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 absenceof 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 limitsare 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 becausethe 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was restricted to use in respect of missed time limits set by the Office which led to an application being deemed withdrawn.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

Convention in order toalign it with international treaties and Community legislation. In addition, Article 87 (5) EPC now simplifies the procedure for recognising new sources of priority rights through the issue of a Presidential Communication. New Article 149a EPC provides for future agreements between the Contracting States and for the EPO’s involvement in them, such as the formation of a common entity for delivering opinions on European and harmonised national patent law. New Article 4a EPC createsa basis for future intergovernmental conferences of the Contracting States leading to agreements beyond the scope of the EPC, along the lines of the ad hoc intergovernmental conferences in 1999 and 2000 which gave rise to the London Agreement on Translations and the European Patent Litigation Agreement. All these changes introduce much-needed adaptability into the EPC.

Probably the most noticeable change, however, is the transfer of many of the more detailed provisions of European patent law into the Implementing Regulations. This will make future revision of the EPC far easier since the Implementing Regulations can be amended by the Administrative Council without the need for a full diplomatic conference followed by national ratification. As a practical matter, however, this means that practitioners will need to refer to the Implementing Regulations much more frequently than in the past.

It is to address this need that this book has brought together the text of the EPC articles and the relevant rules, allowing the provisions to be read at once in their proper context without the need to thumb through separate pieces of legislation. The book also extensively cross-references other relevant articles and rules in the EPC and related legislation, enabling practitioners to take their enquiries further where necessary.

The transfer of so many provisions into the Implementing Regulations has resulted in the complete re-numbering of the rules. Undoubtedly, practitioners will soon become accustomed to communications setting out a proposed text for grant under new Rule 71 (3) rather than old Rule 51 (4) or to notifications of loss of rights under new Rule 112 (1) as opposed to old Rule 69 (1). For the foreseeable future, however, it will remain essential to be able to identify corresponding provisions under the old and the new law, particularly when referring to case law decided before the coming into force of the EPC 2000. This book attempts to facilitate this by noting the corresponding provisions under the old law whenever the text of a new rule is printed.

The commentary in this guide is limited to short discussions on how the various provisions of the new EPC interact, together with brief remarks on relevant decisions of the Enlarged Board of Appeal. Rather than providing detailed discussion of case law and practice, the commentary refers to relevant sections of the Case Law of the Boards of Appeal of the European Patent Office (Fifth Edition, 2006), and the new Guidelines for Examination in the European Patent Office (2007), issued by the EPO to accompany the new EPC. The limited references to national law are based on National Law Relating to the EPC (13th Edition),published by the EPO. For more detailed treatment of these topics, readers should refer to practitioners’ works such as the Chartered Institute’s own European Patents Handbook, published by Sweet & Maxwell.

I would like to thank Dave Bradley, the chairman of CIPA’s Textbooks and Publications Committee, for his enthusiastic encouragement in taking this book forward and Iain Ross of the Chartered Institute for all his assistance in the typesetting. Most especially, however, I would like to thank my wife, Angela, for all her assistance in checking and editing the book and her unending support throughout the entire project. Any errors are of course entirely my own.

Nicholas Fox, Midsummer’s Day 2007