Germany: Status Of Revision Of The European Patent Convention (EPC) And The Draft EU Community Patent

Last Updated: 3 January 2001
Article by Heinz Goddar

1. Forthcoming Regulations

The IP world in Europe, including licensing regulations, is rapidly changing. Some of the new laws and regulations have already come into force, other modifications are to follow shortly. In the following a brief overview will be given with regard to the most important drafts of regulations of this kind, which will affect the world of IP protection and licensing in Europe dramatically.

These are, first, forthcoming changes of the European Patent Convention (EPC), in accordance with a Revision Act approved by a Diplomatic Conference of the EPC member states which took place at Munich during the period of November 20 – 29, 2000. The Revision Act and thereby the revised text of the EPC shall enter into force two years after the 15th member state has deposited its instrument of ratification or accession, or on the first day of the third month following the deposit of the instrument of ratification or accession by the member state taking this step as the last of all of the contracting states, if this takes place earlier.

The next act in this regard is the draft of a European Union (EU) Council Regulation on the Community Patent, which issued, as COM(2000) 412 final, on August 1, 2000.

Both the aforementioned Revision Acts, which with all probability will result in drastic changes of patent protection in Europe to take place within the next few years, will have a heavy influence on licensing in and with Europe, bearing in mind the general importance of the patent system to create and protect licensable technology rights.

In the following, the aforementioned acts will be dealt with in the order as indicated.

2. Planned Changes Of The European Patent Convention (EPC)

Without attempting to be complete, major changes as intended to take place with regard to the European Patent Convention (EPC) will be discussed in the order of, first, more general remarks and then turning to changes concerning certain Articles of EPC which from the viewpoint of the author of this paper will have the greatest importance.

2.1. Relation between the Convention and the Implementing Regulations

Many provisions, like those relating to the manner in which applications filed in languages other than one of the official languages of the EPC (English, French, German), are transferred from the Convention into the Implementing Regulations. By doing so, in future it will be much easier to modify such provisions by qualified majority votes within the Administration Council of EPC, and not necessarily by an unanimous vote of the member states of the European Patent Convention, the qualification rules being laid down in the Revision Act.

2.2. Patentability

According to the revised Articles 52 and 53 of the Revision Act, European patents also in future shall be granted for any inventions in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application (Article 52 (1)).

Article 52 (1) (c) will still exclude patents for computer programs and for methods for doing business as such. Practically that will mean, however, that also in future, in view of the rather liberal practice of the EPO, inventions of the aforementioned kind will be patentable under EPC, provided that in a more or less formal manner technical elements, even in the form of data carrier features, are included into the patent claims.

2.3. Novelty

In Article 54 according to the Revision Act present Article 54 (4) is deleted. That present provision means that prior applications, not yet published at the priority date, until now only are considered as prior art, for novelty only, insofar as a contracting state designated in respect of the later application was also designated in respect of the earlier application as published. The new version will mean that contents of European patent applications in any case, even if there is not an overlap of the designated states, will be considered as novelty destroying, but not, of course, with regard to inventiveness, in which case such prior applications also in future will not play any role at all.

2.4. Designation of States

In future, according to the new version of Article 79 all the contracting states party to the European Patent Convention at the time of filing of a European patent application shall be deemed to be designated. Designation fees are subject of a "may" clause, that means one possibly is envisaging that no designation fees would become payable anymore somewhen in future.

2.5. Limitation (Restriction) and Revocation

According to a new Article 105 (a) suggested by the Revision Act, at the request of the proprietor a European patent may be revoked or limited by an amendment of the claims.

In the past it was not possible to have the proprietor itself requesting revocation of the whole European patent. Also, and even of greater importance, limitation was not possible. Now, with the limitation procedure affecting the whole European patent being possible during the life time of the patent, a procedure which is very similar to the restriction procedure already known e. g. for German patents, it will be possible in future to streamline European patents before starting any litigation, thereby minimizing the risk of invalidation requests being successfully filed, at least partially, against European patents in case of litigation.

2.6. Petition for Review by the Enlarged Board of Appeal

ccording to a new Article 112 (a) any party to appeal proceedings adversely affected by the decision of a Board of Appeal of the EPO may file a petition for review of the decision by the Enlarged Board of Appeal. The petition may only be filed on one of the grounds exhaustively described in the new Article 112 (a), but this "exhaustive" list contains rather broad formulations so that in future the Enlarged Board of Appeal may play a court-like role to supervise the Boards of Appeal of the EPO in a much stronger manner than in the past.

2.7. Regional Agreements

According to a new Article 149 (a) EPC, all of the contracting states or some of them may conclude special agreements on any matters concerning European patent applications or European patents which under the EPC are subject to and governed by national law, particularly in establishing a European Patent Court common to the contracting states party to it, the same applying to agreements under which the contracting states party it dispense fully or in part with translations of European patents into the languages of designated countries, and agreements under which translations of European patents may be filed with and published by the European Patent Office.

The aforementioned provisions will enable e. g. and in particular the European Union (EU) to establish a Community Patent system to be established as a regional part under the ceiling of the European Patent Convention.

2.8. Conference Resolution

The Diplomatic Conference has unanimously agreed on a Conference Resolution by which the Administrative Council and other relevant bodies of EPC are urged to make preparations for another Diplomatic Conference. Proposals for further revision to be discussed at such a next Diplomatic Conference in particular shall relate to software and such changes as are required to implement the forthcoming Community Patent without delay, see below under 3. It is informally intended to have the next Diplomatic Conference taking place towards the end of the year 2001.

3. Draft EU Council Regulation On The Community Patent

The draft EU Council Regulation on the Community Patent (COM(2000) 412 final) of August 1, 2000, suggests a Community Patent under the umbrella or ceiling of the European Patent Convention. In other words, the Community Patent will be embedded into the EPC system as a regional patent. The general idea is, as will be explained in the following based on some specific regulations, to create a Community Patent which takes care of the three main "headaches" which European patents considering some or all of the member states of the European Union still present to the users of the system, namely, in essence, that a) after grant the various national patents resulting from the European patent have to be maintained individually, b) that translations of the European patent into the languages of all designated states where the official language used is not the countries language have to be filed, with tremendous costs, and c) that litigation and invalidation presently in essence are only possible individually (country by country) for the various national patents resulting from a European patent application.

More specifically, the most interesting provisions of the Draft Regulation are discussed in the following considerations:

3.1. Definition of the Community Patent

The forthcoming Community Patent Law will be autonomous and co-exist with national patent laws and EPC. Accordingly to Article 1 of the Draft Regulation, any European patent granted by the European Patent Office for the entire territory of the Community (EU) shall be a Community Patent. The Community Patent is to be issued, transferred, declared invalid or expired only for the Community as a whole.

3.2. Language and Translations

A Community Patent may be filed at the European Patent Office (EPO) in any of the three official languages, no translation of the patent as granted into any language of the European Union (EU = Community) being necessary. Insofar, Article 58 only provides for the patentee to have the option of producing and filing with the EPO a translation of the patent in several or all of the official languages of the member states of the European Union which are official languages of the Community.

The effect of not filing such translations will be restricted to the consequence of a defendant in litigation, where the infringing action took place or the infringer´s location is in a member country where the official language of the patent is not the country´s language, having the argument of defence not to have known the patent until due notification by the patentee, in which case damages could be requested only for the time after such notification. The aforementioned notification will effectively be replaced by the deposition, on a voluntary basis, of translations as mentioned before. It should be duly noted that the translations have not to be filed at the national patent offices of the member states of the European Union, according to the draft regulation, rather at the EPO.

Practically, the aforementioned provision means that the translation requirements as per EPC will be set out of effect for the countries of the European Union. The costs of obtaining a European patent with effect for the whole European community will be drastically reduced thereby.

3.3. Infringement and Validity

A Community Intellectual Property Court (CIPC) shall be established which exclusively, in accordance with Article 30 of the Draft Regulation, deals with questions of invalidity and infringement proceedings relating to Community Patents. Also, negative declaratory actions for non-infringement shall be exclusively dealt with by the CIPC. The CIPC is considered to comprise both a Chamber of First Instance and a Chamber of Appeal Instance. Invalidity claims shall be possible both as counterclaims in infringement proceedings and independently of such infringement procedures.

These provisions, as per Articles 30 ff., of the Draft Regulation, would mean that the national courts of the member countries of the European Union would no longer be entitled to deal with patent infringement matters, even not in a first instance. It is hard to believe at this time whether this ever will become valid. The Draft Regulation leaves it to the discretion and final decision of the governments of the European Union to find a solution. Presently, it seems more likely that first instance patent infringement procedures, even under a Community Patent system, will be dealt with by the national designated patent infringement courts of the member countries of the European Union, with only the appeals being dealt with by the CIPC. Further decisions and developments will have to be waited for, which probably will take place in early 2001 at the latest.

In any case, it will be possible to enforce the Community Patent with effect for the whole European Union, irrespective of whether a centralized Court of First Instance will be established at the CIPC or only a Chamber of Appeal.

3.4. Exhaustion

Article 10 of the Draft Regulation provides for a community wide exhaustion of the rights conferred by the Community Patent. This reflects the case law developed by the European Court of Justice (ECJ) with regard to parallel imports under all sorts of intellectual property rights for the European Union.

3.5. Private Right of Prior Use

rticle 12 provides for a Community Patent not being invoked against anybody who in good faith and for business purposes had used the invention in the Community or made effective and serious preparations for such use before the priority date of the Community Patent. Rather, a private right of prior use, community-wide, will be created, irrespective of whether the use took place in only one member state of the European Union or several.

This provision is of high importance, since presently the situation is rather unsatisfying: A private right of prior use created in one member country of the European Union does not entitle the owner thereof to start using the invention in other member countries, e. g. by exporting into that territory. Accordingly, due to the new provision, a more uniform Common Market will be created.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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