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EPC 2000 in Practice

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EPC 2000 in Practice Column Written by Yohan Liyanage & James Marshall IP Lawyer EPC 2000 in practice On 13th December 2007 the Infringement by equivalents English, French or German translation European Patent Convention 2000 A common issue in patent infringement provided within two months of filing. came into force in all contracting proceedings is whether a patent is infringed by The provisions on further processing a product or process which does not fall within have also been amended so that, if certain states, extensively changing the the literal meaning of the claims of the patent, deadlines are missed, the applicant has the original convention but is equivalent to what is claimed on a literal opportunity to rectify the error; whereas reading. European jurisdictions have adopted previously the application would have lapsed. The main objectives of the European Patent different approaches to this issue, with the While some deadlines remain strict, and an Convention 2000 (EPC 2000) were to bring result that there can be divergent findings on applicant should never rely on being able to the convention into line with the TRIPs the infringement of the same European patent miss a deadline, the application process Agreement and the Patent Law Treaty 2000; in relation to the same allegedly infringing has, on the whole, become significantly more to amend the EPC so that it reflected the product or process in different jurisdictions. flexible and user-friendly. working practice of the EPO; and to enable To address this issue, EPC 2000 has the EPC to be amended more readily in introduced a new Article 2 of the Protocol on Privilege future. The amendments introduced by EPC Interpretation of Article 69 EPC, which states: EPC 2000 introduces the concept of privilege 2000 affect a wide range of issues and “For the purpose of determining the to communications between European patent range from substantive changes to patent extent of protection conferred by a European attorneys and their clients. While patent agent law and significant procedural developments, patent, due account shall be taken of any privilege was previously recognised under the to relatively minor procedural amendments. element which is equivalent to an element national laws of certain contracting states Some of the key changes, and their specified in the claims.” (such as the UK), it is not recognised in practical implications for patent owners, The aim of the amendment appears to others. In the US, privilege can be recognised are outlined below. have been to harmonise the approach to for non-US patent attorneys, but only where infringement across Europe. This is to be the privilege exists in the attorney’s own Post-grant amendment welcomed as it should bring greater certainty jurisdiction. The lack of privilege in certain One of the most significant changes to patent owners and potential infringers European jurisdictions therefore risked the introduced by EPC 2000 is the new “central alike. However, it remains to be seen disclosure of patent agent communications limitation procedure”. Previously, if a patent whether this amendment will have any effect relating to European patents in US litigation owner wished to amend a European patent in practice. The national courts of some proceedings. EPC 2000 should reduce the after it had been granted and any opposition contracting states already consider the issue risk of such disclosure. This is of potentially proceedings completed (eg, in order to of equivalents in determining infringement great significance to owners of European overcome a piece of prior art that had come and EPC 2000 provides no definition of the patents who are conducting litigation of to light after grant), the patent holder would term. There may also be confusion over what equivalent US patents, although the precise have to request the amendment in each is required by “due account”. It is possible, scope of the privilege remains to be seen. individual country. Under EPC 2000, therefore, that the amendments introduced however, patent owners can now amend by EPC 2000 will have no effect and that Summary their patents in all designated states via divergent decisions on cases of infringement EPC 2000 introduces a wide range of a single request to the EPO, saving them will continue across Europe. substantive and procedural changes to both time and money. European patent law. The procedures for The request for amendment, however, Ease of filing and prosecution filing and post-grant amendment are must limit the claims of the patent. The Under EPC 2000, it is no longer necessary simplified, and a greater degree of flexibility Examining Division examines the requested to file drawings, claims and a description to in prosecution has been introduced. The amendment only for issues of added matter, obtain a filing date for a European patent. An substantive legal changes aim to clarify and claim broadening and clarity, but will not applicant can simply refer to an earlier harmonise patent law across Europe and reconsider the novelty and inventive step of application filed in another country and should thereby increase legal certainty. the claims. If these criteria are satisfied, request that the description, drawings and However, it remains to be seen whether the the Examining Division is obliged to allow claims be the same, provided that a certified changes regarding the scope of protection of the limitation: it has no discretion to refuse. copy of the earlier application is filed within patents will have their intended effect. This is less restrictive than the approach two months. This should help to reduce the previously taken in some national costs incurred in preparing a patent Yohan Liyanage is an associate at Taylor jurisdictions. For example, in the UK, issues application. A further change that will be of Wessing LLP. James Marshall is a partner of good faith and delay could previously particular importance to foreign applicants is at the firm have been taken into account when that a European patent application may now [email protected] considering amendment. be filed in any language, with a certified [email protected] 72 Intellectual Asset Management February/March 2008 www.iam-magazine.com.
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