopted by the Administrative Council in December 2006 contain the legal provisions which will in future govern the European patent grant procedure and European patents. The texts of the EPC 2000 and the Implementing Regulations were published in OJ EPO 2007, Special edition No. 1, and are also available on the European Patent Office website.
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2. When will the EPC 2000 enter into force?
Under Article 8 of the Revision Act, the EPC 2000 is to enter into force two years after the fifteenth contracting state has deposited its instrument of ratification or accession, or 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.
On 13 December 2005, Greece became the fifteenth state to deposit its instrument of ratification. The EPC 2000 will therefore enter into force on 13 December 2007 at the latest.
Since not all the contracting states had deposited their instruments of ratification or accession by 30 September 2007, the EPC 2000 will enter into force on 13 December 2007.
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3. Does the EPC 2000 apply only to European patent applications, and the resulting European patents, filed after its entry into force?
The new law applies to all European patent applications, and to European patents granted on the basis of those applications, which are filed after the EPC 2000 enters into force. It applies to applications already pending at this point and to granted patents only in so far as this is laid down in the transitional provisions adopted by the Administrative Council. Under the latter arrangements, most of the provisions of the EPC 2000 will apply to European patent applications pending at the time of entry into force and to patents already granted. Details can be found in the decision of the Administrative Council dated 28 June 2001, published with a table of the transitional provisions, in OJ EPO 2007, Special edition No. 1, 197 et seq. and 221-224. Explanatory notes on the Council's decision were published in OJ EPO 2003, Special edition No. 1, 204-208.
4. Are there any transitional provisions governing the Rules in the Implementing Regulations to the EPC 2000?
With one exception, relating to Rule 62 (see below), there are no separate transitional provisions governing the Implementing Regulations to the EPC 2000. The applicability of the Rules depends on the transitional provisions for the EPC Articles on which the Rules are based (see Article 2 of the decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the European Patent Convention 2000. The only separate transitional provision concerns Rule 62 EPC 2000, stipulating that the latter shall only apply to European patent applications and international applications entering the European phase filed on or after 1 July 2005).
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5. Does previous practice in filing European patent applications have to change in order to meet the requirements under the EPC 2000 for accordance of a date of filing?
Since the requirements for accordance of a date of filing were stricter under the EPC 1973, there is no need for any change in filing practice. Patent applications which are in line with the EPC 1973 will also satisfy the less rigorous conditions for the accordance of a date of filing under the EPC 2000, which correspond to the international standards under the Patent Law Treaty of 1 June 2000 (PLT).
An example of the relaxed requirements for accordance of a date of filing can be found in the re-worded Article 14(2) EPC 2000, stating that the application must be filed in one of the EPO official languages or, if filed in any other language, translated into one of the official languages. Therefore, for the purposes of accordance of a date of filing, a European patent application can be filed in any language (see Rule 40 EPC 2000). If the application is not in an official language of the EPO, the applicant must file a translation into an official language (see Rules 6 and 58 EPC 2000).
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6. What happens if the patent claims are not filed with the application?
Under Rule 40(1) EPC 2000, the inclusion of a patent claim is not a requirement for the accordance of a date of filing. However, the Receiving Section will check, as part of the examination as to formal requirements, whether the application contains one or more claims or a reference to a previously filed application indicating that it replaces also the claims (see Rule 57(c) EPC 2000). If the application does not comply with this requirement, the applicant will be invited to correct the deficiency within two months. However, applicants should bear in mind that the EPO cannot begin to draw up the European search report until it has received a patent claim or claims (or a corresponding reference to a previous application).
In this connection it should also be noted that the subject-matter of subsequently filed patent claims may not extend beyond the content of the application as originally filed. The examination under Article 94 EPC 2000 will therefore include the question whether the subsequently filed claims comply with the requirement of Article 123(2) EPC 2000.
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7. Does the declaration of priority have to be filed at the same time as the European patent application?
Rule 52(2) EPC 2000 states that the declaration of priority "shall preferably" be made on filing the European patent application, but it may still be made within 16 months from the earliest priority date claimed. However, a declaration of priority can no longer be made once a request for early publication according to Article 93(1)(b) EPC 2000 has been filed (see Rule 52(4) EPC 2000).
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8. Can declarations of priority be corrected?
Under Rule 52(3) EPC 2000, a declaration of priority may be corrected within 16 months from the earliest priority date claimed, or, where the correction would cause a change in the earliest priority date claimed, within 16 months from the corrected earliest priority date, whichever 16-month period expires first, provided that such a correction may be submitted until the expiry of four months from the date of filing accorded to the European patent application.
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9. How does the EPC 2000 affect substantive patent law?
The EPC 2000 leaves substantive patent law largely unchanged. The main amendments are in Article 54(3), concerning the novelty-destroying effect of prior European patent applications, and Article 54(5), expressly providing for use-limited product protection for a second or further medical use of a known substance. Details of the practical application of these provisions are set out in the revised Guidelines for Examination in the EPO (see Guidelines C-III, 8.1, C-IV, 4.8, C-IV, 7).
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10. Is there a time limit for filing requests for limitation or revocation of a European patent under Article 105a(1) EPC 2000?
Requests for limitation or revocation may be filed at any time throughout the term of the European patent.
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11. Who is entitled to request limitation or revocation of a European patent?
Under Article 105a(1) EPC 2000, a European patent may be revoked or limited by an amendment of the claims at the request of the proprietor. Since the European patent after grant becomes a bundle of national patents, which can have different proprietors, each of these (national) patentees is entitled to request limitation or revocation. Since proprietorship is a condition of entitlement to make such a request, Rule 92(2)(a) provides that the request must contain an indication of the contracting states for which the requester is the proprietor of the patent. Proprietorship can be proven by, in particular, an extract from the relevant national patent register, or by other appropriate means.
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12. What aspects have to be considered in limitation or revocation proceedings where the requester is the proprietor of the patent only for some of the contracting states in which the European patent is valid?
Rule 92(2)(c) EPC 2000 requires that the requester provide the names and addresses of the proprietors of the patent for those contracting states in which he is not the proprietor of the patent, and evidence that he is entitled to act on their behalf in the proceedings. This is designed to ensure that the instigation of limitation or revocation proceedings reflects the wishes of all the (national) patent proprietors. Since a decision to limit or revoke the patent has retroactive effect (see Article 68 EPC 2000), such evidence is also required if the patent has already lapsed in individual contracting states: here, too, the requester must show that he is entitled to act on behalf of the last national patent proprietor (see Guidelines for Examination in the EPO, D-X, 2.2.vi).
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13. Under the new procedure, can a European patent be limited or revoked for only one or some of the contracting states for which it was granted?
Under Article 105b(3) EPC 2000, the decision to limit or revoke the European patent takes effect on the date on which the mention of the decision is published, and applies retroactively to the patent, to the extent that it has been revoked or limited (Article 68 EPC 2000), in all the contracting states in respect of which it was granted. A request for limitation or revocation of a European patent for only some of the contracting states in which it has taken effect is therefore not admissible. In this connection, Rule 92(2)(b) EPC 2000 provides that the requester must furnish a list of the contracting states in which the European patent has taken effect.
However, if prior rights are claimed for individual contracting states, limitation can be obtained for these states by a corresponding amendment of the patent claims pursuant to Rule 138 EPC 2000.
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14. Under what conditions can decisions of the boards of appeal be contested?
Under the new Article 112a EPC 2000, decisions of the boards of appeal can be contested by filing a petition for review if
(a) a member of the board of appeal took part in the decision in breach of Article 24(1) EPC 2000 or despite being excluded pursuant to a decision under Article 24(4); (b) the board of appeal included a person not appointed as a member of the boards of appeal; (c) a fundamental violation of Article 113 occurred; (d) any other fundamental procedural defect defined in the Implementing Regulations occurred in the appeal proceedings (see Rule 104 EPC 2000); or (e) a criminal act established under the conditions laid down in the Implementing Regulations may have had an impact on the decision.
As indicated by the wording of Article 112a(2) EPC 2000, a petition for review can only be based on fundamental procedural defects: its purpose is not to obtain a review of the application of substantive law.
A petition for review under Article 112a(2)(a) to (d) EPC 2000 is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the board of appeal, except where such objection could not be raised during the appeal proceedings (see Rule 106 EPC 2000).
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15. What changes does the EPC 2000 involve with regard to further processing as a remedy (Article 121 EPC 2000)?
The revised Article 121 EPC 2000 extends the application of further processing and makes it the standard remedy for missed time limits in the European patent grant procedure. Under Article 121(1) EPC 2000 the applicant can request further processing of his application if he fails to observe a time limit vis-à-vis the EPO. Further processing is thus available for all missed time limits in the grant procedure, with the exception of those excluded under Article 121(4) EPC 2000 (see also the list of exclusions in Rule 135(2) EPC 2000). As in the past, Article 121 EPC does not apply to the time limits to be observed by the parties in opposition and opposition appeal proceedings. Under the EPC 2000, in contrast to the previous situation, further processing is also available where only a partial loss of rights has occurred, or where the missed time limit is one which is fixed by the Convention.
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16. What changes does the EPC 2000 introduce with regard to re-establishment of rights (Article 122 EPC 2000)?
The EPC 2000 provides, for the first time, for re-establishment of rights in respect of the priority period under Article 87(1) EPC 2000 (see Rule 136(1) EPC 2000). The request must be filed within two months of the expiry of the priority period.
With regard to the extended application of further processing, Rule 136(3) EPC 2000 rules out the re-establishment of rights in respect of any period for which further processing under Article 121 EPC 2000 is available. In accordance with existing law (Article 122(5) EPC), Rule 136(3) EPC 2000 rules out re-establishment of rights in respect of the time limit for requesting re-establishment of rights. However, from the interrelated Articles 121 and 122 EPC 2000 it follows that the re-establishment of rights is possible in respect of the time limit for requesting further processing.
The requirements for re-establishment and the relevant procedure remain unchanged.
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17. What changes does the EPC 2000 make in the PCT protest procedure?
Under Articles 154(3) and 155(3) EPC 1973, the EPO boards of appeal are responsible for deciding on protests against the payment of an additional fee for international search or international preliminary examination. These provisions have been deleted from the revised version of the EPC. Under Rule 158(3) EPC 2000, competence for examining a protest lies exclusively with the review body in accordance with Rule 40.2(c) to (e) or Rule 68.3(c) to (e) PCT, subject to payment of a protest fee. The new single-stage protest procedure applies to international applications filed after the EPC 2000 enters into force. For international applications already pending at the date of entry into force of the EPC 2000, the two-stage procedure under Articles 154(3) and 155(3) EPC 1973 will continue to apply (see Article 1(6) of the decision of the Administrative Council of 28 June 2001, OJ EPO 2007, Special edition No. 1, 197). Depending on the date of filing of the international application, the EPO acting as International Searching Authority or International Preliminary Examining Authority will therefore apply either the two-stage protest procedure under the EPC 1973 or the single-stage procedure under the EPC 2000.
Further details of the procedure under the EPC 2000 will be determined by the President of the EPO.
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18. What changes does the EPC 2000 entail with regard to international applications entering the regional phase before the EPO which do not meet the requirements of unity of invention?
The possibility under Rule 112 EPC 1973 of having several inventions searched in a single application by paying further search fees was deleted in the new version of the corresponding Rule 164 EPC 2000. The EPC 2000 establishes two possible scenarios for international applications entering the regional phase before the EPO.
(a) The EPO draws up a supplementary search report:
Where the EPO considers that the application documents which are to serve as the basis for the supplementary search do not meet the requirements of unity of invention, a supplementary search report will be drawn up on those parts of the application which relate to the invention, or group of inventions, first mentioned in the claims (see Rule 164(1) EPC 2000). Under the EPC 2000, therefore, the applicant will no longer have the option in the European phase of obtaining search reports on further inventions by paying further search fees. If the examining division concurs with the view of the search examiner, it will then invite the applicant to limit the application to one invention covered by the supplementary search report (see Rule 164(2) EPC 2000). Divisional applications can be filed for parts excised in response to the objection of lack of unity.
(b) The EPO does not draw up a supplementary search report:
Where the examining division finds that the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention, or protection is sought for an invention not covered by the international search report, it will invite the applicant to limit the application to one invention covered by the international search report. In this case too, under the EPC 2000, the applicant no longer has the possibility in the European phase of having further inventions searched on payment of further search fees. However, divisional applications can be filed for parts excised in response to the objection.
19. What transitional arrangements apply to the translation of priority documents?
Under Rule 38(5) EPC 1973, where the previous application was not drawn up in an official language of the European Patent Office, a translation of that application must be filed within a period to be set by the EPO, but at the latest within the time limit under Rule 51(4) EPC 1973. Alternatively, a declaration may be submitted that the European patent application is a complete translation of the previous application.
Under Rule 53(3) EPC 2000, a translation of the priority document will be required only if the earlier application is not drafted in one of the EPO's official languages and the validity of the priority claim is relevant to the assessment of the invention's patentability.
Where the applicant has been asked to file a translation of the priority document before the entry into force of the EPC 2000, a distinction will be made between two cases during the transitional phase:
(a) A request under Rule 38(5) EPC 1973 will be issued where the translation of the priority document is required for the substantive examination of an application. If the applicant has received such a request, a translation of the priority document must be filed even if the prescribed period expires after entry into force of the EPC 2000 (i.e. 13.12.2007). The same will apply where the applicant has failed to comply with such a request under Rule 38(5) EPC 1973 and a communication under Rule 41(1) EPC 1973 has been issued as a result.
(b) Where, however, the translation of the priority document has been requested in connection with a communication under Rule 51(4) EPC 1973 or a subsequent communication under Rule 41(1) EPC 1973 and the prescribed period expires after the entry into force of the EPC 2000 (i.e. 13.12.2007), there will no longer be a need to furnish the translation.