Revision of the EPC:The Basic Proposal is Published

The basic proposal for the revision of the EPC has been released end of July after taking into account the results of the discussions of the Committee on Patent Law from 3 - 6 July 2000. This basic proposal will be presented to the Administrative Council for discussion during its meeting from 5 - 8 September 2000. The diplomatic conference where the revision of the EPC is planned to be finalized – at least with respect to a first part – has been scheduled for November 2000.

What are the main amendments of the planned revision of the EPC?

In short, an adaptation to the international agreements related to patent matters will take place to relate the EPC to TRIPs and PLT with respect to formal and material requirements defined by these treaties.

A further major aspect of the coming EPC revision will be the transfer of many regulations from the EPC to its Implementing Regulations. This should lead to a more flexible reaction of the patenting practice of the EPO with respect to changing international needs and trends, because the change of the EPC has to be carried out by a diplomatic conference (with all its time consuming procedures), whereas changes in the Implementing Regulations may be established by the Administrative Council. Therefore, many regulations, especially with respect to procedural items (application and opposition), which are currently in the EPC are transferred to the Implementing regulations, including a broadening of the scope of application of further processing.

A major amendment relates to the possibility of the Enlarged Board of Appeal to decide on petitions for review of decisions of the Boards of Appeal. In contrast to the current practice (where petitions to the Enlarged Board of Appeals may only be raised by the President of the EPO or the Boards of Appeal), this EPC amendment will enable the review of a decision of a Board of Appeal on the basis of a petition of a party, if a fundamental procedural defect occurred in the appeal proceedings or if a criminal act may have had an impact on the decision.

With respect to material law, the exclusion of certain inventions as defined in current Art. 52(2) and (3) will be transferred to the Implementing Regulations, which would have impact mainly on the practice of patenting of inventions in the field of IT. The exclusion of medical treatments and diagnostic methods (current Art.52(4)) will be transferred to Art. 53.

Art.54(4), defining the circumstances under which a published application has prior art effects as prior rights, will be deleted. It follows therefrom that all applications disclosing a specific invention are regarded as novelty destroying for a later application, if the later application has a priority date which is after the priority date, but before the publication date of an earlier application, even if not all contracting states are identical.

The decision practice with respect to the first and second (further) medical use is now also clarified in the EPC by making a respective amendment to Art. 54(5) thereby putting the first medical use on a par with each further medical use in terms of novelty, but without pre- or proscribing the permissible scope of the claims for the first medical use, which will still be defined on a case-law base.

Furthermore, a new, centralized limitation procedure shall be established, where a patent proprietor may limit the scope of his patent for all contracting states.

For the protocol to Art. 69 (Extent of Protection) an amendment is also proposed wherein equivalents and limiting statements of the applicant or proprietor are addressed.

At the aforementioned meeting of the Administrative Council the present proposal is discussed and finalized by the Council for the diplomatic conference which will take place from 26 - 28 November 2000. The second part of this diplomatic conference is scheduled for February 2001.