EPC 2000

"EPC 2000" is a major revision of the European Patent Convention (EPC), which came into force on 13 December 2007.  It introduced several important changes to the previous law, as outlined below; some of these apply retroactively to European patent applications which were already pending when the changes took effect.

Medical use claims

Under EPC 2000, it is now possible to use the so-called "first medical use" style of claim ("Substance X for use in the treatment of disease Y") even when claiming protection for second and subsequent medical indications, i.e. even where it is already known to use substance X to treat another disease Z.  The European Patent Office (EPO) will no longer require "Swiss-style" claims ("Use of substance X in the manufacture of a medicament for the treatment of disease Y"), although they will still accept such claims and we recommend that they still be included in addition to the "first medical use" style versions.

This change applies to all European patent applications which were still pending (i.e. which had not been withdrawn, refused or issued with a "decision to grant") when EPC 2000 came into force.

"Novelty-only" prior art

Under the previous version of the EPC, an earlier filed European or PCT patent application, published after your own priority date, could count as prior art against your European patent application.  This type of prior art could deprive your claims of novelty, but could not be used as the basis for an inventive step objection.

The extent to which such documents were citable as prior art depended on which EPC states the earlier European or PCT application designated at the time it was published, and in the case of a PCT application whether it was subsequently converted into a European regional phase application designating the relevant countries.

EPC 2000 has simplified this situation.  Such "prior co-pending applications" now count as prior art in respect of all EPC states.  As under the previous law, they will only become prior art if/when they are published, and in the case of an earlier PCT application only if validly converted into a European regional phase application.  Such prior art will also still only be relevant to the novelty, and not the inventive step, of your claims.

For European patent applications which were already pending when EPC 2000 came into force, this type of prior art will continue to be considered under the old law and may not therefore be relevant for all EPC states.

Priority claims

EPC 2000 makes it possible to claim priority, in a European patent application, from an earlier application filed in any country which is a member of the World Trade Organisation (WTO), even if that country is not a signatory to the Paris Convention.  Taiwan is an example of such a country.

An applicant is also now allowed to correct, or even to add, a priority claim up to 16 months from the relevant priority date.

Filing requirements

The requirements for obtaining a European filing date have been significantly reduced under EPC 2000.  It is now possible, for example, to file a European application in any language so long as a translation is supplied subsequently.  It is also possible to obtain a filing date with only a description; claims are not strictly needed until the twelve-month anniversary.  Instead of a description, reference may be made to an earlier filed patent application, so long as a certified copy of that earlier application is supplied within the following two months, with a translation if appropriate.

EPC 2000 also allows for the late-filing not only of drawings which were inadvertently omitted from a European application, but also of parts of the description.  If the late-filed text has clear basis in the priority application, the European application will retain its original filing date despite the late filing of the omitted text.

Late filing of a sequence listing does, however, incur an official fee of €200 now that EPC 2000 has come into force.

New "information disclosure" provisions

Like the UK Intellectual Property Office, the EPO is allowed, under EPC 2000, to invite applicants to submit details of prior art cited against their corresponding patent applications in other countries.  This is not the same as the US Patent Office's far stricter duty of disclosure, and there is no definite sanction for omitting relevant prior art.  Nevertheless, failure to respond at all to the EPO's invitation will lead to the European application being deemed withdrawn.

Extending procedural deadlines

"Further processing", a system by which an applicant can obtain extra time for meeting EPO deadlines, has been extended by EPC 2000 to cover many more deadlines associated with prosecuting a European application.  Under the previous law, further processing was only available for deadlines which had been set by the EPO and not those laid down in the European Patent Convention and Rules.

These new provisions also apply to applications which were pending on 13 December 2007, provided the relevant time limit had not expired on that date.

Because further processing has been extended, there are now fewer situations in which "re-establishment of rights" (sometimes called "restitution") is available.  Re-establishment however requires the furnishing of evidence to show that the applicant took due care to meet the relevant deadline; further processing is an automatic right which requires only the payment of an official fee and no evidence.

Further processing continues to be unavailable for certain specified deadlines.  These include the deadlines for submitting a priority declaration, for lodging an appeal, for seeking a review of a Board of Appeal decision (see below), for renewing a European patent application and for providing details of micro-organism deposits.  Nor can further processing be used to extend the deadlines for requesting re-establishment or further processing itself.

Note also that further processing is available only whilst a European application is pending, and not during any post-grant proceedings such as oppositions.

Post-grant limitation & revocation

Importantly, EPC 2000 has introduced a new system by which a European patent owner can apply centrally to limit the scope of, or even to revoke, his granted European patent.  This should be much simpler and cheaper than the previous situation, under which a patentee had to apply to amend or cancel his patent individually in each country in which it was in force.

Requests to limit or revoke will be dealt with by the EPO.  Their official fees have been set at €1,000 for limitation and €450 for revocation.  The EPO may reject a limitation request if they consider the proposed amendment to be unclear, or if it either adds subject matter beyond what was in the application as filed or extends the protection afforded by the patent.  Subject to this, an amendment may be made to either the claims, the description or the drawings of the patent.

If limitation or revocation is allowed, it will have effect ab initio (in the case of a revocation, for example, the European patent will be deemed never to have existed) and for all designated states.

EPC 2000 provides that an opposition against a European patent must take precedence over an application by the proprietor to limit or revoke it.  Thus, a patentee will not be allowed to apply for limitation or revocation if an opposition is already pending against his patent.  Moreover, if a valid opposition is filed during proceedings to limit or revoke the patent, the limitation or revocation proceedings will be terminated.

Unity issues for Euro-PCT applications

When an international search is conducted on a PCT application, the International Search Authority (ISA) may raise an objection of lack of unity of invention.  It will then search only the first claimed invention, unless the applicant pays further search fees.  If such a PCT application subsequently enters the European regional phase, the applicant used to be given another opportunity to pay further search fees, to allow claims other than the previously searched ones to be examined.

This policy has changed under EPC 2000.  The EPO will no longer invite the applicant to pay further search fees during the European regional phase, and nor will they examine any claims which have not already been searched during the international phase.  Instead, claims which have not been subjected to an international search will have to be pursued via divisional applications.

PCT applicants should bear this in mind if invited to pay further search fees during the international phase.  Failure to do so will restrict their options for pursuing unsearched claims in a subsequent European application.

Review of Board of Appeal decisions

An EPO Board of Appeal decision could not previously be appealed to any higher court.  EPC 2000 has brought in a new right to have a Board of Appeal decision "reviewed" by the EPO's Enlarged Board of Appeal, in certain limited circumstances.

It will now be possible to request such a review if (a) the composition of the Board of Appeal was inappropriate; (b) there has been a fundamental violation of a party's right to be heard on a particular issue; (c) a procedural defect has occurred, for example a hearing was requested but not appointed, or the Board of Appeal failed to hand down a formal decision on a particular request; or (d) a criminal act had an impact on the Board's decision.  Where a party feels that one of these grounds exists, it must raise the issue immediately during the proceedings before the Board of Appeal.

These new rights will not allow a party to question a Board of Appeal's decision on a substantive issue such as novelty or inventive step.  They relate only to procedural issues.  Grounds (b) and (c) however may well make EPO appeal proceedings more complex and confrontational, as parties and their representatives attempt to maximise their procedural rights.  In some cases, parties may try to use the review process to prolong proceedings.

A "petition" for review will have to be filed within two months of the relevant Board of Appeal decision.  A successful review will result in reimbursement of the petition fee (currently set at €2,500), and if appropriate of the original appeal fee.

Interpretation of European patents

EPC 2000 stipulates that, when interpreting the scope of a European patent for instance during infringement litigation, due account must be taken of "any element which is equivalent to an element specified in the claims".  It is not yet known how the various national courts will interpret this requirement, and its impact is likely to differ from one EPC country to another.  We would however advise that when drafting European patent applications, careful thought be given to the inclusion of such "equivalents", for all of the important technical features of the claims.

Clarification on patent attorney privilege

EPC 2000 has clarified that legal advice given by a European Patent Attorney on issues to do with European patents is protected against disclosure during litigation proceedings, including in other countries.  This will be a relief for European patent holders who engage in international-scale patent litigation, and their professional representatives.