EPC 2000
Encyclopedia
The EPC 2000 or European Patent Convention 2000 is the version of the European Patent Convention
(EPC) as revised by the Act Revising the Convention on the Grant of European Patents signed in Munich
on November 29, 2000. On June 28, 2001, the Administrative Council of the European Patent Organisation
adopted the final new text of the EPC 2000. The EPC 2000 entered into force on December 13, 2007.
The EPC 2000 does not introduce any major changes in substantive patent law, except changes concerning novelty
, industrial applicability
and priority right
s. The EPC 2000 is however a comprehensive revision introducing "a considerable number of smaller amendments".
, especially those of the Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPs Agreement) and of the Patent Law Treaty
, and to add a level of judicial review of the Boards of Appeal
decisions.
on December 13, 2005, and was the fifteenth Contracting State to ratify or accede
to the EPC 2000. In addition, since not all the contracting states had deposited their instruments of ratification or accession by September 30, 2007, the EPC 2000 will enter into force on December 13, 2007.
A Contracting State that would not have ratified or acceded to the EPC 2000 at the time of its entry into force, i.e. on December 13, 2007, would have ceased to be party to the EPC as from that time. All Contracting States ratified in due time.
, the prior art effect of a first European patent application (a so-called "conflicting patent application") filed before the filing date of a second European patent application, but published after said filing date, on the second application is limited to the designated states in common.
In the EPC 2000, this provision, i.e. Article 54(4) EPC, has been deleted. This means in the EPC 2000 that "any European application falling under
Article 54(3) EPC constitutes prior art with effect for all the EPC contracting states at the time of its publication." has been deleted following the deletion of Article 54(4).
The deleted Article 54(4) EPC remains applicable to the European patents granted before December 13, 2007 and the European patent applications pending on December 13, 2007. In other words, Art. 54(4) EPC 1973 is still transitionally applicable.
This amendment along with the absence of a transitional provision for Rule 23a (providing that Rule 23a EPC 1973 would continue to apply for pending applications or granted patents at the date of entry into force of the EPC 2000) has raised concerns that, "if the provisions of the EPC 2000 are interpreted strictly", patent rights existing at the date of entry into force of the EPC 2000 may become invalid after the entry into force of the EPC 2000, on December 13, 2007. In September 2007, the European Patent Office published a notice indicating that "the provisions currently laid down in Article 54(3) and (4) in conjunction with Rule 23a EPC 1973 will continue to apply to European patent applications filed and patents granted before the entry into force of the EPC 2000".
2000 (PLT)". In particular, Rule 40 EPC 2000 is relevant. There is no requirement anymore to file claim
s to obtain a date of filing. In addition the description may be filed in any language. Among the requirements, a reference to a previously filed application may also be used to obtain a date of filing. Furthermore, filing by reference to a previously filed application may incorporate the claims of the previously filed application.
From December 13, 2007 to December 19, 2008, "54 applications [have] been received with a later date of receipt of claims than the original application date. Sixty-one invitations to file claims have been prepared for other applications missing the date of receipt of claims. The possibility to replace descriptions and drawings with a reference to a previously filed application was used by applicants 391 times (usually for divisional application
s) during the year following the entry into force of the EPC 2000, "accounting for 0.6 % of all direct European filings."
s are extended to filing in or for any member of the World Trade Organization
(WTO), in addition to any state party to the Paris Convention for the Protection of Industrial Property
. This amendment has been made to align the European Patent Convention with Article 2 of the TRIPS Agreement.
. Under the EPC 1973, the failure to observe the time limits for paying these fees could only be remedied by strict grace periods. These grace periods have now been replaced by the application of further processing and, if the further processing time limit is missed, re-establishment of rights, which although not directly applicable to the time limit missed originally, is applicable to the failure to observe the time limit for further processing.
One of the biggest changes, was to allow the excuse of the failure to observe the 12 month priority period. If this period is missed, this failure can be remedied by a request for re-establishment of rights filed within 2 months of the expiry of the priority period (in most other cases, the request for re-establishment must be filed within two months of the removal of the impediment to completing the act in question on time, up to a maximum of 12 months ). This is provided that the failure to the observe the original period was despite the applicant having taken all due care (i.e. the applicant has a legitimate reason for missing the deadline). There is some uncertainty as to whether this is an aggregate time limit or a unitary time limit, which can make difference of up to several days as to when it expires.
of the European patent.
by filing a petition for review. The petition for review can only be based on a fundamental procedural defect and its purpose is not to obtain a review of the application of substantive law. The petition is in fact a restricted form of judicial review, limited to examining serious errors of procedure which might have been committed by the Legal or Technical Boards of Appeal, prejudicing the right to a fair hearing of one or more appellants. Previously it was not possible for a party who did not have his requests granted in an appeal to challenge the final decision of the Legal or Technical Board of Appeal on any grounds.
The first petitions for review included R1/08 (application no 97600009), R2/08 (application no 00936978), R3/08 (application no 01943244) and R4/08 (application no 98116534). The first allowable petition for review was decision R 7/09, for a fundamental violation of .
Pursuant to Article 7(1) and (2) of the Act revising the EPC of 29 November 2000, the Administrative Council decided on 28 June 2001 to adopt a certain number of exceptions ("unless otherwise decided by the Administrative Council of the European Patent Organisation"). Amongst these exceptions (as laid out in Article 1.1 of the Administrative Council's decision of 28 June 2001), Articles 106 and 108 EPC are said to apply to all European patent applications pending at the time of the entry into force of the EPC 2000. However, the Legal Board of Appeal in case J 10/07 decided, in order to reflect the intention and purpose of those transitional provisions, to apply Articles 106 and 108 as applicable before the entry into force of the EPC 2000 (i.e. Articles 106 and 108 EPC 1973) to a pending European patent application.
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
(EPC) as revised by the Act Revising the Convention on the Grant of European Patents signed in Munich
Munich
Munich The city's motto is "" . Before 2006, it was "Weltstadt mit Herz" . Its native name, , is derived from the Old High German Munichen, meaning "by the monks' place". The city's name derives from the monks of the Benedictine order who founded the city; hence the monk depicted on the city's coat...
on November 29, 2000. On June 28, 2001, the Administrative Council of the European Patent Organisation
Administrative Council of the European Patent Organisation
The Administrative Council of the European Patent Organisation is one of the two organs of the European Patent Organisation , the other being the European Patent Office . The Administrative Council acts as the Organisation's supervisory body as well as, to a limited extent, its legislative body...
adopted the final new text of the EPC 2000. The EPC 2000 entered into force on December 13, 2007.
The EPC 2000 does not introduce any major changes in substantive patent law, except changes concerning novelty
Novelty (patent)
Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....
, industrial applicability
Industrial applicability
In patent law, industrial applicability or industrial application is a patentability requirement according to which a patent can only be granted for an invention which is susceptible of industrial application, i.e. for an invention which can be made or used in some kind of industry. In this...
and priority right
Priority right
In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively...
s. The EPC 2000 is however a comprehensive revision introducing "a considerable number of smaller amendments".
Background
A diplomatic conference was held from 20 November to 29 November 2000 in Munich to revise the Convention on the Grant of European Patents of 5 October 1973, amongst other things to integrate in the EPC new developments in international lawInternational law
Public international law concerns the structure and conduct of sovereign states; analogous entities, such as the Holy See; and intergovernmental organizations. To a lesser degree, international law also may affect multinational corporations and individuals, an impact increasingly evolving beyond...
, especially those of the Agreement on Trade-Related Aspects of Intellectual Property Rights
Agreement on Trade-Related Aspects of Intellectual Property Rights
The Agreement on Trade Related Aspects of Intellectual Property Rights is an international agreement administered by the World Trade Organization that sets down minimum standards for many forms of intellectual property regulation as applied to nationals of other WTO Members...
(TRIPs Agreement) and of the Patent Law Treaty
Patent Law Treaty
The Patent Law Treaty is a patent law multilateral treaty concluded on 1 June 2000 in Geneva, Switzerland, by 53 States and the European Patent Organisation...
, and to add a level of judicial review of the Boards of Appeal
Appeal procedure before the European Patent Office
Decisions of the first instances of the European Patent Office can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure , as opposed to an administrative procedure. These boards act as the final instances in the granting and opposition procedures before the...
decisions.
Entry into force
Greece deposited its instrument of ratificationRatification
Ratification is a principal's approval of an act of its agent where the agent lacked authority to legally bind the principal. The term applies to private contract law, international treaties, and constitutionals in federations such as the United States and Canada.- Private law :In contract law, the...
on December 13, 2005, and was the fifteenth Contracting State to ratify or accede
Vienna Convention on the Law of Treaties
The Vienna Convention on the Law of Treaties is a treaty concerning the international law on treaties between states. It was adopted on 22 May 1969 and opened for signature on 23 May 1969. The Convention entered into force on 27 January 1980. The VCLT has been ratified by 111 states as of November...
to the EPC 2000. In addition, since not all the contracting states had deposited their instruments of ratification or accession by September 30, 2007, the EPC 2000 will enter into force on December 13, 2007.
A Contracting State that would not have ratified or acceded to the EPC 2000 at the time of its entry into force, i.e. on December 13, 2007, would have ceased to be party to the EPC as from that time. All Contracting States ratified in due time.
Amendments
Prior art effect and double patenting
Under the EPC 1973, in order to preclude double patentingDouble patenting
Double patenting is the grant of two patents for one single invention, to the same proprietor and in the same country or countries. According to the European Patent Office, it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one...
, the prior art effect of a first European patent application (a so-called "conflicting patent application") filed before the filing date of a second European patent application, but published after said filing date, on the second application is limited to the designated states in common.
In the EPC 2000, this provision, i.e. Article 54(4) EPC, has been deleted. This means in the EPC 2000 that "any European application falling under
Article 54(3) EPC constitutes prior art with effect for all the EPC contracting states at the time of its publication." has been deleted following the deletion of Article 54(4).
The deleted Article 54(4) EPC remains applicable to the European patents granted before December 13, 2007 and the European patent applications pending on December 13, 2007. In other words, Art. 54(4) EPC 1973 is still transitionally applicable.
This amendment along with the absence of a transitional provision for Rule 23a (providing that Rule 23a EPC 1973 would continue to apply for pending applications or granted patents at the date of entry into force of the EPC 2000) has raised concerns that, "if the provisions of the EPC 2000 are interpreted strictly", patent rights existing at the date of entry into force of the EPC 2000 may become invalid after the entry into force of the EPC 2000, on December 13, 2007. In September 2007, the European Patent Office published a notice indicating that "the provisions currently laid down in Article 54(3) and (4) in conjunction with Rule 23a EPC 1973 will continue to apply to European patent applications filed and patents granted before the entry into force of the EPC 2000".
Requirements for obtaining a date of filing
The requirements to obtain a date of filing (for a European patent application), laid out in Article 80, have been amended. A reference is now made to the Implementing Regulations, which are now in line with "the worldwide standard laid out in Article 5 of the Patent Law TreatyPatent Law Treaty
The Patent Law Treaty is a patent law multilateral treaty concluded on 1 June 2000 in Geneva, Switzerland, by 53 States and the European Patent Organisation...
2000 (PLT)". In particular, Rule 40 EPC 2000 is relevant. There is no requirement anymore to file claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
s to obtain a date of filing. In addition the description may be filed in any language. Among the requirements, a reference to a previously filed application may also be used to obtain a date of filing. Furthermore, filing by reference to a previously filed application may incorporate the claims of the previously filed application.
From December 13, 2007 to December 19, 2008, "54 applications [have] been received with a later date of receipt of claims than the original application date. Sixty-one invitations to file claims have been prepared for other applications missing the date of receipt of claims. The possibility to replace descriptions and drawings with a reference to a previously filed application was used by applicants 391 times (usually for divisional application
Divisional applications under the European Patent Convention
In the procedure before the European Patent Office , divisional applications can be filed under . Such a divisional application, sometimes called European divisional application, is a new patent application which is separate and independent from the parent application, unless specific provisions in...
s) during the year following the entry into force of the EPC 2000, "accounting for 0.6 % of all direct European filings."
Priority rights extended to first filing in WTO members
The priority rightPriority right
In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively...
s are extended to filing in or for any member of the World Trade Organization
World Trade Organization
The World Trade Organization is an organization that intends to supervise and liberalize international trade. The organization officially commenced on January 1, 1995 under the Marrakech Agreement, replacing the General Agreement on Tariffs and Trade , which commenced in 1948...
(WTO), in addition to any state party to the Paris Convention for the Protection of Industrial Property
Paris Convention for the Protection of Industrial Property
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, was one of the first intellectual property treaties. It established a Union for the protection of industrial property...
. This amendment has been made to align the European Patent Convention with Article 2 of the TRIPS Agreement.
Legal remedies
Extensive changes were also made to the possibilities for the legal remedy of the failure to observe various time limits within the European patent system. Most particularly, the failure to pay various fees (filing fee, designation fee, search fee and examination fee) were, until the coming into force of the EPC 2000, excluded from the standard legal remedies of further processing and re-establishment of rightsRestitutio in integrum
Restitutio in integrum is a Latin maxim which means restoration to original condition. It is one of the primary guiding principles behind the awarding of damages in common law negligence claims...
. Under the EPC 1973, the failure to observe the time limits for paying these fees could only be remedied by strict grace periods. These grace periods have now been replaced by the application of further processing and, if the further processing time limit is missed, re-establishment of rights, which although not directly applicable to the time limit missed originally, is applicable to the failure to observe the time limit for further processing.
One of the biggest changes, was to allow the excuse of the failure to observe the 12 month priority period. If this period is missed, this failure can be remedied by a request for re-establishment of rights filed within 2 months of the expiry of the priority period (in most other cases, the request for re-establishment must be filed within two months of the removal of the impediment to completing the act in question on time, up to a maximum of 12 months ). This is provided that the failure to the observe the original period was despite the applicant having taken all due care (i.e. the applicant has a legitimate reason for missing the deadline). There is some uncertainty as to whether this is an aggregate time limit or a unitary time limit, which can make difference of up to several days as to when it expires.
Requests for limitation or revocation
Article 105a(1) EPC 2000 introduces a procedure for centrally limiting or revoking a European patent. A request for limitation or revocation may be filed at any time throughout the termTerm of patent
The term of a patent is the maximum period during which it can be maintained into force. It is usually expressed in number of years either starting from the filing date of the patent application or from the date of grant of the patent. In most patent laws, renewal annuities or maintenance fees have...
of the European patent.
Petition for review
Article 112a EPC 2000 introduces a procedure for contesting the decisions of the boards of appealAppeal procedure before the European Patent Office
Decisions of the first instances of the European Patent Office can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure , as opposed to an administrative procedure. These boards act as the final instances in the granting and opposition procedures before the...
by filing a petition for review. The petition for review can only be based on a fundamental procedural defect and its purpose is not to obtain a review of the application of substantive law. The petition is in fact a restricted form of judicial review, limited to examining serious errors of procedure which might have been committed by the Legal or Technical Boards of Appeal, prejudicing the right to a fair hearing of one or more appellants. Previously it was not possible for a party who did not have his requests granted in an appeal to challenge the final decision of the Legal or Technical Board of Appeal on any grounds.
The first petitions for review included R1/08 (application no 97600009), R2/08 (application no 00936978), R3/08 (application no 01943244) and R4/08 (application no 98116534). The first allowable petition for review was decision R 7/09, for a fundamental violation of .
Transitional provisions
According to Article 7(1) of the Act revising the European Patent Convention of 29 November 2000,- "The revised version of the Convention shall apply to all European patent applications filed after its entry into force, as well as to all patents granted in respect of such applications. It shall not apply to European patents already granted at the time of its entry into force, or to European patent applications pending at that time, unless otherwise decided by the Administrative Council of the European Patent Organisation."
Pursuant to Article 7(1) and (2) of the Act revising the EPC of 29 November 2000, the Administrative Council decided on 28 June 2001 to adopt a certain number of exceptions ("unless otherwise decided by the Administrative Council of the European Patent Organisation"). Amongst these exceptions (as laid out in Article 1.1 of the Administrative Council's decision of 28 June 2001), Articles 106 and 108 EPC are said to apply to all European patent applications pending at the time of the entry into force of the EPC 2000. However, the Legal Board of Appeal in case J 10/07 decided, in order to reflect the intention and purpose of those transitional provisions, to apply Articles 106 and 108 as applicable before the entry into force of the EPC 2000 (i.e. Articles 106 and 108 EPC 1973) to a pending European patent application.
External links
- EPC 2000 on the European Patent OfficeEuropean Patent OfficeThe European Patent Office is one of the two organs of the European Patent Organisation , the other being the Administrative Council. The EPO acts as executive body for the Organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative...
web site - EPC 2000 on the Swiss Federal Institute of Intellectual PropertySwiss Federal Institute of Intellectual PropertyThe Swiss Federal Institute of Intellectual Property is the federal agency in charge of intellectual property matters in Switzerland. Its seat is in Bern...
web site - EPC 2000 on the United Kingdom Intellectual Property Office web site
Further links and readings
- EPO web site
- Special editions of the Official Journal of the EPO:
- 1/2007 - Revision of the EPC (EPC 2000), New texts relevant for patent practitioners, 2007 (PDF, 1.6 MB).
- 3/2007 - Revision of the European Patent Convention (EPC 2000). Update of decisions of the President and notices from the European Patent Office of relevance to patent practitioners, 2007 (PDF, 1.3 MB).
- 4/2007 - Revision of the European Patent Convention (EPC 2000). Synoptic presentation EPC 1973/2000 – Part I: The Articles, 2007 (PDF, 1.72 MB).
- 5/2007 - Revision of the European Patent Convention (EPC 2000). Synoptic presentation EPC 1973/2000 – Part II: The Implementing Regulations, 2007. Gesetz zur Umsetzung der Akte von 29. November 2000 zur Revision des Übereinkommens über die Erteilung europaïscher Patente, Vom 24. August 2007, Bundesgesetzblatt Jahrgang 2007 Teil I Nr. 45, pp. 2166–2168.
- See also:
- Ratification Act ("Gesetz zu der Akte vom 29. November 2000 zur Revision des Übereinkommens vom 5. Oktober 1973 über die Erteilung europäischer Patente (Europäisches Patentübereinkommen) Vom 24. August 2007", Bundesgesetzblatt Jahrgang 2007 Teil II Nr. 25, ausgegeben zu Bonn am 31. August 2007, p. 1082ff) and
- Implementing Regulations published in the German Federal Law Gazette or Bundesgesetzblatt ("Bekanntmachung der Neufassung der Ausführungsordnung zum Europäischen Patentübereinkommen und der Neufassung der Gebührenordnung der Europäischen Patentorganisation Vom 24. August 2007", Bundesgesetzblatt Jahrgang 2007 Teil II Nr. 25, ausgegeben zu Bonn am 31. August 2007, p. 1199ff)
- Special editions of the Official Journal of the EPO: