The UK Intellectual Property Office has announced that remaining sections 1-5 of the Patents Act 2004 (PA 2004) will be commenced on 13 December 2007, to coincide with the European Patent Convention 2000 (EPC 2000) coming into force. The EPC 2000 is the revised version of the European Patent Convention agreed in June 2001.

Background

The provisions of the PA 2004 are designed to bring the Patents Act 1977 (PA 1977) into line with the EPC 2000. The EPC 2000 itself comes into force on 13 December 2007, resulting in a number of changes to European patent law including procedural modifications to make filing and amendment under the European system more user-friendly.

Outcome

On 13 December 2007, changes to sections 4A, 27, 58, 62, 63, 72, 75, 77, 78, 80, 81, 89B and 130 of the PA 1977 will come into force. Many of the changes simply provide that existing provisions are to be interpreted in line with the EPC 2000.

Methods of treatment or diagnosis

New section 4A implements articles 53(c), 54(4) and 54(5) of the EPC 2000 and deals with methods of medical treatment or diagnosis. Such methods will no longer lack patentability due to a lack of industrial applicability, but rather will be un-patentable in their own right. This exclusion does not cover novel substances or compositions for such use. In the case of an invention consisting of a substance for use in a method of diagnosis or treatment, the fact that the substance forms part of the state of the art shall no longer prevent the invention from being new if the use (or specific use) of the substance is new. Rather than the current Swiss type claim of “use of X for the manufacture of medicament to treat Y”, it will be possible to claim “substance X for use in treatment of disease Y”.

Post-grant amendment

A European patent may currently be amended by separate application to each contracting state designated by the patent. This option subsists; however the EPC 2000 introduces a new procedure under article 123 whereby European patents can be amended centrally at the European Patent Office. Amended sections 27, 58, 62, 63, 72 and 75 of the PA 1977 require the UK court or comptroller to have regard to relevant principles under the EPC 2000 when allowing or refusing amendments and when conducting proceedings affected by such amendment. Such principles will not be restricted to provisions within the EPC 2000 but will include any guidelines issued and decisions of the Boards of Appeal. Some predict that as a result the old UK law relating to covetousness and delay may cease.

European Patent applications as prior art

Finally, sections 75, 77, 78, 80, 81 and 89B of the PA 1977 will be amended to take account of the amendments to article 54 in the EPC 2000 which, in turn, changes the prior art effect of European patent applications. The current position is that an earlier published European patent application is treated as prior art (for novelty purposes only) against a later application, only if a contracting state designated in the earlier application is also designated in the later application.

Under article 79 of the EPC 2000, all contracting states are automatically designated on filing. Removal of any national designation pre-publication will not affect the prior art status of the application. It follows that all earlier applications will now be available as prior art against all subsequent European patent applications. Existing Article 54(3) has been deleted to reflect this.

Comment

Although some of the new PA 1977 provisions appear little more than a ‘nod’ to the EPC 2000, as with the incorporation of all harmonisation provisions, the full significance will only become apparent after some time.

In the meantime, the procedural simplifications are likely to be welcomed by everyone in the field. The new possibility of direct-form claims for a second medical use should also aid the progress of biotech patent law towards a more logical era.