Recent Patent Developments in Europe
The following events will take place shortly that will affect patent prosecution in Europe:
1) On December 13, 2007 the revised European Patent Convention will come into effect;
2) On January 1, 2008, Croatia and Norway will become members of the European Patent Convention; and
3) Sometime in the first part of next year the London Agreement will come into effect removing for some countries the need to file full translations at the grant of the European Patent.
Revision of the European Patent Convention
A Diplomatic Conference for revision of the European Patent Convention (EPC) duly took place in Munich in November 2000. Its results were modest. A number of issues were left unresolved and there was a call for a further conference in the fairly near future to try to resolve them. However, this never occurred and it has taken until now for even the modest revisions agreed in 2000 to come into effect. Under the provisions of the revised convention any member country that has not ratified the new text by December 13 will be excluded from the the convention altogether. We understand, however, that all current member countries and Norway which is about to join have completed their internal processes required for ratification and are likely to deposit the necessary instruments with the German government in good time before the December 13 due date.
The modifications effected by the new text (commonly referred to as EPC 2000) fall into three main groups:
A. substantive law changes;
B. changes to facilitate proposals from the European Commission on issues that interface with the European Patent Convention; and
C. changes to improve procedure.
A. Substantive Law Changes
A.1 Amendment After Grant
New Articles 105a, 105b and 105c provide the patent proprietor with a means for effecting limitation of a granted European Patent by way of a single procedure before the EPO rather than having to institute limitation or amendment proceedings in national fora, wherever this is possible, as at present. Such proceedings will permit the patentee to limit the patent by amendment of claims or to have the patent revoked. No such proceeding will be permitted to be started while an opposition remains pending. Any such limitation will have effect in all designated states and an amended specification will be published. Under Article 115, third parties will be able to present observations on the amendments proposed in such a procedure but will not have any right to oppose them. The procedure for requesting such a limitation is set out in new Rules 63b – h.
Additionally, Article 138 has been amended to specify that in proceedings before a national court where validity is in issue, the patentee shall have the right to limit the scope of protection by amending the claims.
A.2 Claims to be Construed to Cover Equivalents
The Protocol to Article 69 has been amended to add a new paragraph as follows:
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.
Proposals to define an “equivalent” as performing the same function as the claim element and to provide for some form prosecution history estoppel were not adopted.
A.3 Patentable Subject Matter
The introduction to Article 53 has been amended from stating that
European Patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.
European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.
This change has been seen as being intended to emphasize the need for an invention to be “technical” in order for it to be patentable.1
A.3.1 Morality or Ordre Public
The prohibition on patentability in Article 53(a) has been restricted to inventions whose “commercial exploitation” would be contrary to morality or ordre public rather than whose “publication or exploitation” would fall under these heads as was the previous case.
A.3.2 Medical Methods
The prohibition on the grant of patents for methods of treatment of humans or animals by way of therapy or surgery or diagnosis applied directly to the body is transferred from the category of inventions not susceptible of industrial application to the category of inventions set out in Article 53 that are simply not patentable, like those whose commercial exploitation would be contrary to morality or ordre public. Additionally the wording in the definition of novelty that has up to now permitted broad “compound for use” protection for a first medical method has been amended to add as new Article 54(5) (the novelty provisions) shall not exclude the patentability of any substance or composition comprised in the state of the art for any specific use in any method … (for treatment of the human or animal body by surgery or therapy or diagnostic methods practiced on the human or animal body) provided that such use is not comprised in the state of the art.
It therefore appears that claims of the type “aspirin for use in the prevention of platelet aggregation” will be permitted without the need to resort to “Swiss form” claims. Such claims will be permitted in any application that is pending when the new text comes into effect on December 13, 2007.
A.4 Claims to Priority from WTO-Member Countries
Article 87 has been amended to permit priority claims from applications filed in WTO-Member countries as well as Paris Convention countries. Additionally new rule 38 will permit one to make a claim for convention priority after filing the application as long as the claim is made within sixteen months of the date claimed and new Rule 41a makes a provision for dealing with deficiencies in a priority claim.
A.5 Intervention of Infringer in Opposition Proceedings
Article 105(1) has been amended to remove the requirement that a third party who is subject to or has been threatened with infringement proceedings and responded by seeking a declaration of non-infringement can only intervene in an on-going opposition against the patent in question within a period of three months from the date of the start of the suit against him or his suit for a declaration of non-infringement. There is now no time limit.
B. EU Interface Issues
To some extent the provisions adopted in the Revised European Patent Convention will be affected by the EU’s final resolution of the Community Patent issue. It is, however, worth noting the following amendments that have been made to the EPC since their interaction with the EU’s Community Patent provisions will still be of importance.
B.1 Translation Costs
The EU has previously called for a reduction of the translation costs associated with patent protection in Europe. At an Intergovernmental Conference in London in October 2000, an agreement was adopted by a group of countries that will permit countries having one of the three official languages of the EPO as one of its own official language or where the European patent is in a language designated as being acceptable in that country to waive its right to have a translation of a granted European patent. Adherence to this agreement is optional and not all members of the EU or EPC are required to join for it to come into effect. This agreement was signed by Denmark, France, Germany, Liechtenstein, Monaco, the Netherlands, Sweden, Switzerland and the United Kingdom. The agreement will come into effect only after ratification by eight countries, including the three to which the EPO granted the largest number of European Patents in 1999. It remains to be seen whether the countries which signed on to the agreement will in fact ratify it to enable it to be brought into effect.2 This new agreement complies with Article 65 of the EPC in the form in which it was agreed to be amended in 2000 to take account of the possibility of republishing a European Patent after it has been limited as contemplated in section A.1 above. New EPC Article 149a(1)(c) makes reference to the possibility of groups of member states agreeing to waive translation requirements.
As noted elsewhere, the EU has also called for improvements in patent litigation procedures. The Munich Conference has amended the EPC to facilitate this by adding new Article 149a which permits groups of states that are parties to the EPC concluding other agreements among themselves relating to European patents or patent applications, including the establishment of a “European patent court”. The new article also empowers the EPC Administrative Council to provide support for such a court, including permitting it to allow appeal board members to participate in any such court.
B.3 Power to Amend Convention to Implement EU Legislation or International Treaties
The Administrative Council has been empowered by new Articles 33(1)(b), 33(5) and 35(3) to amend the EPC to comply with EU legislation or international treaties rather than requiring a diplomatic conference to effect such changes. Such changes do, however, require unanimity in the Administrative Council.
B.4 Increased Political Control over EPO
New Article 4a provides that there shall be a ministerial conference of the member states at least once every five years to “discuss issues pertaining to the Organization and to the European patent system”.
C. Procedural issues
One major effect of the revision is to transfer detailed provision for many procedural issues from the Convention itself to Implementing Regulations which are easier to amend. A number of specific issues emerged.
C.1 Possibility of Petition to Review Appeal Board decisions by the Enlarged Board of Appeal
New Article 112a provides that in cases where a decision is made by an Appeal Board comprising a member who ought to have recused him- or herself from participating in a decision, where a criminal act may have impacted the decision or other fundamentals of due process have been violated, any party adversely affected by the decision may petition the Enlarged Board of Appeal for review thereof.
C.2 Appointment of National Judges to Enlarged Board of Appeal
New Article 11(5) formalizes the procedure whereby the Administrative Council may appoint “qualified members of the national courts or quasi-judicial authorities of the Contracting States” to the Enlarged Board of Appeal without their having to relinquish their “judicial activities at the national level.”
C.3 Bringing Examination and Search Together
A number of changes have been made preparing the way for bringing examination and search together (BEST). However, details of this are left to the implementing regulations.3 What has been done in the Convention is to remove the requirements in Articles 16 and 17 that particular acts be done in the Hague and elimination of the requirement to publish a search report before the examination fee must be paid.
C.4 Further Processing and Requests for Re-establishment of Rights
The requirements for further processing and re-establishment of rights are to be transferred to Implementing Regulations. However, the revised Convention specifically excludes the possibility of using further processing to remedy failures to meet requirements relating to changes in priority, appeal terms and petitions for review by the Enlarged Board of Appeal and also eliminates the possibility of using procedure for re-establishment of rights for missing the term within which to seek re-establishment of rights. All other terms are to be specified in Implementing Regulations. One general liberalization effected by the new rules will be to reduce the penalty that has existed hitherto when an applicant has failed to file drawings with the application or part of the text was missing. Under new rule 39a, if priority is claimed and if the drawings or missing text were part of the priority document, they will be able to be added to the application without loss of rights.
C.5 Filing in Additional Languages
Article 14(2) has been amended to comply with the Patent Law Treaty to permit initial filing of the application in any language. Implementing regulations will set out the requirements for subsequent translation into one of the EPO’s official languages.
C.6 Recognition of Attorney-Client Privilege
Article 134a(1)(d) and new rule 101a provide for privilege from disclosure in proceedings before the EPO for confidential communications between a professional representative and his or her client.
Croatia and Norway’s Adherence to the EPC
Croatia and Norway have deposited instruments of accession to the European Patent Convention (in its revised form as discussed above) and will become members of the convention on January 1, 2008. European patent applications filed on or after January 1, 2008 may therefore designate these countries, and PCT applications filed on or after this date will also include these countries in any designation of the EPC. For PCT applications with international filing dates prior to January 1, 2008, however, national phase entry into the individual countries will still be required.
For Croatia, previously filed European applications and PCT applications will continue to be handled under the old provisions relating to extension, so that it will be possible to extend a European Patent to Croatia if this is designated in a European application filed prior to January 1, 2008, or is a regional phase entry of a PCT application filed prior to this date. However, it will no longer be possible to list Croatia as an extension state for applications filed on or after January 1, 2008.
Entry Into Effect of the London Agreement
Like the revised European Patent Convention, the London Agreement affecting the need to file translations of European Patents when granted, dates back to 2000. Again there have been delays in ratification.
Unlike the revision to the European Patent Convention, however, adherence to the London Agreement is not required by all member states. So far it has been ratified by Germany, Iceland, Latvia, Monaco, Netherlands, and Slovenia, Switzerland and the United Kingdom. France has completed the internal steps needed and the agreement will come into effect on “the first day of the fourth month after the deposit” of France’s deposit of its instrument of ratification with the German government. Denmark and Sweden, whose ratification is not required to bring the Agreement into effect, have also completed the necessary internal steps and are likely to deposit instruments of ratification once a definite date for implementation has been established. Other members of the EPC look less likely to join in the immediate future and for them the current provisions relating to the filing of translations will continue to apply.
Under the Agreement, member countries whose national languages include English, French or German will no longer require translations of the text of European Patents when granted. This will apply to France, Germany, Monaco, Switzerland and the United Kingdom. Other member countries have the right to require a translation of specification into a designated language selected from English, French and German if the official text is not in that language and to require a translation of the claims into one of their own national languages. The legislation passed by Denmark and Sweden still requires translation of the whole text of the European Patent into English if that is not the language in which the patent is published and translation of the claims into Danish and Swedish respectively. Iceland, Latvia, Netherlands, and Slovenia all seem likely to require a translation of the claims into one of their national languages and possibly a translation of the full text into their designated language if the text is not already in that language.
At present it is not possible to predict an exact date for the Agreement to come into effect and only patents granted after the date on which it comes into effect can benefit from the new provisions. It may therefore be desirable in some cases to slow down the grant procedure before the EPO in order to delay grant until after the agreement comes into effect. There are various ways of doing this, for example by seeking amendment in response to a notification that the application is ready for grant or by delaying submission of translated claims by taking advantage of the EPO’s “further processing” procedure. We would be happy to discuss particular options in particular cases.
1 See, for example, Odour selection/Quest International T 619/02  OJ EPO 63
2 The text of the agreement can be found at  OJ EPO 549.
3 However, draft Rule 50, still permits the applicant to defer requesting examination until up to six months after publication of the search report.