New European Patent Convention in force

Yesterday, December 13, 2007 the revised European Patent Convention (“EPC2000”) came into effect. It simplifies the patent application procedure before the EPO by eliminating unnecessary requirements and generalizes the BEST system (Bringing Search and Examination Together). It further makes the EPC itself more adaptable by transferring detailed provisions of a procedural or administrative character to the Implementing Regulations.

Changes for users
A radical change? No not quite but a considerable one. The new “refinements” of the EPC reflect the demands of the users of the system, the inventors and scientists that ensure continued progress through their work. Patent applications can now be filed in any language, though subsequently (within 2 months) a translation has to be submitted in English, French or German. Moreover, all EPC contracting states are now automatically designated when filing a European patent.

A useful new feature is that patentees also have the right to limit their patent." A new feature is the limitation procedure, which lets proprietors restrict the scope of their patents in central proceedings before the EPO and with effect for all the contracting states.

It will be interesting to see:

* A new limitation and revocation procedure will be introduced. This will provide a way for the owner of a European patent to limit the claims at any time after grant. The question remains what degree of scrutiny will be given to amendments sought under the central limitation (amendment) procedure and how speedily applications for central limitation will be dealt with. We expect amendments to be handled simply, and relatively quickly, at least at the outset

* what consequences will arise when a national court has found infringement but the European patent is subsequently limited (amended) in scope following the new centralized procedure. Such an amendment will be deemed to have taken effect from the date of the grant of the patent. In the UK at least, an injunction granted may be discharged but any award of damages would stand

* the extent to which a consistent approach to post-grant amendment in national proceedings will be achieved in all contracting states. For example, in the UK, the Comptroller / Court will enjoy only an extremely limited discretion to refuse amendments in light of the amended UK requirement that they should "have regard" to any relevant principles applicable under the EPC

* whether second medical use claims drafted in the new form will be construed by the EPO and national courts as having the same scope as the old 'Swiss form' claims. In particular, direct infringement will take place in the country of use, not the country of manufacture;

* how, when construing a patent claim, national courts will interpret the requirement that they must take "due account" of so-called 'equivalents' to elements specified in the claim. The Dutch and German courts, for example, already apply a doctrine of equivalents. The likelihood is that the English Court will not change its current practice at all. The English Court asks the question "what would the skilled person understand the patentee to mean by using the words of the claims". This may or may not result in a broad construction - all depends upon the invention and its context.