EPO 2000 Basic Changes in EPO Law and Regulations

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EPO 2000Basic Changes inEPO Law and Regulations

• ________________________________________
• Dr. Walter Maiwald

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The European Patent Convention (EPC) and its
Implementing Regulations (IR) provide the legal
framework for the activities of the European
Patent Office (EPO). The EPC was basically
amended and supplemented by the Act revising the
EPC of 29 November 2000 and the corresponding
"EPC 2000" version of the Convention adopted by
the Administrative Council on 28 June
2001.? Implementing Regulations (IR) for "EPC
2000" were adopted by the Administrative Council
on 12 December 2002.?
_____________________________________________ ?
Special Edition No. 1 OJ EPO (2003) 3 -13 ?
Special Edition No. 1 OJ EPO (2003) 74 - 158
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Only some Articles and Rules of the revised
Convention and Implementing Regulations have been
"provisionally" applicable since
2001/2002. Ratification by 15 member states was
effected on 13 December 2005. This means that the
complete versions of EPC 2000 and its
Implementing Regulations must come into force
by 13 December 2007 at the latest.
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The "EPC 2000" revision will bring major changes
in EPO Law, both material and procedural. Areas
affected include - filing procedures and
filing language - priority claims -
examination - divisional
applications - voluntary limitations post
grant - oppositions - appeal
procedures - second appeals to the
Enlarged Board of Appeal - restitutio in
integrum Some of these changes (e.g. voluntary
limitation second appeals to the Enlarged Board
of Appeal) introduce entirely new procedures.
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Filing your European patent application

• You will be able to file in any language (Article
  14 (2) EPC 2000).
• You will have to provide a translation into one
  of the official languages (German, English,
  French) within one month of filing
• (Rule 6 (1) IR EPC 2000).
• - All other submissions must still be in an
  official language (unless you are a citizen of an
  EPC member state with an official language
  different from English, French and German).

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Filing your European patent application

• You can file your application at the EPO in
  Munich, The Hague and Berlin (Rule 24 (1) IR EPC
  2000).
• You can file it by fax, or in digital form (Rule
  24 (2) IR EPC 2000) but not by email (OJ EPO
  2000, 458).
• This applies also to divisional applications
  (Rule 25 (2) IR EPC 2000).

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Filing your European patent application

• You will be able to obtain a filing date even
  without filing a patent specification this can
  be replaced by a reference to an earlier filed
  application (in any language!), as long as that
  had a filing date and an application number, and
  was filed in any patent office (which you must
  identify) (Rule 25 d (1c, 2) IR EPC 2000).
• You will then have to file a copy (and, in case,
  a translation) within two months (Rule 25 d (3)
  IR EPC 2000).

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Claiming a priority

• You will not be able any more to correct a
  priority claim later than
• 16 months from the earliest priority date
  claimed (even though the wrong claim may not be
  the earliest one!) (Rule 38 (2) IR EPC 2000).

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Examination

• The EPO may request you to provide information,
  within a specified term, on prior art cited in
  the context of (other) patent examination
  procedures concerning the same invention (i.e.
  provide some kind
• of IDS) (Rule 89 a IR EPC 2000).

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Voluntary limitation post grant

• You will be able to request a limitation of the
  claims, or even full revocation, of your granted
  patent,
• but not as long as an opposition is pending
  (Article 10 a EPC 2000).
• The request requires no grounds or reasons, and
  therefore no disclosure of references or other
  facts which may have caused the request to be
  made (Rule 63 d IR EPC 2000).

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Voluntary limitation post grant

• If the request is made and then, an opposition is
  filed, the limitation procedure is terminated
  (unless the request was for full revocation)
  (Rule 63 e IR EPC 2000).
• The request is handled by the Examining Division
  (not by the Opposition Division) (Rule 63 c IR
  EPC 2000).
• The request opens an office procedure, which ends
  with a formal decision.

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Voluntary limitation post grant

• The decision is binding for all contracting
  states in which the patent is valid and owned by
  the requestant (Article 105 b EPC 2000).
• - After a limitation decision, the patent
  specification is republished as limited (Article
  105 c EPC 2000).

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Oppositions

• If an opposition has been filed, the Opposition
  Division may examine, ex officio, opposition
  grounds which have not been raised by the
  opposing party (Rule 58 (1) IR EPC 2000).

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Appeal procedures

• The EPO's Appeal Boards (and, in case, the
  Enlarged Board of Appeal) will be competent to
  decide on appeals from decisions of the Examining
  Divisions concerning requests for voluntary
  limitation (Article 21 (3) (a) EPC 2000).
• Providing a written statement of appeal grounds
  within 4 months
• from receipt of the appealed decision, which
  comprises all facts
• and arguments supporting the appeal, is now a
  legal requirement (Rule 64 (2) IR EPC 2000).
• Insufficient content of this statement is in
  itself a reason for rejecting the appeal (Rule 65
  (1) IR EPC 2000). The Appeal Boards may not set a
  term for supplementing the statement (Rule 65 (2)
  IR EPC 2000).

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Requesting revision by the Enlarged Board of
Appeal

• You will have the right to request revision of
  any Appeal Board decision, by the Enlarged Board
  of Appeal (Article 112 a (1) EPC 2000).
• This request can however only be based on the
  allegation that
• - an Appeal Board judge inappropriately
  participated in the decision
• - the Appeal Board comprised a person not
  appointed as a judge
• - there was a serious contravention of Article
  113 EPC
• - there was some other serious procedural flaw,
  i.e. a transgression
• of a binding regulation defined in the IR
• - a criminal offence could have influenced the
  decision
• (Article112 a (2) EPC 2000).

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Requesting revision by the Enlarged Board of
Appeal

• Article 112 EPC Article 113 EPC
• In order to ensure uniform application of the
  law, (1) The decisions of the European
  Patent
• or if an important point of law
  arises Office may only be based on
  grounds or
• evidence on which the parties
  concerned
• (a) the Board of Appeal shall, during proceedings
  on a have had an opportunity to present their
• case and either of its own motion or following a
  request comments.
• from a party to the appeal, refer any question to
  the
• Enlarged Board of Appeal if it considers that a
  decision is (2) The European Patent Office
  shall consider
• required for the above purposes. If the Board of
  Appeal and decide upon the European patent
• rejects the request, it shall give the reasons in
  its final application or the European patent
  only in
• decision the text submitted to it,
  or agreed, by the
• applicant for or proprietor of
  the patent.
• The President of the European Patent Office may
• refer a point of law to the Enlarged Board of
  Appeal
• where two Boards of Appeal have given different
• decisions on that question.
• In the cases covered by paragraph 1 (a) the
  parties

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Requesting revision by the Enlarged Board of
Appeal

• Making the request does not suspend the effect of
  the appeal decision (Article 112 a (3) EPC 2000)
• there is a two months term for requesting
  revision (unless you rely on a criminal offence)
  (Article 112 a (4) EPC 2000)
• a third party acting in good faith may acquire
  intervening rights
• (Article 112 a (6) EPC 2000).

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Restitutio in integrum

• You will be able to request restitution after
  missing the priority term
• (Rule 85 b (1) IR EPC 2000).
• You can not be reinstated after missing the
  deadline for requesting further processing under
  Article 121 EPC (Rule 85 b (3) IR EPC 2000).

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The EPC comprises a single regulation which
directly affects protective scope, i.e. Article
69 EPC Article 69 Extent of
protection (1) The extent of the protection
conferred by a European patent or a European
patent application shall be determined by the
terms of the claims. Nevertheless, the
description and drawings shall be used to
interpret the claims. (2) For the period up to
grant of the European patent, the extent of the
protection conferred by the European patent
application shall be determined by the latest
filed claims contained in the publication under
Article 93. However, the European patent as
granted or as amended in opposition proceedings
shall determine retroactively the protection
conferred by the European patent application, in
so far as such protection is not thereby
extended.
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Article 69 is supplemented by the Protocol on
the Interpretation of Article 69 EPC. While
Article 69 EPC remains basically as it was, the
Protocol is modified, to expressly include
protection for equivalents Protocol on the
Interpretation of Article 69 EPC Old
version New version "Article 69 should not be
interpreted in the sense that the Article
1 extent of the protection conferred by a
European patent is General principles to be
understood as that defined by the strict, literal
meaning Article 69 should not be interpreted as
meaning that the extent of the wording used in
the claims, the description and drawings of the
protection conferred by a European patent is to
be under- being employed only for the purpose of
resolving an ambiguity stood as that defined by
the strict, literal meaning of the wording found
in the claims. Neither should it be interpreted
in the sense used in the claims, the description
and drawings being employed that the claims
serve only as a guideline and that the actual
only for the purpose of resolving an ambiguity
found in the claims. protection conferred may
extend to what, from a consideration Nor should
it be taken to mean that the claims serve only as
a of the description and drawings by a person
skilled in the art, the guideline and that the
actual protection conferred may extend to
patentee has contemplated. On the contrary, it
is to be inter- what, from a consideration of the
description and drawings by a preted as defining
a position between these extremes which person
skilled in the art, the patent proprietor has
contemplated. On combines a fair protection for
the patentee with a reasonable the contrary, it
is to be interpreted as defining a position
between degree of certainty for third
parties." these extremes which combines a fair
protection for the patent (The Protocol shall be
an integral part of the Convention
pursuant proprietor with a reasonable degree of
legal certainty for third to Article 164,
paragraph 1.) parties. Article
2 Equivalents For the purpose of
determining the extent of protection
conferred by a European patent, due account
shall be taken of any element which is
equivalent to an element specified in the claims.
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The EPO is working on a draft revised version
of the Implementing Regulations, which will
probably be published in early 2007. SO WATCH
THIS SPACE!
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Thank you for your attention.
Dr. Walter Maiwald maiwald_at_maiwald.de
Maiwald Patentanwalts GmbH
www.maiwald.de München Hamburg Düsseldorf
Germany