As the European Patent Convention is the legal basis of European patent organizations and their executive bodies, the patent laws of the parties to the European Patent Convention and the examination procedures of the European Patent Office will also change due to the revision of the European Patent Convention. In this revision, a number of detailed provisions of the European Patent Office on the examination and approval procedures were moved from the European Patent Convention to the Implementation Rules, so that the European Patent Office can adapt to the changes in the examination and approval procedures, maintain the friendly user service interface in the past, and benefit applicants and patent application agents.
The following are some major revisions of EPC2000 and their possible impacts on European patent practice.
Patentability of invention
Paragraph 52 1 of EPC2000 stipulates that "any invention in all technical fields shall be granted a European patent if it is novel, creative and industrial." There is no substantial difference between the above wording and the wording of Article 52 1 of the European Patent Convention (Article 52 1 of the European Patent Convention stipulates that any creative and industrial new invention shall be granted a European patent), but in order to be consistent with Article 27 1 (the first sentence) of the TRIPs Agreement, it is clearly pointed out that the European patent is protected. However, the European Patent Office has indicated that the introduction of "all technical fields" will not change the current practice that computer software and business methods cannot be patented.
EPC2000 retains the provisions on patentability exclusion and exception in Article 52 and Article 53 respectively. It is worth noting that paragraph 524 of EPc (paragraph 52.4 of EPC), that is, surgical operation or treatment methods applied to human or animal bodies, and diagnostic methods applied to human and animal bodies, should not be considered as the invention mentioned in the first paragraph that can be applied in industry. This clause does not apply to products using the above methods, especially substances or synthetic products, and it has been moved to 53c of EPC2000. Although this content has not been modified, it reflects the subtle changes in the patentability concept of treatment-related methods. In EPC2000, any surgical or therapeutic methods and diagnostic methods applied to human or animal bodies still do not belong to the patentability of European patents. Since most of these patent applications may belong to the definition of patentable inventions in clause 52. 1 of /XEPC, in order to respect public health and relevant policies, EPC2000 currently classifies such patent applications as patentable inventions from the exclusion of previous inventions, and regards the lack of industrial practicability of the patent applications as legal fiction (legal fiction refers to the assumption made by the court according to facts as the basis for ruling legal issues). Legal fiction is mainly made in the process of judicial reasoning to change the application of a certain legal rule. ) rejected the patent application for this method. In addition, like EPc clause 524, EPC clause 53c is not applicable to products using the above methods, especially substances or synthetic products. Therefore, the slight changes in Articles 52 and 53 of EPC2000 will not have a significant impact on the current European patent practice.
Novelty and prior art
Like the patent law system of other countries in the world, the European Patent Convention also adopts the principle of novelty to judge whether a patent application belongs to the scope of existing technology, such as Article 54, paragraph 2 of the European Patent Convention (the existing technology in Article 54, paragraph 2 of the European Patent Convention shall be regarded as including the contents known to the public through written or oral statements before the filing date of the European patent) (Articles 54 1 and 54 2 of the European Patent Convention No.2000 retain the same expressions of the corresponding provisions of the European Patent Convention). Generally speaking, there is no grace period for novelty of inventions that are known to the public before the filing date (or priority date).
In order to avoid duplication of patent authorization, Article 54, paragraph 3, of the European Patent Convention stipulates that the European patent (i.e., the European prior right) applied earlier, even if published on or after the filing date of the latter application, will constitute the "existing technology" of the latter application, making the latter application lose its novelty. However, Article 54.4 adds that this provision only applies to countries where both applications are designated. Paragraph 54.3 of EPC2000 stipulates that a European (or European-PCT) patent application with a prior priority date has the same public theme as a European patent application submitted later, and the public date is later than the filing date of the latter patent application, which is regarded as the loss of novelty of the latter patent application, but it does not affect its creativity.
Before the amendment, according to Article 54.4 of the European Patent Convention and Article 23a of the Implementing Rules, the prior European patent application only constitutes the prior art of the latter application in the same designated contracting state after paying the designated country fee. This provision has two negative consequences.
First of all, considering the different existing technologies in different countries, patent applications can put forward different claims in different designated countries. Second, because the designated country fee can be paid within 6 months after the publication of the search report at the latest, it is still uncertain whether the earlier application constitutes existing technology after the earlier publication, which leads to legal uncertainty. Therefore, in order to eliminate this confusion, EPC clause 54.4 was deleted from EPC2000. According to article 54.3 of EPC2000, for the subsequent application with the same disclosure theme as the previous application filed in all EPC contracting states (not limited to the contracting states designated by the earlier application and the later application), the European patent application filed earlier and effectively published constitutes prior art because of its novelty.
For European patent applications (including European PCT applications) and European authorized patents that are in the effective pending period on or before the effective date of EPC2000, paragraph 3 of Article 54 of EPC2000 has no retrospective effect.
Patent application related to treatment
Paragraph 54.5 of the European Patent Convention stipulates that an applicant may file a patent application for a known substance or composition used for the first time or for the second time in a method related to treatment, surgery or diagnosis, so as to damage the patentability of the above-mentioned method, which is reserved in paragraphs 54.4 and 54.5 of the European Patent Convention.
Paragraph 54.4 of EPC2000 stipulates that the surgical operation or treatment methods for human or animal bodies and the diagnostic methods for human and animal bodies specified in paragraph 53c of EPC2000 should not be regarded as industrial inventions. This provision does not apply to products using the above methods, especially substances or synthetic products. ) The known substances or compositions used in other methods are not within the scope of the prior art, so the title of the first medical indication claim can be expressed in the language stating the expected therapeutic purpose, such as "Composition X is used as medicine".
Prior to this, the second or further medical use of any newly discovered known substance or composition is protected by the language of Swiss-style claims. This revision strategically expands the standard of novelty, and puts the use of known substances or compounds into the category of novelty "for special new and creative therapeutic applications". Due to the lack of consistency between the national laws of most EPC contracting parties and EPC in recognizing the claims of secondary medical use, paragraph 54.5 of EPC2000 aims to coordinate the practices of contracting parties in such claims, so that such method patent applications are no longer excluded from the patent laws of various countries.
Paragraph 54.5 of EPC2000 stipulates that the special use of the substance or composition mentioned in paragraph 54.4 in the method mentioned in paragraph 53c conforms to the patentable claim, as long as the use is novel, such as "Composition Y is used to treat Z". In this claim, composition Y is a known drug, and it is not specially used for treating Z. However, we still need to be cautious about such applications before the Appeal Board of the European Patent Convention and the court of the contracting state work out a solution to the difference between the old and new claims for secondary medical use. In addition, paragraph 54.5 of EPC2000 only applies to the new uses of known substances or compounds, and does not apply to the new uses of known equipment in such methods. For European patent applications (including European PCT applications) that were not authorized before the entry into force of EPC2000, the amendment has retrospective effect.
Interpretation of patent application claims
Article 69 of EPC2000 stipulates that the scope of protection granted by a European patent or a European patent application (including a European PCT application) depends on the content of the published claim, but the claim shall be interpreted by using the invention specification and drawings. In order to further clarify the relevant interpretation of the claims, EPc2000 added a supplementary interpretation protocol to Article 69 as a guiding principle for the interpretation of the claims, which is conducive to coordinating the relevant interpretation of European patent claims by the courts of EPc contracting States, giving the patentee fair protection and providing reasonable legal certainty for third parties.
For many years, the legal framework for the interpretation of patent application claims by the European Patent Office is not in harmony with the national justice of EPc contracting parties. At present, the European Patent Office also admits that in the Supplementary Interpretation of Article 69 of EPc2000, EPC parties have not reached an agreement on the interpretation of patent application claims. In order to promote the smooth development of this process, the concept of equivalence is introduced in Article 2 of the Supplementary Interpretation of Article 69, which requires the courts of all contracting States to give due consideration to any claim that is regarded as equivalent to the claim. However, at present, the diplomatic conferences of member States have not reached a consensus on the definition of "reciprocity". Therefore, the lack of a binding definition will pose a threat to the efforts of all parties to unify the interpretation of European patents in the member States of the European Patent Organization.
Priority requirement
In order to make the priority confirmation standard of the European Patent Office consistent with the TRIPs Agreement, EPC2000 No.871B stipulates that a European patent application can enjoy priority within 12 months after the first application, as long as the basic application is filed in any member country of the World Trade Organization, even if the country is not a member country of the Paris Convention.
The substantive revision of the priority form requirement is partly due to the frequent use of electronic communication by patent offices in various countries. EPC2000 stipulates that only when there are serious doubts about the validity of the priority, the applicant is required to translate the priority document into the official language of the European Patent Office. If the applicant fails to provide a complete priority statement when submitting the European patent application, it will no longer be a decisive disadvantage to the expected priority. However, it is still a "better" choice for the applicant to submit the detailed materials of priority when submitting the application and submit the relevant supporting documents to the European Patent Office within 16 months from the initial priority application date.
According to article 122 of EPC2000, if the applicant fails to file a European patent application within the priority period stipulated in the Paris Convention, the patent application can be remedied through right reconstruction. Of course, the applicant must fully meet the "almost harsh" strict standards in order to effectively resume the patent application.
Agent-customer privilege
In the business related to European patent application and authorization, European patent agents and customers will exchange some confidential information, which must be kept strictly confidential. In view of the necessity of information confidentiality, EPC2000 granted a permanent privilege to European patent agents, forbidding the disclosure of correspondence with customers, and stipulated that this privilege was applicable to all procedures of the European Patent Office.
This evidence-based privilege applies to any documents and materials related to the patentability evaluation of inventions, the preparation of European patent application documents, the implementation of the application, and any proposal documents related to the validity and protection of European patents or the scope of infringement.
Intermediate restriction program
Articles 105b and 105c of EPC2000 stipulate that the patentee has the right to submit an application for unilateral restriction or withdrawal of an authorized European patent to the European Patent Office at any time (from the date of patent authorization recorded in the European Patent Bulletin), without providing the European Patent Office with relevant information on prior rights. Restricted European patents shall be published by the European Patent Office. The intermediate restriction procedure is beneficial for the patentee to substantially modify the European patent that may be invalid at the level of the European Patent Office.
The intermediate restriction procedure (article 105a-c of EPC2000, article 90-96 of the detailed rules for implementation) is added and modified at the request of the patentee to withdraw or introduce the modification and exception of the claim restriction, and to modify the patent specification and the drawings of the specification. The patentee may file an application with the European Patent Office at any time after the patent is granted, except during the objection procedure. In addition, the restriction procedure of the European Patent Office does not take precedence over the ongoing national procedure, especially the withdrawal procedure. If the national court makes a withdrawal decision, the pending period of the final decision of the European Patent Office will lag behind.
EPC2000 imposes strict restrictions on the patentee's modification of the claim: the patentee must modify the claim according to the substance, not just the superficial text, which meets the concise and clear requirements of Article 84 of EPC2000 and the strict requirements of Article 1 23 of E PC2000 on the subject of the claim. However, the intermediate restriction procedure does not require the European Patent Office to substantially examine whether the revised claim meets the patentability requirements in Articles 52-57 of the European Patent Convention. In addition, if the European Patent Office rejects the intermediate restriction or withdrawal request put forward by the patentee, the patentee may not appeal against it.
Restrict claim
Article 1 38 of EPC2000 stipulates that the patentee has the right to restrict European patents by himself in the national invalidation procedure, so as to construct and coordinate the practice of restriction procedures in EPC contracting countries. The revised patent application claims will serve as the basis of the national stage examination and approval procedures. However, if the state judicial organ thinks that the patent holder's restricted claim is not enough to restore the effectiveness of the patent, it will reject the amendment and demand that the patent be restricted or withdrawn again.
Submit a request for review to the expanded China Appeal Board.
EPc stipulates that even if any party thinks that there is a principled procedural violation of its rights, it has no right to request the expansion of the Appeal Board to review the decision of the Appeal Board. Therefore, the relevant decisions of the Appeal Board of the European Patent Office are also exempt from review in EPc contracting States.
Article 1 12a of EPC2000 and Article104-10 of the detailed rules for implementation give patent applicants, patentees and affected parties limited rights to further judicial review of the decision of the Appeal Board. The complainant may apply to the expanded appeals committee, but only for certain specific reasons, including procedural errors in principle and criminal acts in the process of making resolutions. In principle, procedural errors should be substantial. For example, if the selection of members of the Appeal Board conflicts with the case under trial, one party will hinder the comprehensive trial of the case and cause serious damage to the other party's right to hearing (EPc considers the right to hearing extremely important, which is stipulated in EPc Articles 1 13 and EPC Article13 of EPC2000). Only the above-mentioned criminal acts confirmed by a national court or institution at a certain level can constitute a valid reason for applying for review to the expanded appeal board. Once the above-mentioned criminal acts are found to violate the relevant provisions of the criminal law, the judgment is equally valid in the designated state party.
The litigants have no right to request the enlargement of the Appeal Board to examine whether the Appeal Board correctly applied the substantive law of the European Patent Convention in the preliminary procedure. Therefore, this request has no suspensive effect on the previous (defective) judgment. In this way, before the request announced by the expanded Appeal Board is finally appealed, the withdrawn patent is still regarded as withdrawn, and the third party with good reputation who uses the invention can continue to use the patent without paying royalties or fines. If the application is successful, the decision to expand the Appeal Board will overturn the previous decision of the Appeal Board and the validity of its judgment, and will be returned to the Appeal Board for further trial.
Determination of European application date
According to Article 80 of the European Patent Convention, the applicant can only obtain the filing date in strict accordance with certain requirements, including the patent application specification written in the language specified in the European Patent Convention and the patent claim including at least one claim. EPC2000 greatly simplifies the procedure of obtaining the application date, and moves a large number of requirements for obtaining the application date into the implementation rules. According to the provisions of EPC2000, the application documents submitted by the applicant must include the patent application specification (written in any language), and the patent claim can be temporarily excluded, but it should be supplemented within two months after the application is submitted. However, in practice, considering the strict requirements of paragraph 123 2 of EPC2000 on supplementary items, the applicant should use it with caution. The applicant may consider submitting a broad (supporting) claim for each possible independent claim at the time of application and modifying it during the examination and approval process.
Article 14 of EPC2000 relaxes the language for writing European patent applications. For example, a patent application can be submitted in any language, but a translation of a patent application written in any one of English, French and German must be submitted within two months of filing the patent application.
The uniqueness of invention
EPc stipulates that if the European Patent Office thinks that the PcT application entering the European phase lacks oneness when making the supplementary search report, it will only make a partial search report for the first invention in the claim, and allow the applicant to make a search request for other technical solutions while paying the supplementary search fee. However, EPC2000 has greatly revised this and strictly stipulated the fault of the applicant. When EP0 makes supplementary search for the international application entering the European phase, it thinks that the application lacks oneness, and will only make a partial search report for the first invention of the claim, and will no longer give the applicant the opportunity to make supplementary search by paying the search fee. This clause applies to all PCT applications that entered the European phase on or after February 6, 2007. Article 1 1 2 of the detailed rules for the implementation of EPc is abolished. Nevertheless, it is worth mentioning that Article 64 of the Implementation Rules of EPC2000 also reserves the opportunity to give the applicant supplementary search within 2-6 weeks by paying the supplementary search fee.
Article 164 of the Detailed Rules for the Implementation of EPC2000 stipulates that when the European Patent Office considers that the PCT application entering the European phase lacks the singularity of invention, it will continue to examine one of two possibilities. If the European Patent Office is not the international retrieval unit of the application, the invention first mentioned in the claim will be used as the examination basis to supplement the European patent retrieval. However, before the supplementary search, the applicant can submit an amendment to the claim to ensure that the invention he wishes to authorize is the first mentioned invention. Secondly, if the European Patent Office is the international retrieval unit of the application, only when multiple inventions are retrieved in the international stage will the applicant be required to select one of them for examination.
Therefore, before applying to enter the regional stage of the European Patent Office, it is very beneficial for the applicant to realize the deficiency of oneness as soon as possible and submit a claim amendment to ensure that the invention he wants to be licensed is the first invention. On the one hand, it can avoid disadvantages to the applicant in time, and on the other hand, it can improve the examination and approval efficiency of the patent office. Of course, the applicant can take the initiative to apply for division before closing the case.
Continuous examination and approval of European patent applications
Continuing the approval process is a quick and effective way to gain more time for completing the procedure or substantive issues. The new provisions of article 1 2 1 of EPC2000 on the procedure of continuing the examination and approval greatly expand the scope of application for continuing the examination and approval, and give remedies to almost all time restrictions (including those stipulated by the European Patent Office and the European Patent Office), such as failing to pay the fees for application, retrieval, designation and examination, and exceeding the time limit for substantive examination request.
In fact, paragraph 12 14 of EPC2000 and paragraph 1352 of the detailed rules for implementation clearly stipulate the time limit that does not belong to the application for continuing examination and approval. For most of the above time constraints, right reconstruction may be the only available means. In addition, EPC2000 retains most formal procedures for requesting further approval.
Reconstruction of rights
Through the right reconstruction relief, the applicant or patentee can recover all or part of the rights lost as a direct result of overdue. EPC2000 moved most of the provisions on the procedure and time limit of rights reconstruction to the detailed rules for implementation, which is roughly the same as the current practice.
Although according to the provisions of EPC2000, the reconstruction of rights is excluded from the time limit for applying for continued approval of relief. However, right reconstruction will be a very useful recovery mechanism for patent applications that lose their rights after missing the priority period, the request period for further examination, the relevant objection period and the objection appeal procedure.