EPC 2000 an overview

The revised EPC (called “EPC 2000” after the revision conference of that year) comes into force no later than 13 December 2007. To list all the changes large and small would be too tedious to contemplate.

On the administrative front, the content of certain Articles of the Convention has been moved to the Implementing Regulations, allowing greater flexibility for future changes in these areas. There are also a number of significant substantive changes, which we summarize here.

 

1. Central Limitation (Post-Grant Amendment)

Perhaps the most important development is the introduction of provisions allowing a patent proprietor to limit the scope of a patent by amendment of its claims or to revoke it completely. Previously, a European patent could only be limited or revoked centrally in opposition (and then amendment was permitted only if required to overcome the grounds of opposition).

Limiting amendments at this time will not re-open examination.

Interestingly, the Convention provides for no discretion for the EPO to refuse any such limitation or revocation on grounds of undue delay or bad faith. By contrast, in the UK, the Comptroller retains discretion over amendment of the patent, and may refuse to allow an amendment where it is demonstrated that the patentee knew or ought to have known the claims were not valid. Such behaviour is sometimes referred to as “covetous” (see our article in this newsletter “UK Courts have broader discretion in awarding damages for patent infringement prior to amendment”).

The new provisions of EPC 2000 may therefore open the door for a variety of tactical post-grant manoeuvres which would not previously have been possible.

 

2. Equivalents

Another potentially important change is an addition to the provisions for interpretation of patent claims. New Article 2 of the Protocol on Interpretation of Article 69 states

"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."

What does this mean? There is no definition of “equivalents” in the EPC; the intention appears to have been to leave the interpretation of this term to the national courts. Does it mean we will have a Doctrine of Equivalents? This is not anticipated. The explanatory remarks from the EPO put the aims of the new provision at improving uniformity of interpretation among courts of Europe. It has been perceived that German courts, for example, permit some scope for including equivalents within the scope of the claims, whereas UK courts do not. Epilady is the frequently cited example, in which infringement was found in Germany but not in the UK.

But already the new provision holds out the possibility of greater divergence. In Kirin-Amgen v Hoechst [2005] RPC 9, Lord Hoffman said that Article 69 prevents equivalence from extending protection outside the scope of the claims. Equivalence is merely part of the background facts known to the skilled man, which would affect what he understands the claims to mean. Lord Hoffman commented that the new Article 2 of the Protocol confirms rather than changes this view. Does this simply mean that if the equivalent was not known or could not have been known (as in Amgen) then the claim could not have been intended to encompass it? Or does this mean that if the “equivalent” was within the background known to the skilled man and is not claimed, then it is disclaimed? Does Lord Hoffmann present a Catch-22, in which the equivalent is excluded either way?

In a eloquent and amusing article in [2006] GRUR, Heft 9, 720, reproduced at CIPA [2006] No.11, 727, Lord Hoffmann states his view that there is no difference between UK and German interpretation, there are merely different approaches to the analysis. He says:

"[In the English approach] the question of equivalence is taken into account as part of the process of interpretation. But equivalence is not a principle which operates outside the claims and gives protection to something which upon a fair construction would not be understood by the skilled man as falling within the claims. This approach gives effect to both the old and new parts of the Protocol to Article 69"

In the diplomatic negotiations leading to this somewhat banal new provision, various proposals were put forward that would indeed have extended the scope of the words of claims to equivalents. These proposals were rejected. Lord Hoffmann writes that neither the present English approach nor the German approach is a full-blooded doctrine of equivalents.

Note that, unlike Article 69, which addresses interpretation of claims of patents and patent applications, the Protocol addresses only the interpretation of patents. The addition to the Protocol will have no effect on pre-grant prosecution. The possibility opens up, however, that in opposition proceedings before the EPO, questions concerning equivalents may creep into claim interpretation. It may, for example, be open for an opponent to argue that a claim lacks novelty over an equivalent means in the prior art.

 

3. Privilege

Attorney-client privilege has existed in UK law for some time. However, no such provision has until now been laid down in European patent law.

In the US, attorney-client privilege exists for non-US patent attorneys, but apparently only where they have it in their own jurisdiction. This has resulted in parties in US court proceedings being forced to disclose the entire contents of the files of the European patent attorney on the case in question, including those documents which would have been privileged under US or UK law.

Because of this, new Article 134a and Rule 153 have been introduced, enshrining specific privilege provisions into the EPC. The privilege applies only to European patent prosecution. UK and German patent attorneys already enjoy privilege in national proceedings. Many other European countries have yet to introduce privilege for patent attorneys.

 

4. Time limits

The provisions on further processing have been broadened, so that further processing of an application (not a granted patent) is applicable to more time limits. Further processing can be requested on failure to meet most deadlines set either by the EPC or by the EPO, rather than as before only those set by the EPO which would result in refusal or withdrawal of the application.

Further processing becomes applicable on missing the time limits for requesting examination, and for payment of the filing, search, designation, national basic and examination fees.

However, there are important exceptions. Among the time limits for which further processing cannot be requested, are:

i) the twelve month deadline from the first application for claiming priority;

ii) the time limit for filing an appeal or petition for review;

iii) other than the usual annual payment deadline, most other time limits for payment of renewal fees (for example late payment with the further fee);

and, of course

iv) the time limit for requesting further processing.

5. Petitions for review by the Enlarged Board of Appeal

Any party adversely affected by a decision of the Board of Appeal will be able to file a petition for review of the decision by the Enlarged Board. The grounds for review are limited to denial of due process and they do not simply allow review of any unfavourable decision. They extend to: fundamental procedural violations; criminal acts (e.g. fraud) that may have had an impact on the decision; and participation in the decision by a member of the Board of Appeal who is unqualified or inadmissible (e.g. on grounds of conflict of interest). Petitions are considered by the Enlarged Board of Appeals.

 

6. Prior art information – not quite a Duty of Disclosure

The EPO may now invite the applicant to provide not just details of patent applications in other jurisdictions, but also details of prior art taken into consideration in those jurisdictions. Failure to reply to such an invitation will result in the application being deemed withdrawn. It will remain for national courts to decide what effect the provision has if an applicant is not entirely candid in his reply.

In the meantime, outside the provisions of EPC 2000, the EPO has begun a pilot project in Germany aimed at using work done by national authorities on national priority applications (such as search reports) for the assessment of the later priority-claiming European application.

It appears from these two separate steps that the EPO is increasingly keen to promote efficiency by consulting information relating to European applications which has already been processed on equivalent applications in other jurisdictions.

 

7. Language of applications on filing

European patent applications may now be filed in any language whatsoever, not simply one of the EPO official languages, or an official language of one of the European Contracting States. There is a period of at least four months after filing in which to file the translation into one of the EPO official languages.

 

8. Patents for “all fields of technology”

A new Article 52(1) provides that European patents shall be granted for any inventions, in all fields of technology (provided they are new, involve an inventive step and are susceptible of industrial application). This provision is in line with the TRIPs Agreement and enshrines the old requirement that an invention be “technical”.

The specific exclusions still apply under Article 52(2) as explained on page 4 of this newsletter.

 

9. Second medical use claims

The exclusion of methods of treatment or diagnosis has been moved and is now one of the exceptions to patentability. The qualifier that this exclusion does not apply to products (such as substances or compositions) remains. The change simply confirms that “second medical use” claims are patentable without having to resort to the convoluted “Swiss” form of claim language.

 

Comment

Of these changes, the opportunity for post-grant amendment is the most significant. Space does not permit us to explore tactical implications here, but the availability of central post-grant amendment is a powerful tool in preparation for pan-European litigation.