Notice from the European Patent Office dated 10 July 2017 concerning amended Rules 32 and 33 EPC (expert solution)
1. By decision of 28 June 2017[ 1 ] the Administrative Council of the European Patent Organisation amended Rules 32 and 33 EPC regarding the expert solution, the aim being to improve the availability of deposited biological material via an expert and to provide greater flexibility in choosing a suitable expert. The present notice gives information about the amended provisions, superseding with effect from 1 October 2017 that published in OJ EPO 2010, 498, point B.22.
2. Rules 32 and 33 EPC as amended will enter into force on 1 October 2017. They will apply to European patent applications pending on, or filed after, that date. This means that requests for the issue of a sample of deposited biological material for which the expert solution is chosen will be subject to the new rules, in particular amended Rule 32(2) EPC, after 1 October 2017.
3. The wording of Rule 32(1) EPC has been brought into line with that of Article 13(2) of Directive 98/44/EC of 6 July 1998 on the legal protection of biotechnological inventions, by replacing the term "expert" in former Rule 32(1) EPC with "independent expert".
4. Furthermore, former Rule 32(2)(b) EPC has been deleted, which means that the list of recognised experts (last published in OJ EPO 1992, 470) has been abrogated. Rule 33(6) EPC has been amended accordingly.
5. Under amended Rule 32(2) EPC, any natural person may be nominated as an expert provided that he fulfils the requirements and obligations laid down by the President of the EPO. These have been laid down in detail in a decision of the President dated 10 July 2017[ 2 ]. There is no longer any need to obtain the applicant's approval for that nomination, as was the case under former Rule 32(2)(a) EPC.
6. Amended Rule 32(2) EPC also provides that the nomination must be accompanied by a declaration from the expert that he undertakes to comply with the aforementioned requirements and obligations, and knows of no circumstances which might give rise to justified doubts as to his independence or which might conflict in any other way with his function as expert.
7. By making this declaration, the expert is deemed to fulfil the requirements and obligations laid down by the President of the EPO, i.e. to be an independent expert within the meaning of amended Rule 32(1) EPC, and the EPO is not required to assess his suitability and independence (see also Rule 11.3(a)(iii) of the Regulations under the Budapest Treaty). Only in cases of reasonable i.e. serious doubts as to the independence of the nominated expert would the EPO contact the requester before certifying the request.
8. New EPO Form 1142A is to be used for the nominated expert's declaration under amended Rule 32(2) EPC. This declaration accompanies the request for deposited biological material to be made available by issuing a sample to an expert (EPO Form 1142, which must be signed by the requester nominating the expert). By signing the declaration the nominated expert confirms that he (1) has taken note of the requirements and obligations for experts nominated under Rule 32 EPC laid down by the President of the EPO (see OJ EPO 2017, A60), (2) knows of no circumstances which might give rise to justified doubts as to his independence or which might conflict in any other way with his function as expert, and (3) undertakes to comply with the aforementioned requirements and obligations.
9. For further information regarding the procedure to be followed, and forms to be used, in order to obtain a sample of deposited biological material using the expert solution, please see also section B of the notice published in OJ EPO 2010, 498, in particular points 23 and 24.
[ 1 ] Decision of the Administrative Council CA/D 3/17 of 28 June 2017, OJ EPO 2017, A55
[ 2 ] Decision of the President of the European Patent Office dated 10 July 2017 concerning the requirements and obligations for experts nominated under Rule 32 EPC, OJ EPO 2017, A60. The publication in OJ EPO 1981, 359 is superseded by this decision.