1 YEARS 2 WEICKMANN & WEICKMANN 8 0 8 125 0 2 JAHRE 7 Patentanwälte European Patent Attorneys · European Trademark and Design Attorneys

DIPL.-ING. H. WEICKMANN (bis 2001) Newsletter DIPL.-ING. F. A. WEICKMANN No. 2007/01 DIPL.-CHEM. B. HUBER (bis 2006) DR.-ING. H. LISKA DIPL.-PHYS. DR. J. PRECHTEL DIPL.-CHEM. DR. B. BÖHM DIPL.-CHEM. DR. W. WEISS DIPL.-PHYS. DR. J. TIESMEYER DIPL.-PHYS. DR. M. HERZOG DIPL.-PHYS. B. RUTTENSPERGER DIPL.-PHYS. DR.-ING. V. JORDAN DIPL.-CHEM. DR. M. DEY DIPL.-FORSTW. DR. J. LACHNIT LL.M. DR. U. W. HERBERTH * DR.-ING. H.-J. TROSSIN * Rechtsanwalt

Revision of the European Patent Convention / EPC 2000

The revised European Patent Convention termed EPC 2000 will enter into force on December 13, 2007, at the latest. The motivation for this revision was the need to modernise the system and provide for more flexibility and deregulation for future revisions, to adapt the Convention to TRIPS and PLT as well as to better comply with the EPO’s and its users’ needs. To accomplish these goals, three major groups of changes were included in the new legislations:

1. A first group of changes, to be more precise the vast majority of the changes, concerns the displacement of regulations from the articles of the European Patent Convention, i.e. the actual EPC, to the Implementing Rules. This is an important step enabling the European Patent Organisation to keep the EPC a flexible and modern law. You may remember that the EPC as such may be amended only by a Diplomatic Conference of the governments of all Contracting States, whereas the Implementing Rules may be amended by the Administrative Council.

2. A second group of changes made to the EPC represents a codification of the jurisdiction of the Enlarged Board of Appeal and the permanent jurisdiction of the Boards of Appeal of the (EPO). Further, harmonisations with the regulations in TRIPS and PLT are included. These amendments, however, do not change the practice of the EPO. Codified as articles of the EPC 2000, these regulations provide, however, a greater extent of legal security for the applicants.

a. Art. 52 (1) EPC 2000 states that European patents shall be granted for inventions in all technical fields, thereby excluding methods for conducting business from patentability. This article is in correspondence with Art. 27 TRIPS.

Postfach 860 820, 81635 München, Deutschland, Tel. (089) 45563 0, Fax (089) 45563 999, [email protected] - 2 -

b. Art. 122(4) EPC 2000 provides that a request for re-establishment of rights may not be filed if the applicant has failed to observe the time- limit set for filing a request for re-establishment of rights.

c. Art. 54(4) EPC (current version) has been deleted. This implies that an earlier, non prepublished European Patent Application is prior art according to Art. 54(3) EPC effective for all designated countries of a younger European Patent Application.

3. Finally, a third group of amendments concerns actual changes of the EPC:

a. Art. 87(1) EPC 2000 provides that priority may be claimed not only on the basis of an application filed in a member state of the Paris Convention, but also on the basis of an application filed in any member state of the World Trade Organisation. This allows e.g. to claim priority from an application filed in Taiwan.

b. Art. 88 EPC 2000 allows for either claiming priority or correcting a claim to priority within 4 months of filing of the application and within 16 months of the first claimed priority date. In spite of such possibility, we recommend to claim priority already when filing the application.

c. According to Rule 53(3) of the Implementing Rules, a translation of the priority document needs only to be filed if the validity of the claim to priority is of relevance for patentability and upon request of the EPO.

d. Art. 122 EPC 2000 in connection with Rule 136 allows for re- establishment of rights concerning the term for claiming priority.

e. Art. 14(2) EPC 2000 provides that a European patent application may be filed in any language. Within a period of 2 months after the filing date, however, a translation into one of the official languages of the EPO, i.e. German, English or French, has to be filed (Art. 14(2) and Rule 6(1) EPC 2000). This translation may be brought into conformity with the application as originally filed throughout the proceedings before the EPO.

f. Art. 80 EPC 2000 and Rule 40 of the Implementing Rules restrict the absolute requirements for European patent applications to a request to grant an EP patent (no special requirements as to the form of the - 3 -

request), provision of particulars of applicant and a description of the invention or a reference to a prior application. This means that it is not necessary to include claims to the patent application upon filing, although in view of possible problems with Art. 123(2) EPC it still is highly recommended to file claims with the application. Instead of the description of the invention, a reference to a prior application in any language (subject to subsequent filing of a translation) and at any intellectual property office can be made (subject to stating application date and number of the prior application and the respective patent office, as well as later on filing a certified copy of such prior application). g. After filing an incomplete application at the EPO and claiming priority from an earlier application, Rule 56 (3) of the Implementing Rules provides the possibility to supplement such incomplete European patent application within 2 months after the filing date as long as the missing parts were contained in the priority application and certain other requirements are fulfilled within the pertinent time limit. The application date remains unchanged is such case. h. Art. 54(3) EPC 2000 establishes use limited product claims for second and further medical uses for known substances (instead of the Swiss-type claims of the present practice of the EPO). i. According to Art. 105a(1) EPC 2000, the proprietor now may request that the European patent be revoked or limited by an amendment to the claims during the complete term of the patent. The request, however, may not be filed while opposition proceedings in respect of the patent are pending. j. Art. 112a (1) EPC 2000 provides that a decision of a Board of Appeal may be reviewed by the Enlarged Board of Appeal upon a petition of the adversely affected party. The petition, however, may only be filed upon a very restricted number of reasons. k. According to Art. 124(1) EPC 2000, the EPO may ask the applicant to provide information on prior art taken into consideration in parallel patent proceedings. Although this new regulation is not comparable to the duty of disclosure of e.g. the US patent law since no legal consequence is provided in case that the provision of prior art is incomplete, a complete failure to reply to a corresponding request of the EPO will deem the patent application to be withdrawn. - 4 -

l. At first sight the request for further processing according to Art. 121 (1) EPC 2000 is much more liberal than the now valid regulation since in future further processing will be available with regard to the failure to observe legal as well as EPO set time limits. However, Art. 121(4) EPC 2000 imparts a number of important restrictions to the possibility to request further processing. E.g. time-limits to claims priority, for lodging an appeal and for requesting the review by the Enlarged Board of Appeal, for filing a request for further processing and for filing a request for re-establishment of rights are not subject to further processing. In most of these cases, however, other remedies like a request for re-establishment of rights are available.

m. As far as professional representatives are concerned, Art. 134a(1)d EPC 2000 in connection with Rule 153 of the Implementing Rules now explicitly provide an attorney-client privilege for all communications between the client and its representative.

In connection with the above cited points 3 e, i and j, you may remember that

- also German patent applications may be filed in any language (in contrast to the EPC 2000 the German Patent Law requires the filing of a certified translation into German within three months of the filing date)

- also the German Patent Law provides for the possibility to limit a patent by an amendment to the claims ; and

- also the German Patent Law provides for the possibility to have appeal decisions of the Federal Patent Court reviewed by a further instance, namely the Federal High Court, albeit also only upon a very restricted number of reasons.