What has happened since the introduction of EPC 2000?

In Insights, Uncategorized

8 August, 2008

EPC 2000 came into effect on 13 December 2007, as a result of the first major amendment of the European Patent Convention since its introduction in 1973. The most important reasons for the revision were adaptation to and harmonisation with international law (in particular TRIPS and PLT), modernisation and increased flexibility. A result of this was that the EPC became more user-friendly. EPC 2000 contains several provisions that did not exist before.

So what impact have these new provisions had on new European patents and applications? The EPO recently released new statistics on EP applications (covering the period from 13 December 2007 to 8 June 2008). These figures show, among other things, that:

  • Reference filing, which allows applicants to replace the description, any drawings and optionally also the claims by a reference to a previously filed application, has only been used in less then 0.5% of all new applications. However, it is interesting to note that most of the cases in which reference filing has been relied upon are divisional ap-plications. I believe this is a convenient way of making sure that you include everything from the parent application in your divisional application.
  • Central limitation have been requested for almost 50 European patents. That is quite a few in such a short time. Before the entry into force of EPC 2000 there were indications from the EPO that the central limitation proceedings should be fast, even in the range of two months. Of the 49 requests filed up until 8 June only one has been allowed. The allowed request was filed on 20 December, the EPO informed the patentee of the allowance on 16 May and the decision to allow the request was dated 2 July and published on 23 July (as the first B3 publication). Even though the proceedings in this case were a bit longer than two months, I believe that applicants will find this an easy and cost-effective way of customizing their patents after grant. Furthermore, the proceedings will hopefully become quicker, since the allowance in this case seems to have been delayed by a few months due to the fact that the EPO’s technical support for issuing this kind of allowances was not functioning from the start.
  • Central revocation has been requested for 13 patents, but of these 10 had the same applicant and the figures are therefore perhaps not fully illustrative.
  • Late filing of claims has not been used to a great extent by applicants. I hope that this means that applicants realise that they may run into major problems with support in the application as filed if claims are filed at a later stage.

Another new provision in EPC 2000 worth mentioning is the petition for review by the Enlarged Board of Appeal. So far, four petitions for review have been filed (two of these have been filed recently and are therefore not included in the statistics released by the EPO), and the first decision, in case R 1/08, was issued only a couple of weeks ago, on 15 July. The decision reads: “The petition for review is clearly not allowable”. From the reasoning presented by the Enlarged Board of Appeal it seems as if petition for review will be allowed only in exceptional cases, which was what most European patent attorneys anticipated from the start. For example, the Enlarged Board of Appeal states in R 1/08 that “[t]he extraordinary nature of this remedy [i.e. the petition for review] means that the provisions or Article 112a EPC are to be applied in a strictly-limited fashion”. It will be very interesting to follow the outcome of the other three pending cases and of any new petitions, to see what will be required to have a petition for review allowed.

Of course it’s too early for any deep analysis of the impact of EPC 2000, but I venture to argue that it seems that the new EPC provisions work as they were intended. And I also think that the users of the European patent system will benefit from the increased flexibility that the revised EPC affords.

Maria Stenbäck, European Patent Attorney

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