Report of the European Patent Practice Committee (EPPC)

Francis LeyderF. Leyder (BE), Chair

This report completed on 4 March 2016 covers the period since my previous report dated 22 November 2015 published in epi Information 4/2015. The EPPC is the largest committee of the epi, but also the one with the broadest remit: it has to consider and discuss all questions pertaining to, or connected with, practice under (1) the EPC, (2) the PCT, and (3) “the future EU Patent Regulation”, including any revision thereof, except all questions reserved for the Biotech Committee.
The EPPC is presently organised with six permanent sub-committees (EPC, Guidelines, MSBA, PCT, Trilateral & IP5, and Unitary Patent). Additionally, ad hoc working groups are set up when the need arises. Thematic groups are also being set up.

1. Independence of the Boards of Appeal

The EPO organised an online user consultation inviting users to express their views on the different reform elements. The summary can be downloaded from the EPO website: http://www.epo.org/law-practice/consultation/completed.html In preparation of the December 2015 meeting of the Administrative Council, a document CA/98/15 was submitted by the EPO “The Orientations for the structural reform of the EPO Boards of Appeal”. Comments were filed by epi, which can be found by following the link at the end of this page: http://patentepi.com/en/epi-reports/news.html. Document CA/98/15 was however withdrawn.

2. MSBA 22

The meeting planned on 7.10.2015 unfortunately had to be cancelled. The next (22nd) consultative meeting of user representatives with the Boards of Appeal (MSBA i.e. Meeting of SACEPO with the Boards of Appeal) will be convened after the summer holidays. In the meantime, suggestions of topics for discussion are more than ever welcome.

3. European Patent with Unitary Effect in the Participating Member States

The 18th SC meeting was held on 15 December 2015. The whole package, comprising the level of renewal fees and the distribution key, was adopted:

  • Rules relating to Unitary Patent Protection (RUPP)
  • Rules relating to Fees for Unitary Patent Protection (RFeesUPP)
  • Budgetary and Financial Rules (BFR)
  • Rules relating to the Distribution of Fees amongst the participating Member States (RDF) The latter was however not made public.

The 19th SC meeting will be held on 15 March 2016. Some details of the implementation will be discussed, and a chairman and deputy will be elected for the next term.

4. Committee on Patent Law

The 46th meeting of the Committee on Patent Law (CPL46) will take place on 12 May 2016.
It will in particular deal with two topics for which the delegations of the Member States have been invited to report on the situation in their country: the last day of validity of a European patent (a topic raised by epi in view of the future jurisdiction of the UPC on non-unitary patents) and the patentability of plants obtained by essentially biological processes (a topic for the Biotech Committee).

5. Symposium on Article 84 EPC

The EPO Academy organized a Symposium on Article 84 EPC in The Hague on 14 January 2016. epi was represented by six members, three from the EPPC and three appointed by PEC. The EPO started with an overview of the law (DG5) and the current practice (DG1). US, Japanese and European perspectives were then introduced, the last one by epi (M. Honkasalo had accepted the challenge). In the afternoon, the participants were divided into four break-out sessions: mechanics, electrophysics, chemistry and biotechnology. The results of these sessions were presented in the final plenary session and debated in a round-table discussion. As a result of the Symposium, the EPO plans to enrich and improve the Guidelines, for example by adding examples provided by the participants and discussed during the day.

6. SACEPO/WPR 14

As reported earlier, the 13th meeting of the SACEPO Working Party on Rules was held on 17 November 2015. The EPO has processed the users’ “wish list” for rule amendments into different categories, and informed us that the list will be closed item for the moment, but some suggestions will be reviewed when appropriate. The main item on the agenda was the presentation of ideas to “simplify” the procedures. As mentioned in the supporting document received one week before the meeting, “The need for a revision of the complexity of the procedures in place at the EPO was seen by EPO management in order to ensure a harmonised and sustainable practice under both the EPC and the PCT while fostering efficiency for users and examiners.” Some proposals having a direct impact on users had been presented during the meeting. During the Council meeting in Cologne, some of these proposals could be very briefly presented and discussed. Discussions continued inside the EPPC, and the EPPC provided on 22 January 2016 written comments on some seven proposals how the EPO plans to “simplify” processes. The most discussed proposal relates to auxiliary requests and oral proceedings in the examination phase: whether to allow any auxiliary requests in response to summons, whether to process only the main request in the oral proceedings.
We have received the invitation to the 14th meeting of the Working Party on Rules, to be held on 7 April 2016, but had not received the agenda at the time of finalizing this report.

7. Meeting with VP1

In the EPO, Mr. Minnoye is the Vice-President in charge of Directorate-General 1 (Operations), responsible for search, examination and oppositions. Many issues were discussed during the meeting on 9 February 2016.
The extension of “top-up” searches to cover prior national rights is under preparation: the same search will be conducted in pre-translated documents, and it is intended to provide a simple list will be provided (the examiner will not look at the additional hits).
Some of the proposals to “simplify” processes (mentioned in the report on SACEPO/WPR) were also discussed. In particular, the EPO is working on internal procedures, the target being to reach a decision within 15 months in opposition proceedings after the opposition period has ended: requests for extensions of the period for responding to the notice of opposition would no longer be granted automatically, and the summons would be issued within three months of the response. Also the EPO will suspend examination of applications when a renewal fee is not paid, the effect of any PACE request re-starting when it is paid, and any oral proceeding being rescheduled if time permits (more than one month).

8. EPPC Meeting

The EPPC met on 16-17 February 2016. The main topics discussed were:

  • The EPO proposals to “simplify” processes (mentioned in the above report on SACEPO/WPR).
  • The new e-filing tools: the EPO had kindly offered to demonstrate these, in particular web-form filing that the EPO wishes us to increasingly use instead of fax in order to improve the quality of the documents received. Two Key Account Managers made the presentation, and we seized this opportunity to learn about their too little known role. A third EPO speaker was Mr Wierzejewski[1] of the Patent Procedures Management Directorate, who discussed the OCR processes.
  • The annual Guidelines review process, with feedback provided by the Committee on specific topics raised by the Vice-Chair in charge of the Sub-Committee.
  • The archiving of old EPC versions: this was in reaction to an EPO user survey to which epi was, surprisingly to me, not invited to participate. Several uses of such archive were identified, which will be passed to the EPO.
  • The draft amicus curiae brief in case G1/15: the Committee agreed on the main principles of the brief. The final version was filed on 29 February 2016.
  • Enquiries regarding national legislation at the request of the President: the chairman introduced several topics for which a contribution is requested in writing from the EPPC members (or, where applicable, from those representing countries participating in the unitary patent system), with the aim of posting the results on the epiwebsite.
    1. Preventing double protection with a unitary and non-unitary patent.
    2. Protection conferred by non-unitary vs unitary patents.
    3. Delayed ‘validation’ where the request for unitary effect is refused.
    4. Payment of renewal fees in case of a successful petition for review. The President had also asked information about the closure of the national route, which was obtained orally.
  • A proposal by T. Jackson (published in epi Information 1/2016) to amend the wording of communications according to Rule 71(3) and Article 97(1): the Committee generally agreed with most of the proposal, but was of the opinion that further investigation was required.

9. Meeting of JPAA with epi

During the meeting of 18 February 2016, I made a short presentation of the unitary patent system, which has since been posted on the epi website.

10. ICT Thematic Group

The ICT Thematic Group of the EPPC (information and communications technology) has again met with the EPO Directors in the field of ICT on 2 December 2015. The meeting addressed questions on the number and scope of European searches specifically in the CII field (computer implemented inventions), as well as on the applicability of many clarity objections in this field. The EPO explained its modus operandi with large filers and outlined further initiatives to improve efficiency and quality. Both sides again considered the meeting fruitful, and the timing of the next meeting has already been agreed.

11. PCT WG9

The PCT Working Group will next meet in Geneva from 17 to 20 May 2016. No details were known about the discussion topics at the time of finalising this report.

12. PfQ

At the time of finalising this report, the date of the next Partnership for Quality meeting had not yet been set. It could regretfully not be combined with the EPPC meeting of 16-17 February 2016.

  1. Mr Wierzejewski is well known to us as the author of a poster “Recent procedural changes” downloadable from the epi website in the Documents/member section (last edition dated 14.07.2015).

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