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Preface to the First Edition The EPC 2000 is the first major revision of the European Patent Convention in over 30 years. Its reforms are wide-ranging and significant. They draw on elements of the past and present in remaking the European patent system for the future. The past has provided much of the impetus for change. The limitations of the original Convention have become apparent over the years since the EPO opened its doors in 1978. The fact that patent proprietors resorted to opposing their own applications revealed the desirability of some form of centralised post-grant amendment system. Although the Enlarged Board of Appeal decision in G9/93 prohibited such self-oppositions, the lack of a suitable post-grant amendment procedure remained. Moreover, the absence of an effective means of correcting Board of Appeal decisions tainted by serious procedural defects or criminal acts was apparent from the facts leading to the Enlarged Board of Appeal decision in G1/97. The new EPC 2000 addresses these failings by providing for post-grant limitation and revocation (see new Articles 105a-c EPC) and petitions for review (see new Article 112a EPC). Experience has also shown the limitations of the mechanisms for re-establishing rights when time limits are missed. Restitution under Article 122 EPC has always been difficult to obtain due to the strict requirement to show that “all due care” was taken. However, applicants were often forced to rely on the stricter restitutio provisions for minor omissions because the simpler further processing procedure was restricted to use in respect of missed time limits set by the Office which led to an application being deemed withdrawn. The revised EPC strikes a new balance by making further processing available in respect of almost all time limits during prosecution, while retaining re-establishment of rights under Article 122 EPC as a backstop. Historic problems arising from the lack of attorney-client privilege for correspondence between professional representatives and their clients, as highlighted in Bristol-Myers Squibb v Rhône Poulenc Rorer (Southern District of New York, 21 April 1999), have been addressed by providing for such privilege under new Article 134a EPC, as supplemented by new Rule 153 EPC. These measures are aimed at protecting client correspondence from disclosure in U.S. court proceedings. Recent trends have also made changes necessary in order to bring the Convention into line with modern international patent law and treaties. The amended definition of patentable inventions in Article 52 EPC, which now refers to inventions “in all fields of technology,” harmonises this aspect of the EPC with the definition in the first sentence of Article 27 (1) of the TRIPS agreement. Similarly, the definition of priority right in Article 87 EPC has been amended so that priority can be based on filings in WTO countries as well as on filings in countries party to the Paris Convention, as provided by Article 2 of TRIPS. Of equal importance are the amendments to Articles 14 and 80 EPC and Rules 40 and 56 EPC, which align the EPC with corresponding provisions in the Patent Law Treaty 2000. When the EPC 2000 comes into force, these amendments will enable applicants to file European patent applications in any language and obtain a filing date by merely providing a reference to an earlier application. In addition, if parts of an application are missing on filing, an applicant can make good the omissions and retain the original filing date by showing that the omitted parts appeared in an earlier application from which priority is claimed. The Convention has also been revised with an eye to the future. Most notably, under amended Article 33 (1)(b) EPC, the Administrative Council may make changes to the v
