A number of modest changes were adopted at a diplomatic conference for revision of the European Patent Convention (EPC) which took place in November 2000 in Munich. A number of issues were left unresolved and there was a call for a further conference in the fairly near future to try to resolve them. The biggest surprise resulting from the conference was the failure to change the law with respect to the patentability of computer programs "as such". The working documents had contemplated removal of the prohibition on patentability of such inventions but this was resisted by the Danish, French and German delegations which felt that the developing case law on this topic provided sufficient protection for inventors in this area, at least until the European Commission had completed a study (which is currently underway) on this topic. The final communique from the conference specifically points to this issue as one that needs consideration at a future conference. It also stated that consideration of any amendments relating to biotechnology were deferred to such future conference, representatives from Greenpeace and the European Green parties having made strenuous representations and demonstrations to have this topic added to the agenda of the present conference.

The revised convention will come into effect three months after the last of the present members has ratified it or two years after the fifteenth member state ratifies it, in which case any country that does not ratify will be expelled from the EPC when the revised convention comes into effect. Since some of the changes apparently raise constitutional issues in Italy, Denmark and Sweden, which may require votes by super majorities in their parliaments or referenda of their entire populations to be adopted, this could cause a problem.

The modifications effected by the conference fall into the following three main groups: 1) Substantive Law Changes; 2) Changes to facilitate proposals from the European Commission on issues that interface with the European Patent Convention; and 3) Changes to improve procedure.

Now, with reference to the details:

New Articles 105a, 105b and 105c provide the patent proprietor with a means for effecting limitation of a granted European Patent by way of a single procedure before the EPO, rather than having to institute limitation or amendment proceedings in national fora, wherever this is possible, as at present. Such proceedings will permit the patentee to limit the patent by amendment of claims or to have the patent revoked. No such proceeding will be permitted to be started while an opposition remains pending. Any such limitation will have effect in all designated states and an amended specification will be published.

Additionally, Article 138 has been amended to specify that, in proceedings before a national court where validity is in issue, the patentee shall have the right to limit the scope of protection by amending the claims.

The Protocol to Article 69 defining the protection given by the claims of a European Patent has been amended to add the new paragraph set forth below

A proposal to define an "equivalent" as performing the same function as the claim element was not adopted.

The prohibition on patentability under this head has been restricted to inventions whose "commercial exploitation" would be contrary to morality or ordre public rather than whose "publication or exploitation" would fall under these heads as was previously the case.

The prohibition on the grant of patents for methods of treatment of humans or animals by way of therapy or surgery or diagnosis applied directly to the body is transferred from the category of inventions not susceptible of industrial application to the category of inventions that are simply not patentable, like those whose commercial exploitation would be contrary to morality or ordre public. Additionally the wording in the definition of novelty that has up to now permitted broad "compound for use" protection only for a first medical method has been amended to add as new Article 54(5) (the novelty provisions) shall not exclude the patentability of any substance or composition comprised in the state of the art for any specific use in any method ...( for treatment of the human or animal body by surgery or therapy or diagnostic methods practiced on the human or animal body) provided that such use is not comprised in the state of the art.

It therefore appears that claims of the type "aspirin for use in the prevention of platelet aggregation" will be permitted without the need to resort to "Swiss form" claims.

Article 87 has been amended to permit priority claims from applications filed in WTO-Member countries as well as Paris Convention countries.

Article 105(1) has been amended to remove the requirement that a third party who is subject to or has been threatened with infringement proceedings and responded by seeking a declaration of non-infringement can only intervene in an on-going opposition against the patent in question within a period of three months from the date of the start of the suit against him or his suit for a declaration of non-infringement. There is now no time limit.

The EU has previously called for a reduction of the translation costs associated with patent protection in Europe. At an Intergovernmental Conference in London in October 2000, an agreement was adopted by a group of countries that will permit countries having one of the three official languages of the EPO as one of its own official language or where the European patent is in a language designated as being acceptable in that country to waive its right to have a translation of a granted European patent. Adherence to this agreement is optional and not all members of the EU or EPC are required to join in order for it to come into effect. This agreement was signed by Denmark, Germany, Liechtenstein, Monaco, the Netherlands, Sweden, Switzerland and the United Kingdom. The agreement will come into effect only after ratification by eight countries, including the three to which the EPO granted the largest number of European Patents in 1999. This means that ratification by France will be necessary to enable it to come into effect. It remains to be seen whether France will sign. This new agreement complies with Article 65 of the EPC, which was amended slightly in Munich to take account of the possibility of republishing a European Patent after it has been limited as contemplated in section 1a) above. New EPC Article 149a(1)(c) makes reference to the possibility of groups of member states agreeing to waive translation requirements.

As noted elsewhere in this Information Letter, the EU has also called for improvements in patent litigation procedures. The Munich Conference has amended the EPC to facilitate this by adding new Article 149a which permits groups of states that are parties to the EPC concluding other agreements among themselves relating to European patents or patent applications, including the establishment of a "European patent court". The new article also empowers the EPC Administrative Council to provide support for such a court, including permitting it to allow appeal board members to participate in any such court.

The Administrative Council has been empowered by new Articles 33(1)(b) and 33(5) and 35(3) to amend the EPC to comply with EU legislation or international treaties rather than requiring a diplomatic conference to effect such changes. Such changes do, however, require unanimity in the Administrative Council.

New Article 4a provides that there shall be a ministerial conference of the member states at least once every five years to "discuss issues pertaining to the Organization and to the European patent system".

One major effect of the revision is to transfer detailed provision for many procedural issues from the Convention itself to Implementing Regulations which are easier to amend. The necessary implementing regulations are still awarded. However, a number of specific issues emerged.

New Article 112a provides that, in cases where a decision is made by an Appeal Board comprising a member who ought to have recused him- or herself from participating in a decision, where a criminal act may have impacted the decision or other fundamentals of due process have been violated, any party adversely affected by the decision may petition the Enlarged Board of Appeals for review thereof.

New Article 11(5) formalizes the procedure whereby the Administrative Council may appoint "qualified members of the national courts or quasi judicial authorities of the Contracting States" to the Enlarged Board of Appeals without their having to relinquish their "judicial activities at the national level".

A number of changes have been made preparing the way for bringing examination and search together (BEST). However, details of this are left to the yet-to-be-issued implementing regulations. What has been done in the Convention is to remove the requirements in Articles 16 and 17 that particular acts be done in the Hague and elimination of the requirement to publish a search report before the examination fee must be paid.

The requirements for further processing and re-establishment of rights are to be transferred to Implementing Regulations. However, the revised Convention specifically excludes the possibility of using further processing to remedy failures to meet requirements relating to changes in priority, appeal terms and petitions for review by the Enlarged Board of Appeals and also eliminates the possibility of using procedure for re-establishment of rights for missing the term within which to seek re-establishment of rights. All other terms are to be specified in Implementing Regulations.

Article 14(2) has been amended to comply with the Patent Law Treaty to permit initial filing of the application in any language. Implementing Regulations will set out the requirements for subsequent translation into one of the EPO's official languages.