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EPO 2000 Basic Changes in EPO Law and Regulations

EPO 2000 Basic Changes in EPO Law and Regulations. ________________________________________ Dr. Walter Maiwald. The European Patent Convention (EPC) and its Implementing Regulations (IR) provide the legal framework for the activities of the European Patent Office (EPO).

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EPO 2000 Basic Changes in EPO Law and Regulations

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  1. EPO 2000Basic Changes inEPO Law and Regulations ________________________________________ Dr. Walter Maiwald

  2. 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

  3. 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.

  4. 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.

  5. 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).

  6. 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).

  7. 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).

  8. 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).

  9. 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).

  10. 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).

  11. 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.

  12. 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).

  13. 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).

  14. 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).

  15. 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).

  16. Requesting revision by the Enlarged Board of Appeal • Article 112 EPCArticle 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 • to the appeal proceedings shall be parties to the pro- • ceedings before the Enlarged Board of Appeal. • The decision of the Enlarged Board of Appeal • referred to in paragraph 1 (a) shall be binding on the • Board of Appeal in respect of the appeal in question. • This is what you want, but do not get. This is what you get, but rarely need.

  17. 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).

  18. 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).

  19. 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.

  20. 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 versionNew 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.

  21. 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!

  22. Thank you for your attention. Dr. Walter Maiwald maiwald@maiwald.de Maiwald Patentanwalts GmbH www.maiwald.de München – Hamburg – DüsseldorfGermany

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