The first major change to the European Patent Convention (EPC) since 1973 occurred on 13 December 2007 when a new European Patent Convention (EPC 2000) came into force.
EPC revision was intended to:
- Harmonise the EPC with international law;
- Simplify or remove articles and rules of the EPC that were overcomplicated or redundant;
- Provide greater flexibility by re-categorising certain articles of the EPC as rules (rules can be changed by the European Patent Office (EPO), articles can only be changed by a special diplomatic conference); and
- Implement improvements to the system suggested by applicants and by the EPO.
The good news is:
- The requirements for obtaining a filing date have been relaxed; an application may now be filed in any language and without claims;
- Priority may be claimed from applications filed in World Trade Organisation Countries as well as Paris Convention Countries (this benefits applicants in developing, non-Paris Convention countries);
- It is now easier to recover an application after it has been deemed abandoned by the EPO. In most cases this will simply require the payment of a fee and the completion of all outstanding actions. Previously, in many cases, the applicant had to show that the loss of rights had occurred in spite of them taking all due care; and
- Post grant amendment has also been made easier with the introduction of a centralised limitation and revocation procedure which will allow the patentee to make amendments to the scope of the claims at the EPO. Previously, where a patentee had become aware of the existence of additional relevant prior art, amendment could only be made via national courts. This change should greatly reduce costs for the patentee.
However, the bad news is:
- EPC 2000 has changed the way in which the scope of protection afforded by the claims is to be interpreted in patent infringement proceedings before national courts. Up to now, the extent of protection has been determined by the claims of the granted patent. The changes mean that due account shall be taken of any element which is equivalent to an element specified in a claim. The purpose of this change is to harmonise the interpretation of European patents by national courts when considering infringement cases. It is believed that the explicit use of the term “equivalents” could further broaden the scope of protection afforded to a patentee and could make it harder to interpret the extent of protection given by a granted patent.
- EPC 2000 has also removed the option of obtaining supplementary EPO searches for international patent applications entering the European regional phase. Under current practice, where the EPO finds that the application contains more than one claimed invention, it has been possible to request additional searches for second and subsequent inventions. Therefore, the applicant can choose which invention they wish to have examined. Applicants who have an international patent application where there is a “unity of invention” objection should seek advice on possible amendments to the application well before entry into the European regional phase to ensure that the most commercially valuable invention is examined by the EPO.
The changes that have been made do provide significant improvements in some areas. However, there is a sense that, from the applicant’s perspective, the new arrangements give with one hand and take away with the other.
Simon Black is a Chartered Patent Attorney at Gilholm Harrison’s new Scottish office in Glasgow. He advises clients on all matters concerning the protection of inventions, particularly in the fields of computer software, electronics and mechanical engineering.