European Patent Convention

2.2 European Patent Convention

Generally, the articles of the EPC found in the FD1 syllabus are substantively similar to the corresponding parts of the UKPA. Consequently, this section heavily summarises those parts of the EPC and concentrates on highlighting significant differences. EPC procedural timelines can be found in Part 4. The Unitary Patent and UPC are not on the syllabus.

Article 2 The European Patent

• European patents are treated as national patents in contracting states if the appropriate procedures are adhered to for a given state. – See https://www.epo.org/about-us/foundation/member-states.html for a current list of contracting states.

Articles 52-57 EPC are substantively similar to sections 1 to 4A UKPA above:

Article 52 Patentability

1) A patent will be granted for an invention that is new, inventive and industrially applicable, in any field of technology, except… 2) … for the same exclusions as s1(2) UKPA… 3) … as such.

Legal Notes

Interpretation of ‘as such’: • A52 is basically the same as s1 UKPA, but is not subject to the same interpretation (i.e.,

Aerotel / Macrossan). The enlarged board of appeal in G5/83 determined that the exclusions of A52(2) should be treated very narrowly. However, the exclusions are still considered when determining inventive step. In practice, therefore, a similar result is achieved to that in the UK, but using a different logic: – As an example, a business method claim is implemented using a conventional computer. – Under the UK interpretation, the actual contribution (Aerotel / Macrossan test step ii) is a business method and so is not patentable. – Under the EP interpretation, the claim has a technical aspect (the computer) and is thus not a business method as such and so is patentable under the EPO’s narrow exclusions. However, upon consideration of inventive step, the computer by itself is not inventive once the business method as such is discounted from consideration. – The EP interpretation thus appears to be a more logical, step-by-step version of the UK interpretation and explicitly requires a consideration of inventive step, which is only implicit in determining the contribution in the UK test. As such it is arguably more transparent and less open to error.

Article 53 Other exclusions

1) Immoral or contrary to public order (= s1(4) UKPA). 2) Plant / animal varieties and their production (= UKPA schedules). 3) Methods of treatment of the human or animal body (= s4A UKPA).

Article 54 Novelty

1) An invention is new if it does not form part of the state of the art. 2) The state of the art is all matter (including a product, a process or any publication) made available to the public at any time before the priority date of the application. 3) The state of the art (for the purposes of novelty only) also comprises matter from a European patent application having a priority date earlier than the priority date of the invention’s application, but published on or after the priority date of the invention’s application, (if the published matter was also there when originally filed). 4)5) Medical use of a substance and specific second medical uses of that substance are new if the use is new.

Legal Notes

• Subsections 1 to 3 are effectively identical to those of s2 UKPA. • Note A54(3) only applies to EP applications; for example, whilst a German originating EP application with suitable priority and publication dates would be citable under A54(3), an otherwise identical German national application would not fall under A54(3) – but would count as a national prior right for an eventual validation of the patent in Germany under

German patent law. The equivalent UK provision is s77. (In this case specific amendments for that state could be made under A118 & R138 EPC.) • Subsections 4 and 5 above are as subsections 3 and 4 of s4A UKPA. Following decision

G02/08, the scope of ‘new use’ can include the same medicament for a different treatment of the same illness (as opposed to requiring a different illness), such as a change in dosage regime. The decision also ended the use of so-called Swiss-claims. The current form of claim for second medical use is simply ‘Substance X for use in the treatment of disease Y’. • A54(3) applies to the publication of an EP application for all contracting states. For applications filed before 13/12/2007, the old versions of A54(3) and (4) applied in which specific states were designated, and hence required a consideration of ‘overlapping states’ when assessing novelty. However, this scenario is now very unlikely.

Article 55 Non-prejudicial disclosure

• Basically the same as s2(4) UKPA, but of course the filing within six months of breach is with the EPO.

Article 56 Inventive Step

• As s3 UKPA, but of course excluding A54(3) EPC instead of s2(3) UKPA.

Legal Notes

• The determination of inventive step under EP practice uses the problem-solution approach: i. Determine the closest prior art. ii. Determine what features differ from those of the prior art. iii. Determine the technical effect(s) of those features. iv. Derive an objective technical problem solved by the effect(s). v. Given the closest prior art and the objective technical problem, determine whether the person skilled in the art would have arrived at the invention – where appropriate taking account of common general knowledge or any second piece of prior art (which for example may disclose some of the outstanding features) when looking for a solution to the problem – and hence consider the invention obvious. See G-VII.5 of the EPO Guidelines for more details. • The closest prior art generally is in a similar field, has a similar goal and has similar technical features, in roughly that order of significance. • The objective problem should not use knowledge of, or contain pointers to, the solution recited by the claim. This is the tricky bit. • The intent is to provide a consistent method of evaluation and to reduce instances of hindsight when determining whether a claim is obvious in light of prior art. It also has the effect of making such instances easier to spot when they occur.

Article 57 Industrial Applicability

• As s4 UKPA.

Articles 58-62 EPC cover who is allowed to apply for and receive patents:

Article 58 Who May Apply

• Anyone who is considered a natural or legal person. Same as s7(1) UKPA.

Article 59 Multiple Applicants

• An application can be filed either by joint applicants or by two or more applicants each designating different contracting states.

Legal Notes

• In either case the applicants are treated as joint applicants and procedurally are treated as one applicant (A59 and A118 EPC). The application itself is processed as a single entity (though one can amend for different states in anticipation of national prior rights).

Article 60 Who has a Right to a Patent

1) The inventor(s), or (according to national law in the state of employment) preferably their employer – i.e., same as s7(2) UKPA. 2) Where two people independently make the same invention, the right will belong to the first to file it, provided this filing gets published (hence s2(3) UKPA, and A54(3) EPC).

Article 61 Entitlement Proceedings

1) Where entitlement to an EP application is decided by national law (i.e., s12 UKPA), then the newly entitled person can either: a) take over prosecution of the existing application, b) file their own version (treated as a divisional re the filing date, etc), or c) request that the existing application is refused.

Legal Notes

• The equivalent provisions in the UKPA are s8(2)(a), s8(3) and s8(2)(c). • Once a person proves to the EPO that they have begun entitlement proceedings in a national court, the EPO stays (pauses) prosecution of the patent application (R14(1) EPC) and also limits the ability of the current applicant to withdraw the EP patent application or designations (R15 EPC). Note that during this time, renewal fees are not paused (R14(4)

EPC) and should still be paid. Anyone can pay renewal fees. • Providing the EP application has not yet granted, the entitled person has three months from the national law decision to make a request under Art 61 (R14(2) & R16(1) EPC). If this deadline is missed, further processing is not available (R135(2) EPC). • The outcome of the action under Art 61 only applies to designated states that recognise the original national law decision (R16(2) EPC). • If the entitled person chooses to file a new version of the application under A61(1)(b), then the original application is deemed withdrawn on the date of filing the new application in those designated states recognising the original national law decision (R17(1)EPC). The new filing cannot extend the subject matter of the original application (A76(1) & A61(2) EPC).

• The entitled person then needs to pay the filing fee and search fee within one month of filing (R17(2)EPC). The designation (and exam) fees are paid as normal within six months of publication of the search report (R17(3)EPC).

Article 62 Mention of Inventor

• The inventor is entitled to be mentioned. Same as s13(1)UKPA.

Legal Notes

• Rule 19 EPC requires a separate designation of inventor where the applicant is not the inventor, as per Rule 10 UKPA. • The correction of inventors requires the consent of any wrongly designated inventor who is to be removed (Rule 21(1) EPC). Thus if X & Z are named inventors but Y, not Z, actually contributed, then Z’s consent is required to replace her with Y. Meanwhile X’s consent is not required as she was not wrongly designated. In the case where Y is simply a third inventor to be added, then neither X or Z’s consent is needed to add her. See R21 EPC.

Article 68 Effect of (Full or Partial) Revocation or Limitation

• In opposition, limitation, or revocation proceedings, the effects are fully retroactive and binding on all designated states.

Article 69 Extent of Protection

1) The extent of protection conferred by a European patent or application is determined by the claims; however, these are interpreted in light of the description and drawings. 2) Before grant [i.e., between publication and grant], the extent of protection is with respect to the published claims; after grant, the granted claims (or claims amended in opposition, central limitation, etc.) retroactively determine protection conferred by the application, provided they do not extend that protection.

Legal Notes

• Art 69(1) thus provides provisional protection of a scope determined by the published claims. However, A69(2) modifies this by stating that the final protection that the proprietor can enforce retrospectively is that of the granted and settled claims – except where these are broader than the published claims (broadening amendments are possible before grant, providing they don’t add subject matter). Hence if the granted claims are narrower than the published claims, then third parties acting inside the scope of the published claims, but outside the scope of the granted claims, are not liable for any infringement during the period between publication and grant; Conversely, if the granted claims are broader than

the published claims, then third parties acting outside the scope of the published claims, but inside the scope of the granted claims, are still not liable for any infringement during the period between publication and grant (though clearly for periods after grant, they are). • See section 125 UKPA herein for commentary on the protocol on interpretation of Article 69 EPC in relation to the scope of protection and equivalents. Meanwhile, see s69 UKPA for similar provisions regarding the interaction between published and granted claims.

Article 70 The Authentic Text

1)2) … is that of the language (EN, FR or DE) that the application was originally filed in or translated into for prosecution to grant, but 3)4) national translations can be used in a contracting state subject to certain conditions (e.g. see s80 UKPA).

Article 71 Transfer and Constitution of Rights

A European patent application may be transferred or give rise to rights for one or more of the designated Contracting States.

Legal Notes

• Whilst the EP application has unitary effect (A118), A71 recognises that interests in an application can be assigned (transferred) on a country-by-country basis (c.f. A59 above). • Registration of a transfer can be requested by any party having an interest in the transfer, together with evidence of the transfer (R22(1) EPC) and the fee (R22(2)) of €105. The effective date of transfer is when the request, evidence and fee have all been received by the EPO (R22(3)). • Registration of a transfer is also possible during the opposition period or during opposition proceedings (R85 EPC), and is required by the EPO in order to keep track of the valid parties.

Such post-grant transfers typically also require parallel registration in the validated states. • Registration of licences is covered by A73, which also allows licencing to be geographically limited to parts of the territories of the designated contracting states; however, such registration does not continue into the opposition period as it is not relevant to these proceedings. • Transfer of a Euro-PCT can also be recorded with the International Bureau during the international phase (up to 30 months from priority), although the IB does not maintain a register as such. If not submitted at the time, evidence may subsequently be requested by respective national or regional patent offices.

Article 76 European Divisional Applications

1) …are filed at the EPO (in accordance with Rule 36 below), and only in respect of subject matter that does not extend beyond the parent application as filed; the divisional then receives the priority date of the parent.

2) The divisional inherits the designated states of the parent as of the day of filing the divisional.

Rules

R36 1) A divisional can be filed from any pending application. 2) The divisional must be filed in the same language of proceedings as the parent (translating within two months if necessary), and must be filed with the EPO. 3) The filing fee and search fee must be paid within one month of filing. 4) The designation (and exam) fees are paid as normal within six months of publication of the search report for the divisional.

Legal Notes

General: • Note that filing a divisional of a divisional carries an additional fee (R38(4) EPC).

Meaning of ‘pending’ before the EPO: • An application is pending prior to the date that grant is mentioned in the official journal

A97(3), or the date that it is withdrawn. If an application is refused, then G1/09 has clarified that for the purposes of filing a divisional, an application remains pending during the period for appealing a refusal (i.e., two months after receiving notification of a decision to refuse), regardless of whether an appeal is then filed or not.

Article 79 Designation of Contracting States

1) All states are designated by default, but… 2) … each designation is subject to confirmation by payment of a fee within six months of the publication of the search report (R39(1) EPC). 3) A designation can be withdrawn any time up to grant.

Legal Notes

• The search report is usually part of the published ‘A’ spec, but not always. The main ‘A’ spec codes are: – A1 (Application + Search Report), A2 (Application only), and A3 (Search Report only). • Since 1 April 2009, one pays a flat fee of (currently) €610 to designate all states, and payment of individual designation fees is not possible. – Prior to 1 April 2009, one could pay designation fees for up to six specified states. If one paid seven fees, then all states were deemed paid. – The decision whether or not to proceed with a state can be achieved pre-grant using

A79(3) to withdraw a designation. Post-grant it is in principle more difficult to prevent

any unwanted repercussions of grant (see for example s73(2) UKPA). Failing to validate in a state used to be an option, but following the London agreement on translations this is method is no longer practical for many states, including GB. • If you miss the six-month deadline to pay, the application is deemed withdrawn (R39(2)

EPC). In this case, use further processing (A121 EPC) within two months of notification by the EPO of your loss of rights. Recall notification is deemed to occur up to ten days after the

EPO posts / transmits the letter (R126 / R127 EPC – in effect ten days after the date of the notification in the letter).

Article 93 Publication of the European Patent Application

1)a)b) … is as soon as possible after 18 months from priority, but the applicant can request early publication.

Legal Notes

• The UKPA equivalent is s16. • An invalid publication may occur if an application is withdrawn or refused after preparations to publish have been finalised. However, whilst such invalid publication still makes the invention available to the public in the sense of s2(2) UKPA and A54(2) EPC, it does not count for novelty under s2(3) UKPA or A54(3) EPC (recall their purpose is just to prevent double patenting). • Don’t confuse this with just withdrawing the GB designation prior to publication, as such publications still count for novelty in the UK (see s2(3) and s78(5A) above). • A valid publication can of course be cited for novelty under A54(3) EPC, or similarly under s2(3) in the right circumstances (see notes to s2(3) for details).

Article 94 Request for Examination

1) The EPO will examine the application once if a request and fee are submitted. 2) If no request and fee are submitted within six months of the publication of the search report (R70(1)), then the application is deemed withdrawn. 3) If the Examiner thinks the application does not meet the requirements of the EPC, he will invite the applicant to fix the deficiencies or argue against them (as per s18(3) UKPA). 4) If the applicant does not respond in time (typically four months), the application is deemed withdrawn.

Rules

Request for examination R70 1) The applicant may request examination up to six months after the publication date of the search report.

2) If the request for examination was filed before the publication of the search report, then the EPO gives the applicant up to six months after the publication date of the search report to indicate whether they wish to proceed with Examination, and if so, to respond to any issues raised in the search report opinion, and... 3) ...if the applicant fails to reply in time then the application is deemed withdrawn.

Response to the extended European search report (EESR) R70a 1) The EPO gives the applicant the opportunity to comment on the opinion in the EESR and where appropriate invites them to correct any deficiencies, up to six months after the publication date of the search report. 2) In the case given in R70(2) above, or where the EPO was ISA for a Euro-PCT application, the EPO again gives the applicant the opportunity to comment on the opinion in the EESR and where appropriate invites them to correct any deficiencies, up to six months after the publication date of the search report. 3) If the applicant does not comply with or comment on an invitation under subsections (1) or (2) above, the application is deemed withdrawn.

Legal Notes

General: • The UKPA equivalent to A94 is s18. The search report is usually part of the published spec, but not always. See notes to A79 for common A-spec codes.

Deadlines: • If you miss the six-month deadline to request the examination under R70(1), use further processing (A121 EPC) within two months of notification by the EPO of your loss of rights.

Recall notification of the loss is deemed to occur ten days after the EPO posts the letter (R126

EPC – in practice, 10 days after the date of notification in the letter). In this specific case, the further processing fee is 50% of the Examination fee (i.e., around €850) – so don’t be late. • If you miss the six-month deadline to indicate an intent to proceed to examination under

R70(2), again use further processing within two months of notification (+ standard fee of €255). Note you can waive the right to confirm whether to proceed when filing the application. • If you miss the six-month deadline to respond to an invitation to correct deficiencies under

R70(2) or Rule70a(1) or (2), again use further processing with fee within two months of notification. • Note therefore that if you miss a R70(2) communication, you will typically have to pay two further processing fees as it encompasses two separate actions. • Amendment in response to an A94(3) communication cannot add matter; A123 EPC provides similar restrictions to s76 UKPA.

Other invitations: • Note that separately, if the EPO was the international search or examination authority for a PCT application, then after its entry into the EP regional phase a communication issued under Rule 161(1) will require the applicant to respond to outstanding issues in the PCT search or patentability report within six months. See part 2.3 below for more details.

Practice notes

• As a (cheaper) alternative to filing divisionals to accelerate prosecution (see notes to s61 in part 1.1 of the book), one can accelerate the examination process using the EPO PACE scheme. No reason (such as infringement) is required. However, if you then request any time extensions for your own responses, the PACE status is effectively dropped. • A further alternative is to check whether use of the patent prosecution highway (PPH) is possible based upon a recently granted corresponding application, for example from the US or Japan. However, this needs to be requested before examination begins. • Note that as of 1 November 2016, if you withdraw an application before the first exam report is issued under Art 94(3), you receive 100% of the exam fee back. Meanwhile if you withdraw the application before expiry of the deadline for reply to the first Art 94(3) report, you will receive 50% of the exam fee back.

Article 97 Grant or Refusal

1) The Examining Division will grant a suitable application if, within four months of the R71(3)

EPC notification of intent to grant: – grant and printing fees are paid, and – the claims are translated into the other two EPO languages, and in addition dependent upon any of the following where necessary: – any outstanding additional claims fees are paid, – any due renewal fees are paid, and – any due designation fee(s) are paid (c.f. A79 notes). 2) The Examining Division will refuse an application that does not conform with the EPC. 3) The date of grant is the date that it is mentioned in the European Patent Bulletin.

Legal Notes

• Basically, the notification of intent to grant issued by the Examining Division under R71(3) presents the applicant with the text the EPO intends to approve. By paying the grant and printing fees and translating the claims, the applicant is deemed to approve this text. The other fees may arise during the course of normal prosecution, but will need to be paid at grant where this occurs before any normal payment deadline ends. • If one files amendments in response to the R71(3) communication, this is interpreted as disapproving the text and proposing an alternative. Prior to 1 April 2012, it was necessary

to also file a translation of the proposed amendments, so that if the EPO allowed them, then grant could proceed. After 1 April 2012, a new version of R71 and new R71a came into effect that firstly gave legal basis for the Examiner amendments often proposed in the R71(3) text, and secondly stipulated that if the applicant files amendments that are approved, a new

R71(3) is issued. This then avoids the need to file translations of the amendments prior to approval. • On the date of grant, then if validated in the UK the patent has the effect of a UK patent by virtue of A2(2) EPC, enacted by s77 UKPA.

Practice notes

• With regards to refusal under A97(2), the applicant has the right to be heard before the

EPO (A113(1) and A116(1) EPC). Therefore, it is common practice to conditionally request oral proceedings in the event that the Examining Division intend to refuse the application.

This gives the applicant a further chance to fix the application in the eyes of the Examining

Division.

Article 99 Opposition

1) Within nine months of grant, anyone can oppose an EP patent by filing a notice identifying the patent number and the applicant, including a statement of the grounds on which the opposition is based (see A100), and paying an opposition fee. 2) The opposition applies for all states in which the patent has effect. 3) The opponents and proprietor are both party to the proceedings (i.e., fully informed and able to make decisions, e.g. to appeal). 4) Where there are different proprietors for different states (for example under A59, or following entitlement proceedings) they can represent themselves separately in respect of those states.

Legal Notes

• ‘Anyone’ does not include yourself (i.e., you cannot oppose your own patent) – but see

Article 105a below for alternatives. • The opponents are party to the opposition, as is a person who, in response to proceedings for infringement being instituted against them, intervenes in opposition proceedings to make observations under Article 105 EPC. By contrast a person who merely files third party observations under Article 115 EPC is not party to the opposition and is not specifically informed of the eventual decision (though of course this goes on public record), and more significantly cannot appeal it, whereas the parties to the opposition can (A107 EPC). • As with other stages of prosecution, opposition proceedings are suspended if it is shown that third-party entitlement proceedings have begun in a national court (the third party can consent to its continuation, though).

Article 100 Grounds of Opposition

… are that: a) the claimed invention is not patentable under A52-57 above, b) the description is not sufficiently clear to enable reproduction of the claimed invention, or c) the patent contains added matter compared to the original filing.

Legal Notes

• A100(b) is not the same as the A84 EPC requirement for clarity of the protection sought by the claims. Rather it refers to the compact between the state and the patentee to provide protection in return for proper disclosure of the invention. See also the notes to s14 UKPA. • Note that unity is not a ground for opposition, in a similar vein to s26 UKPA. • Note that entitlement is also not a ground for opposition, unlike for revocation under s72

UKPA. This is because entitlement is settled by national laws and so would contradict A99(2)

EPC above that the opposition applies to all states. • The well-known Article 123(2)-(3) trap may occur during opposition on the grounds of added subject matter; if a new feature is added to a claim during prosecution which limits the scope of the claim but is found during opposition to add matter (so contravening A123(2)), then the feature cannot be removed again since this would broaden the scope of a granted claim (so contravening A123(3)). There are only a few specific circumstances where this is a recoverable situation (e.g. see Visser, A123(3), and A123 below).

Article 105a Request for Central Revocation / Limitation

1) The proprietor of an EP patent can request central revocation, or limitation by amendment, of a granted patent upon payment of a fee… 2) … except during opposition proceedings.

Legal Notes

• This provision enables a proprietor to centrally revoke or amend a patent, for example in light of newly discovered prior art, for all national patents arising from EP grant including an EP(GB). • It is basically an administrative service intended to reduce costs for the proprietor. • Opposition proceedings take precedence. If an opposition is filed during a limitation action, the limitation action is terminated and the fee is refunded.

Article 105b Revocation / Limitation

1) The EPO checks whether the requirements for revoking or limiting the application have been met.

2) If the requirements are met then the EPO will proceed; otherwise it will refuse the request. 3) The limitation or revocation applies to all states in which the patent granted, with effect from publication in the EPO bulletin.

Legal Notes

• Basically, a request for revocation is allowed. • For limitation, the EPO assumes patentability and just checks that: – the amendment actually narrows the claims (A123(3)), – the resulting claim scope is clear under A84 EPC, and – the amendment does not add matter (A123(2)). • It does not review any new prior art. • If the limitation does not satisfy the Examiner, the proprietor is set a deadline to resubmit amendments. • Upon limitation, the amended specification is republished by the EPO (Article 105c). • Whilst the revocation or limitation take effect upon publication in the Bulletin, note that both revocation and limitation are fully retroactive (ab initio or ex tunc) – see A68 EPC. Note that this is different to the UK, where post-grant amendment is only retroactive to the date of grant (e.g. see s75 above).

Article 121 Further Processing

1) If an applicant misses a time limit relating to prosecution before the EPO, they may request further processing. 2) The EPO will grant the request provided that the particular time period is not excluded (see subsection 4); the fee is paid; and the omitted act is completed, within two months of notification of the loss of rights (R135(1) EPC). 3) If granted, the legal consequences of missing the time limit are deemed not to have occurred. 4) The following time limits are excluded from further processing: – the 12m priority period for filing; – the 2m for notification and 4m for grounds for appeal; – the 2m for petition to review an appeal; – the 2m for requesting further processing itself; – the period for re-establishment of rights (see Art 122 EPC below); and – the periods listed in Rule 135(2) EPC.

Legal Notes

• The exclusions (including those listed in R135(2) – see Visser or the EPC for details) are singled out for a number of reasons – some provide certainty for third parties, whilst some are excluded simply because other extensions of time are available. Typically, these other

extensions themselves are then also excluded from further processing, such as for example the six-month grace period for late payment of renewal fees in R51(2) EPC.

Article 122 Re-establishment of Rights

1) If despite all due care an applicant misses a time limit relating to prosecution before the

EPO, and this directly leads to loss of rights in the patent application, then they may request to have their rights re-established. 2) The EPO will grant such a request provided that the particular time period is not excluded (see subsection 4); the fee is paid; and the omitted act is completed, within two months of the removal of the cause of non-compliance and within 12 months of the missed time limit. 3) If granted, the legal consequences of missing the time limit are deemed not to have occurred. 4) The following time limits are excluded from re-establishment: – the time limit for re-establishment itself; – failure to attend oral proceedings; – the periods listed in Rule 136(3) EPC. 5) A person (in a designated state) who in good faith begins or makes serious and effective preparations to begin using the invention within the period between the loss of rights and publication of the re-establishment of those rights may continue to do so. 6) Contracting states may provide their own re-establishment for non-observance of EPC time limits relating to prosecution before the respective national office.

Legal Notes

• The all due care requirement typically requires proof of a one-off error in an otherwise properly working reminder system, or an instance of force majeure; lack of care can arise from both the applicant and their representatives. • A time limit within the sense of Art 122 (and indeed Art 121) is a convention or EPO stipulated period for completing a procedural act. Consequently, failing to complete acts which the applicant can choose to do within another period of time (such as filing a divisional whilst the patent is pending) are not regarded as missed time limits in this sense and cannot make use of re-establishment. • Subsection 5 provides third-party rights in a similar manner to s20B(4) UKPA. • Subsection 6 accounts for the fact that subsection 1 relates to the EPO, but there are provisions in the EPC for national offices too, such as a request for conversion to a national application under Art 135(2) when a national office refuses to forward a filing to the EPO for national security reasons.

Article 123 Amendments

1) A European patent application can be amended after receipt of the search report (R137 EPC), (e.g. in response to the European search report – R70a EPC, or to the international

search report where the EPO was ISA – R161 EPC); in any event, the applicant is also entitled at the same time to one amendment of their own volition. 2) Neither the application nor the patent may be amended in such a way that it contains subject matter that extends the content of the application as filed (c.f. s76(2) UKPA). 3) The patent may not be amended in such a way as to extend the protection it confers (c.f. s76(3) UKPA).

Legal Notes

General: • Whilst one cannot amend the application before receipt of the search report, there are specific provisions to file missing subject matter before this (R56, 58), and to correct obvious errors.

See s15(5-8) and R18 UKPA for the equivalent UK provisions.

Added matter: • For the purposes of subsection (2), note that the abstract is not part of the application, and neither are the contents of any priority document – see the tables at the end of this book for more details of permissible amendments. • Amendments should be directly and unambiguously derivable from the content of the application as filed.

Article 123(2)-(3) trap: – This trap occurs when the scope of a claim is narrowed by an amendment that uses added subject matter (impermissible under Art 123(2)) but is then granted, since undoing this amendment after grant would then broaden the claims (impermissible under Art 123(3)); the result is an intractably invalid patent. • There are a limited set of circumstances in which you can escape this trap (EBA decision

G1/93): – replacing the amendment with a more narrow but supported feature; – where the term does not actually limit the scope of the claim (e.g. a term has a labelling function but not a technical one within the claim – i.e., not one that influences the technical solution to the technical problem – T384/91)); and – in certain circumstances, a disclaimer that limits the scope of protection by excluding from protection part of the subject matter as filed – see Visser for more details. • It is worth noting that there is a similar trap between s76(2) and (3) in the equivalent UKPA provisions.