EPC 2000 – Experiences and Evaluations

(IPRinfo 2/2008)

Dr. Francis Leyder
Head of the Patent Department, Total Petrochemicals

The 2008 Finnish AIPPI Symposium ended with a presentation by Francis Leyder of his views about the first experiences with the revised European Patent Convention. The author sums up how some new features of the EPC 2000 have been utilised during the first months after its entry 13 December 2007.

A Diplomatic Conference of the then 20 Contracting States on the Revision of the European Patent Convention (EPC) was held in Munich from 20 to 29 November 2000.

As empowered by the Act revising the EPC, the Administrative Council (AC) adopted on 28 June 2001 the transitional provisions, and a new text of the EPC wherein the wording was aligned in the three languages.

On 12 December 2002, the AC adopted Implementing Regulations to the EPC 2000. They were amended (and renumbered!) on 7 December 2006.

The EPC 2000 was to enter into force on 13 December 2007. Three months before, eight Contracting States still had not deposited their instrument of ratification or accession; they risked ceasing to be parties to the EPC. Portugal was the last to deposit its instrument (of ratification) on … 12 December!

First experiences with EPC 2000
On 13 December 2007, the EPO issued announced the entry into force of a revised EPC.

In the later words of the EPO (European Patent News 1/2008):
An army of technicians, formalities officers, legal experts and even application managers had toiled for months to get the service fit for EPC 2000. It was a Herculean task, but the team was up to it, and the new system was rolled out practically trouble-free. And no one noticed! Indeed, there was no big bang, not even a faint rumble.

There are several new opportunities. The EPC 2000 offers the opportunity to obtain a date of filing by making a reference to a previously filed application. This is of particular interest for divisional applications.

Rule 40 – Date of filing:
(1) The date of filing of a European patent application shall be the date on which the documents filed by the applicant contain:
(a) an indication that a European patent is sought;
(b) information identifying the applicant or allowing the applicant to be contacted; and
(c) a description or reference to a previously filed application.
Similarly, Rule 40(1) EPC 2000 offers the opportunity to obtain a date of filing without filing or referring to any claims (Cf. Rule 57, item c, and Rule 58 EPC).

Also, the restrictions as to language at the filing stage have now been lifted.

Article 14 – Languages of the [European patent applications]:
(2) A European patent application shall be filed in one of the official languages or, if filed in any other language, translated into one of the official languages in accordance with the Implementing Regulations. […]At the end of February 2008, about 30 applications (i.e. about 0.3%) had been filed by reference, of which about 20 divisional applications, and about 40 applications (i.e. about 0.4%) had been filed without claims. Furthermore, about 30 applications (i.e. about 0.3%) had been filed ”in any other language”, most of them in Japanese.

Means of redress
Further processing has now been extended to become the standard means of redress, and re-establishment of rights for those time limits in respect of which further processing can be requested has been ruled out.

Article 121 – Further processing of the European patent application:
(1) If an applicant fails to observe a time limit vis-à-vis the European Patent Office, he may request further processing of the European patent application.

Rule 136 – Re-establishment of rights:
(3) Re-establishment of rights shall be ruled out in respect of any period for which further processing under Article 121 is available […].

It is too early at the time of writing this paper to report on the new system.

New procedure: the petition for review
The EPC 2000 allows for a possibility to petition the Enlarged Board of Appeal for review of a decision of a Board of Appeal in certain very limited situations.

The transitional provisions, however, provide that Article 112a only applies to decisions of the Boards of Appeal taken as from the date of its entry into force. Most decisions of the Boards of Appeal are first given orally at the end of oral proceedings and only later provided in writing.

It is thus not surprising that no petition had been reported at the time of writing this paper.

New procedure: limitation/revocation of the patent
Article 105a EPC offers a long awaited possibility of centrally requesting a limitation or revocation of the European patent.
Nine requests were filed on 13 December 2007. Some 5 weeks later, they started appearing in section II.10(1) of the Bulletin (Date of filing of request for limitation of the European patent under Art. 105a).

Up to Bulletin 16/2008, 24 requests had been published. The author was told privately that the first request for revocation had been filed. It could not, however, be identified at the time of writing this paper. Patentees reside in all parts of the world. With respect to the period for opposition, requests were filed before the end of the period, just after the end of the period or later.

With respect to the date of filing, two requests were made as late as in the course of the 19th year of the patent life.
Interestingly, an opposition was filed against one of the patents in respect of which a request for limitation had been previously been filed; the limitation proceedings should be terminated (Rule 93(2) EPC).

EPO was not yet ready to proceed
Once limited, the European patent would be republished as a B3 document:
More events for other European patent applications are continually being recorded in the Register as EPC 2000 takes effect, but the big event that everyone is holding their breath for, the first B3 publication, will not take place before June [2008]. This is because the third phase of EPC 2000 implementation has been extended into sub-phases 3A and 3B. It’s perhaps oddly fitting that B3 should be in 3B.

An explanation that tolerates daylight!
As file inspections show, the EPO was indeed not ready to proceed:
Publication of the decision cannot occur before July 2008.

The question of the applicant as to the time required from submission of the translations until publication of the mention of the limitation in the European Patent Bulletin cannot be answered for the moment. A publication before July 2008 appears, however, unlikely.

… the computer technical support for a Communication of allowance of patent limitation under Rule 95 (3) EPC is not yet in operation. It will be available within the next few months. A definite date cannot be fixed. […] in all probability the EPO will not be able to publish the specification of the limited European patent before autumn 2008.

In the meantime, the EPO did proceed in some files, using telephone conversations and ”all-purpose” written communications.

New Rule 164(1) and its consequences
Under normal circumstances, a lack of unity is discovered at the search stage. The applicant then has, both under the EPC (Rule 64(1)) and under the PCT (Article 17), a possibility of paying additional search fees to obtain a search report for the further inventions.

At the substantive examination stage, the claims have to be limited to subject matter covered by the search (Rule 137(4) EPC for Euro-direct applications; Rule 164(2) EPC for Euro-PCT applications).

A special situation arises when the EPO draws a supplementary search report upon entry in the regional phase and finds a lack of unity that was not found during the international search. In such a case, Rule 164(1) EPC applies: the supplementary search report is drawn up only on those parts of the application which relate to the invention (or group of inventions) first mentioned in the claims.

The applicant must file a divisional application in order to obtain the further search reports. This may appear unfair to the applicant. Will the AC accept to amend Rule 164(1) EPC?

No big bang
The EPC 2000 has opened a number of new options to applicants and practitioners. At the time of writing this paper, little use was made of these new options, but nothing negative was reported about the options themselves.

On the whole, it can thus be concluded, along with the EPO, ”there was no big bang”. No doubt the EPO will soon catch up and ensure that the requests for limitation are dealt as swiftly as initially intended.

Francis Leyder was also a vice-chair of the European Patent Practice Committee of epi (the Institute of Professional Representatives before the EPO), in charge of the EPC 2000 sub-committee. He has also been one of the tutors of the epi-CEIPI Basic Course in European Patent Law organised since 1996 in Dipoli, Finland.