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THE REVISED EUROPEAN PATENT CONVENTION (EPC 2000)

Under the European Patent Convention (EPC), a single European patent application designating up to 34 contracting states can be filed and prosecuted up to grant. The granted patent must then be "validated" in every contracting state where protection is sought. A revised EPC, usually referred to as "EPC 2000" because it results from a diplomatic conference held in the year 2000, comes into force on the 13th of December 2007. It applies to European applications filed on or after this date, and most of it applies also to pending applications (for procedural steps that have not yet been taken); some provisions will also affect European patents that have already been granted and validated.

Main changes in substantive patent law If a second or further medical use is found for a product that was already known for its therapeutic properties, such second or further medical use can now be protected by a product claim such as "Product X for the treatment of disease Y". The EPC 2000 explicitly contains a reference to the in relation to patent infringement, saying that for determining the extent of protection "due account shall be taken of any element which is equivalent to an element specified in the claims". Earlier European applications, still unpublished when a subsequent European application is filed, will now be prior art for the subsequent application (but for only), regardless of the designated contracting states. This change does not affect European applications filed before the 13th of December 2007: for these the old EPC applies, and the prior art effect of earlier European applications is limited to the overlapping designated states. It is now possible to file a European application claiming priority from an earlier application filed in or for any member of the WTO, in addition to members of the Paris Convention.

Main changes in procedural law Most of the changes in procedural law make more flexible the requirements for the applicant, and simplify the remedies in case of failure to meet some time limits. For example, it is now easier to obtain a filing date. The application can be initially filed in any language and a translation into English, French or German may be provided later; or it can even be filed by reference to an earlier application, without providing the text on filing. Some requirements during prosecution have been removed, such as the need to file a translation of the priority document; this translation will be required only if the validity of the priority claim has to be assessed during proceedings before the EPO. The correction of certain errors or defects in the application is also made easier.

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In exceptional circumstances it will be possible to file a European application after the priority year (up to 2 months later) and still validly claim priority from an earlier application. However, the applicant must show that such late filing was due to an error which occurred in spite of all due care having been taken, so this cannot be used to delay the filing of applications beyond the end of the priority year.

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Voluntar y limitation of the granted European patent Limitation of the patent protection by an amendment of the claims can now be requested centrally before the EPO at any time after grant, and the limitation will be effective for all states in which the patent is in force. The EPO will not examine the patentability of the new claims, but only check if the amendments proposed by the proprietor are indeed a limitation and don't contravene the other requirements of the EPC. The limited patent must also be validated. The patent proprietor may want to limit the protection, for example, in order to take into account newly found prior art that casts doubts on the validity of the patent as granted. The new EPC also explicitly states that in proceedings before national courts the proprietor of the patent has the right to limit the patent by amending the claims. The new provisions on limitation apply to all European patents, even those that were already granted and validated before the EPC 2000 came into force.

EPC Contracting States

Austria (from 01/01/2008) (from 01/01/2008) Ireland

EPC Extension States

Albania The former Yugoslav Republic of Macedonia

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Feel free to contact us for any further clarification, and please bear in mind this sheet is purely for information purposes and does not constitute legal advice.

ZBM Patents – Zea, Barlocci & Markvardsen December 2007

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