EPC 2000 (European Patent Convention 2000) (09.07.2008)
On December 13, 2007 the “EPC 2000” came into force, which brought important changes for applicants. This summary is intended to give practical advice on the more relevant aspects.
I. SEARCHES AND DIVISIONALS
One of the major differences is a tougher approach of the EPO-Examiners with respect to unity of the invention if a PCT-application is regionalized in Europe. If the EPO has not been the International Search Authority ISA (but, e.g., the USPTO), the European supplementary search report will only deal with the first invention. There will be no chance to have the other inventions searched by paying further search fees. Instead, the additional invention(s) can only be pursued in one or more divisional applications.
Accordingly, in the majority of cases it is advisable to present as first claim the most important invention when entering into the regional phase in Europe.
There is also the possibility to have one further invention searched if the ISA has identified several inventions in the application and only searched one of them. The applicant can rearrange the claims when entering into the regional phase and place another invention first. Then, the EPO examiner will search this invention.
If the EPO has been the ISA and has identified several inventions in the application, the procedure is similar. The applicant’s only chance to have several inventions searched (in the same application) is to pay further search fees during the international phase. Only subject matter searched in the international phase may be pursued in the European application. If the applicant later decides to pursue non-searched subject matter, he has to file a divisional application.
Accordingly, it is advisable to determine already in the PCT stage which subject matter should be pursued later in the regional phase.
The above applies for all pending cases as well as new applications.
II. FILING REQUIREMENTS
The filing requirements of the EPC 2000 have become more favorable for applicants. Most of the changes are due to adaptations to TRIPS and PLT. Some of the more important ones are:
1) For obtaining a filing date for a European patent application it is now sufficient to:
a) indicate that a European patent is sought;
b) to reveal the applicant’s identity;
c) to file a description or refer to a previously filed application. Such a “filing by reference” is limited to one single reference. Filing by reference is also possible for divisional applications. A reference also to the claims has to be explicitly declared.
2) The application can be filed in any language. If this language is not English, German or French, a translation has to be filed within two months.
3) If a part of the application has been omitted upon filing, one can include these missing parts if a priority document includes these, too.
4) It is allowed to add or correct a priority claim within 16 months from the first priority date.
5) A priority document, which is not in one of the official languages of the EPO, has only to be translated upon request by the EPO examiner.
III. MISSING A DEADLINE
If a deadline has been missed resulting in a loss of rights, the applicant has in general two possibilities to recover his rights, which exclude each other. One is the so-called further processing, the other restitutio in integrum. The EPC 2000 has widened the applicability of the much simpler further processing procedure to many more situations. By paying the respective fee, the applicant will get at least two more months for meeting a deadline. The restitutio in integrum procedure (named “re-establishment of rights” in the EPC 2000) requires to file evidence that “all due care required by the circumstances” had been taken to meet the deadline. The re-establishment of rights now even applies to the priority deadline; the request must be filed within two months from the priority deadline. Please note that, for example, there is still no rescue provision when having missed the deadline for filing an opposition or an appeal.
IV. CLIENT-ATTORNEY PRIVILEGE
The EPC 2000 explicitly introduced a provision that the correspondence between the client and his European representative is privileged. This is especially important for US law suits.
V. MEDICAL USE CLAIMS
The fist medical use claim is usually worded as: “Compound X for use as a medicament”. Before the EPC 2000, the applicant had to use a “Swiss type” claim for claiming a second or subsequent medical use of a known substance: “Use of compound X in the manufacture of a medicament for the treatment of disease Y”. This is no longer required. The EPO now allows claims as “Compound X for the treatment of disease Y”. However, the new type of claim as well as the “Swiss type” claim should be chosen in the application – at least until the national courts’ interpretations of the new wording is evident. The above applies also to pending cases.
VI. EPO RIGHT TO REQUEST INFORMATION
The EPO now has the possibility to ask the applicant for submitting state of the art as searched or dealt with by other patent offices. It remains to be seen how often this will happen.
VII. CENTRALIZED POST GRANT AMENDMENT
Contrary to the former law, the applicant can limit his patent under the EPC 2000 in a centralized procedure before the EPO any time after grant – not, however, during pending opposition proceedings. He also may now apply for revocation by filing a respective request with the EPO. A limitation of the claims with retroactive effect may be advisable if new critical state of the art has come up after grant. There will be no new examination procedure for the newly filed claims. However, the claims will be checked for effective limitation, clarity, support and new matter.
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