Report of the European Patent Practice Committee
F. Leyder (BE), Chair
This report completed on 28 February 2017 covers the period since my previous report dated 2 November 2016 published in epi Information 4/2016.
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 seven permanent Sub-Committees (EPC, Guidelines, MSBA, PCT, Trilateral & IP5, Quality and Unitary Patent). Additionally, ad hoc Working Groups are set up when the need arises. Two thematic Groups have also been set up.
1. European patent with unitary effect in the participating Member States
The entry into force of the unitary patent system requires ratification or accession of 13 States to the UPC Agreement, including Germany, France and the UK. As mentioned earlier, the outcome of the "Brexit" referendum had created some uncertainty about the ratification by the UK, but these disappeared when the UK confirmed . The latest plans provide for entry into force of the unitary patent system on 1 December 2017.
The next (21st) meeting of the Select Committee would take place at the latest in March 2017 or earlier, depending on the development of the question of the entry into force of the unitary patent system at the political level, within the framework of the European Union. It has now been postponed and will take place in Munich on 27 June 2017.
The series of UP/UPC seminars initiated by epi will resume in May, with seminars in Copenhagen, Basel and Barcelona. The forms and the plugin for online filing will hopefully be available by then.
2. PAOC thematic group
epi delegates of the Pure and Applied Organic Chemistry (PAOC) thematic group of the EPPC met with EPO representatives (mainly Directors in that field) on 22 June 2016. The report has now been finalised and will be published in epi Information 1/2017.
The next meeting will be held on 16 May 2017. The group welcomes suggestions as to topics for discussion.
3. Meetings of the EPPC
The EPPC met on 17 November 2016.
The highlight of the meeting was a presentation by Ms. Heli Pihlajamaa, Director Patent Law, who also answered the questions of the participants.
The committee also agreed to set up a new sub-committee to deal with quality, matching a new SACEPO/Working Party on Quality (WPQ). Bogoljub Ilievski, who has been appointed as the epi delegate to the WPQ, will lead the sub-committee.
The next meeting has been scheduled on the fringe of the Council meeting, starting in the afternoon of 25 April 2017.
4. G1/16 (disclaimers)
At its last meeting, the EPPC decided to set up a dedicated working group for preparing an amicus curiae brief. Once filed, the brief will be available in the file: https://register.epo.org/application?number=EP08003327
The new SACEPO/Working Party on Quality was created by a decision of the President of the EPO "to provide another channel to gather feedback on quality at the EPO based on the experiences of major user groups". A short report of the first meeting, held on 17 January 2017 was published on the EPO website: http://www.epo.org/news-issues/news/2017/20170124.html
6. ICT thematic group
epi delegates of the Information and Communication Technologies (ICT) thematic group of the EPPC met again with EPO representatives on 25 January 2017, to discuss some aspects of the passages in F-IV and G-VII relating to eligibility of computer implemented inventions (CII). A paper prepared by the ICT thematic group will be published in epi Information 1/2017, discussing Example 3, G-VII 18.104.22.168, which has been adapted from T102/08.
7. PCT Working Group
The PCT will take place in Geneva, from 8 to 12 May 2017. The draft agenda is already available on the WIPO website ("Future development of the PCT System", "Proposed changes to the PCT procedural and legal framework", "Other matters"), and the working papers are being uploaded at the same location: http://www.wipo.int/meetings/en/details.jsp?meeting_id=42289
8. SACEPO/WPR 15
The summary of conclusions of the 15th meeting of the SACEPO/Working Party on Rules held on 15 November 2016 is attached. Thanks must go to the numerous colleagues who commented on the working documents, mainly on the website forum. In particular, the vast majority of comments included arguments against delaying entry in the European phase from 31 to 34 months with a corresponding reduction of the period for replying to the Rules 161/162 communication.
9. Meeting with the Vice-President DG1
On 1 March 2017, an epi delegation has meet the Vice-President DG1 (Operations).
10. SACEPO/WPR 16
The 16th meeting of the SACEPO/Working Party on Rules will be held on 22 March 2017. The agenda includes the following items related to the EPPC (for which the working papers have not yet been received):
- 2. XML [this item will be dealt with in cooperation with OCC]
- 3. Information about Fraudulent invoices
- 4. Application of Rule 134 EPC
- 7. Assessment of unity of invention
11. CPL 48
The 48th meeting of the Committee on Patent Law will take place on 27-28 April 2017. The agenda had not yet been received at the time of finalising this report.
SACEPO WORKING PARTY ON RULES
Summary of conclusions of the 15th meeting held on 16 November 2016
I. Opening and adoption of the agenda [SACEPO/WPR 7/16]
The Office welcomed the participants. The provisional agenda was adopted by the participants with the addition of a topic on the last day of validity of a European patent under "Any other business".
II. Corrective actions - clarification of Rules 51 and 162 EPC [SACEPO/WPR 8/16]
Document SACEPO/WPR 8/16 was presented by the Office.
As to the proposed amendments to Rule 51(2) EPC, SACEPO members showed appreciation for the proposed change which was considered to increase clarity and therefore bring advantages for both applicants and third parties. The necessity to eliminate any legal uncertainty regarding the filing of divisional applications was in particular pointed out. A SACEPO member was concerned that the change could lead to a lack of internal consistency due to the fact that the lapse date was determined in different ways within the procedure. He in particular referred to the post-grant procedure, since for unitary patents the date of lapse for the non-payment of the renewal fees would correspond to the end of the regular period. Another SACEPO member invited the Office to raise this point with the participating states. The Office replied that the proposed amendments to Rule 51 EPC simply consist in a clarification of the current practice and stated that there is no legal impediment to the provision of different regimes in the pre- and post-grant procedure; both regimes are in line with the Paris Convention. SACEPO members suggested that the wording be clarified in the English text by replacing "on the due date" with "by the due date" in Rule 51(2) EPC. The EPO will consider the proposal further and if necessary reflect the change in the French and German translation.
SACEPO members showed understanding for the goal of the proposal aimed at re-establishing the long-standing practice of the EPO under Rule 162 EPC, i.e. to compute the number of claims fees due on the basis of the total number of claims on file at the end of the 6-month period under Rule 161 EPC. In reply to a SACEPO member who argued that the new system could lead to abuses, the Office explained that examiners do not start the search or the examination until the end of the six months. This means that they are always informed for which claims fees have been paid. The Office further clarified that the waiver has effect only subject to the payment of all claims fees due.
Some SACEPO members invited the Office to reconsider the proposed text of the Rule with the aim to further improve the clarity of its wording. In particular, a SACEPO member suggested that the second sentence contained in paragraph (2) of the proposed Rule 162 EPC be inserted in a new paragraph to make clear that the two sentences are not connected. Another SACEPO member argued that in the second sentence of Rule 162(2) EPC also the additional claim fees should be mentioned (i.e. "the claims fees or any additional claim fees"). The Office informed that it would consider these proposals.
Finally, a SACEPO member asked for clarification as to what would happen in case an applicant limits the claims during the further processing period; the Office clarified that the use of further processing into the period of Rule 161, for instance if an applicant decides at a late stage that he wants to file further claims, will be reflected in the claims fees due.
III. Fee payment methods [SACEPO/WPR 9/16]
The Office presented document SACEPO/WPR 9/16.
SACEPO members expressed dissatisfaction with the EPO's decision to move to the "online only" management of deposit accounts for several reasons. Moving to the electronic management of deposit accounts put parties in a difficult situation where there is a technical breakdown at the users' end or in case the EPO online services are not available. Suitable alternative measures have therefore to be offered to users and clear instructions on the procedure to be followed in emergency situations have to be provided. The use of the fax as an emergency solution in case of technical breakdown at the users' side is considered to be the best solution even if it would not help in case of network fax machines. Credit cards payments are also considered as a suitable emergency measure: users should be allowed to call and simply provide their credit card details in those situations. The Office clarified that this measure, which only concerns the payments via deposit account, is meant to increase transparency. It further explained that the EPC contains specific provisions addressing the cases of technical breakdowns; similar safety net will also be foreseen in the arrangements for deposit accounts. A SACEPO member suggested that when a disruption of the system is announced, a reference to Rule 134(1) EPC be included in the warning published by the Office.
Concerns were raised in respect of applications which must be filed with the national patent offices for state security and national defence reasons since applications are mostly filed in paper together with the debit order for paying the fees due on filing. Under the new regime applicants will have to pay the fees separately. According to SACEPO members, this will increase the risk of errors. Also not all national Offices provide for a possibility to use the EPO's online filing tool. In that context the compliance of this measure with Rule 2 EPC was questioned. The Office replied that most national Offices already offer the possibility to file online also the debit order; cooperation in this respect with countries which do not offer such possibility will be considered. The Office further clarified that the payment of fees is not considered an integral part of the procedure and therefore the debit order is not a "document" under Rule 2 EPC (for the interpretation in this sense see legal advice 6/91).
SACEPO members argued that the EPO's user-friendliness for making payments has decreased over the recent years due to the abolition of the administrative fee and the closure of the national bank accounts. They mentioned that not all contracting states are members of SEPA and that experience shows that SEPA transfers can take longer than one day. They felt an amendment of Art. 7(3) RFees as necessary to reflect the rapidity of the bank transfers. The Office replied that SEPA transfers last maximum one day. Finally, the Office stated that only Turkey is not a SEPA member but that it has accepted nevertheless the SEPA regulations and that therefore there are no disadvantages for Turkish users.
The Office concluded by saying that it would give to the points raised further consideration.
IV. Entry into the European phase [SACEPO/WPR 10/16]
Document SACEPO/WPR 10/16 was presented by the Office.
The comments to the proposal to extend the time limit for entry into the European phase to 34-months and to shorten the time limit under Rule 161 EPC by 3 months differed amongst SACEPO members. The majority of the SACEPO members were not in favour of the proposed extension of the time limit for entry into the European phase, especially in light of the shortening of the Rule 161 period which, according to them, would result in a very limited time at the disposal of the attorneys.
It was in particular argued by some SACEPO members that, such extension would increase the complexity of the system since it would not be a harmonised change adopted by all offices but it would only be valid before the EPO; applicants would therefore no longer take a global decision on the future of the patent but would work on the possible amendments of the application twice incurring greater costs.
A SACEPO member stated that such change of the established framework would entail huge efforts for the re-education of the users of the system and would moreover have the following side effects:
- agents, normally asked by applicants to prepare an invoice for all national phase entries, would have to pay the foreign agents without having the possibility to invoice the clients before 34 months;
- in-house patent departments of European applicants would have to work on the same application more than once;
- foreign applicants, who decide to enter the national/regional phase themselves, generally wait until the first EPO's communication is issued before instructing the European patent attorney; if the Rule 161 EPC period is reduced to 3 months, European representatives will not have sufficient time to work on a case, to the detriment of the quality of the reply to the written opinion and with the result that more objections will be submitted at a later stage of the procedure.
The same SACEPO member further noted that he did not share the Office's view that this extra time could allow the applicant to improve the documents for entry into the European phase on the basis of the comments provided by foreign agents or offices for the other national phase entries (paragraph IV, point 9 of the EPO document); the extra time of three months provided would indeed not be sufficient. Moreover, applications are prepared to meet specific national requirements and therefore cannot be used for all national/regional procedures.
According to him, moreover, the amendments under Articles 28 and 40 PCT may be filed on entry irrespective of the issuance of Rule 161 invitation. Rule 161 thus does not implement the right under Articles 28 and 40 PCT but on the contrary offers applicants the opportunity to file amendments under Article 123(1) EPC.
The same SACEPO member showed disagreement with the statement in paragraph III point 6, according to which more time is needed by the applicant to take the results of the international preliminary examination into account when preparing the amendments for the European phase, since the major part of the applicants do not make use of the Chapter II procedure.
Moreover, it was noted that, according to Rule 95.1 PCT (as in force as from 1.07.2017), designated and elected Offices are requested to inform the IB of national/regional phase entries: this would also be delayed if the time limit for entry is postponed.
Another SACEPO member indicated that the industry would welcome the three extra months for the decision to enter the European phase, since it would allow shifting the high costs of entry by three months. Applicants would in any event still have the possibility to enter before the deadline if preferred. However, he noted that European representatives would in practice - probably - still get the files only shortly before expiry of the extended time limit under Rule 159 EPC and would, therefore, often have three months less than today to prepare the amendments. Therefore, according to him, the proposal would be appreciated by applicants but may have negative consequences for attorneys.
Two SACEPO members noted that the proposal would have consequences for third parties. They would 3 months later than today be informed 1) whether an application would enter the European phase and become relevant prior art and 2) what an application is about since - under the proposal - also the publication in an EPO language of any Euro-PCT application not published in an EPO language by the IB, would be delayed by 3 months.
The Office acknowledged that SACEPO members were not in favour of an extension of the time limit for entry but clarified that the proposal was aimed at providing more flexibility to applicants. As to third parties, the Office stated that their position was carefully considered and that it was concluded that a delay of three months would not be too detrimental for them.
The Office moreover clarified that Rule 161 EPC implements Articles 28 and 40 PCT and that the time limit under Rule 161 EPC was extended from one month to six months to address the concern of the users concerning the introduction of the obligatory reply to the WO-ISA; before that moment users had never expressed any dissatisfaction with the deadline of one month. In this respect, a SACEPO member suggested that the 6-month time limit be used as regular office time limit (not a fixed office time limit) or 4 months in case the EPO acted as ISA in the international phase.
As to the translation into an EPO-language, the Office replied that the delay of three months would not create problems in practice since the translation would already be available in many cases from the entry into other national phases.
In reply to a concern of a SACEPO member, the EPO noted that only in rare cases the prior art from an international application which has not entered the European phase is relevant. It further explained that Rule 165 EPC was introduced as a protection for European users to ensure that international applications that had not been published would not have an effect on the grant of the applications pending at the EPO. A SACEPO member however argued that in practice this could be problematic in certain technical fields (i.a. polymer chemistry).
There was broad consensus that it would be helpful for the users if the 3rd year renewal fee could be paid upon entry into the European phase at expiry of the regular time limit for entry. SACEPO members suggested that Art. 51(1) EPC be amended to address this issue. A SACEPO member stated that another option would be to amend R. 159 EPC but that, according to him, such amendment would not achieve the purpose. He moreover added that the Office could allow applicants to pay on entry subject to the condition that the amount to be paid on that date is not lower that the one which would be due according to the current wording of Art. 51(1) EPC.
Positive feedback was given on the proposal to have a new checkbox in Form 1200 by which users may indicate the wish to start earlier the processing of the application in the European phase ("early entry"). A SACEPO member showed appreciation for the proposed checkbox but stressed that applicants would still be faced with the problem of having to pay the 3rd renewal fee later; he finally argued that according to him a long list of actions to be performed if due would not simplify the system for applicants not routinely using this procedure. In addition a SACEPO member stressed the importance that fees can also be automatically debited in the case of early entry. The Office informed SACEPO members that the work on this has already started.
The Office summarised the feedback and concluded that the prolongation of the time limit for entry into the European phase was not sufficiently supported. It further announced that it would initiate the work on the 3rd renewal fee.
V. Update on Early Certainty [SACEPO/WPR 11/16]
With regard to telephone interviews as first action, SACEPO members welcomed the proposal in general and thanked the Office for taking their comments on board. They invited the Office to inform agents of the upcoming telephone interview with a short notice in advance by phone or email. A SACEPO member insisted on the importance of ensuring that a complete report of the telephone interview is issued by the examiner. Another SACEPO member stated that the use of this instrument has to be limited to cases where small issues have to be clarified or examiners decide to make proposals. Finally, a SACEPO member noticed that applicants are reluctant to pay for the work related to telephone interviews since they are not announced in official communications. The Office acknowledged that it would be good practice to inform the agents of the telephone interview in advance. It moreover stated that the instructions concerning the telephone minutes are clear and that those individual cases where the instructions are not complied with should be reported and addressed (some examples would be provided by epi). More in general, however, the Office would make sure that the instructions on how a telephone interview has to be conducted are clear enough.
SACEPO members were in favour of the proposal concerning the positive statements and suggestions, which would have as a positive consequence a reduction in the number of auxiliary requests and communications issued. However, examiners should not take offence if their suggestion is not followed by the applicant. The Office replied that this would be mentioned in the e-learning material.
The opinions of SACEPO members on summons as first action were diverging. A SACEPO member argued that the proposal would result in increased costs and that the Office should at least ensure that sufficient VICO facilities are available with no time constraints especially for complex cases. According to another SACEPO member, two office actions are necessary before the oral proceedings. SACEPO members agreed that an advance telephone contact before the summons would be useful. Instructions on the summons should be inserted in the guidelines in order to avoid any lack of clarity. The Office replied that this instrument is not intended to be widely used, but rather when it is the only way out of a deadlock situation where no essential progress has been made to overcome the objections raised in the written opinion accompanying the search report and the Examining Division identifies no patentable subject matter in the application. The Office concluded that further consideration will be given to the suggestions provided.
SACEPO members showed appreciation for the proposal on the preliminary opinion accompanying the partial search results.
As to the proposal on the further harmonisation in the treatment of auxiliary requests, SACEPO members welcomed the decision of the Office not to limit the number of the auxiliary requests.
With regard to the streamlined opposition procedure, SACEPO members stated that it was too early to assess the effect of the change. However, a SACEPO member made reference to a specific case where a preliminary opinion was sent by the examiner a few weeks before the oral proceeding and asked the Office whether this was due to the change of procedure. The Office asked him to provide the number of the mentioned file.
A SACEPO member finally referred to previous discussions on early certainty and asked whether there was any follow-up with regard to the proposal of the Office to insert a box in the written opinion similar to the one present for PCT files and to the proposal to indicate the basis of the amendments for Euro-PCT applications according to Rule 137(4) EPC. With regard to the first question the Office replied that it would work on this; with regard to the second one, it explained that the proposal was put aside and that further options are currently considered by the Office.
VI. Report on the results of the user survey on the pilot on search strategies [oral report]
The Office reported on the results of the user survey carried out in the framework of the SACEPO PDI and SACEPO WPR.
SACEPO members expressed both in writing and orally during the meeting appreciation for the service provided by the Office, which meets users' expectations and needs.
The Office informed SACEPO members that following the positive feedback derived from the consultations as well as the support received from users in several meetings and seminars in 2016, the Office had decided to extend the current pilot programme by one year (until the end of 2017).
VII. Recent developments in the PCT framework (i.a. CS&E) [oral report]
The Office reported in particular on the CS&E pilot, informing SACEPO members that the mandate was adopted by IP5 Heads (CS&E Cooperation Framework) and the preparatory phase of the pilot was launched on 2 June 2016. The following milestone would be the launch of the operational phase tentatively by mid-2017 on the basis of the work produced by the CS&E Pilot Group (IP5 representatives & WIPO). The Office moreover informed SACEPO members of the possibility to file subsequently filed documents via ePCT as of 1.11.2016, and of the success of the PCT-Direct service offered by the Office, largely used by users (220 PCT-Direct requests submitted in average per month) and considered valuable by the other ISAs (for instance IL decided to offer the same service). General information on recent Rule changes were also provided by the Office (revised Rules 9, 48 and 94 PCT in force since 1 July 2016; revised Rule 92 PCT in force since 1 July 2016; revised Rule 82quater PCT in force since 1 July 2016; revised Rule 45bis in force as of 1 July 2017). Finally, SACEPO members were updated on the new Rule 23bis PCT, which would enter into force on 1 July 2017, according to which any earlier search results and classification results available at the RO will have to be forwarded to the competent ISA. SACEPO members thanked the Office for the report. As to the CS&E, a SACEPO member commented that, in light of the high costs, such system would be useful only in PCT Direct cases and not for the first search. He further added that the system would be attractive only if fee reductions are provided in the national phases before the designated Offices involved. As to the first comment, the Office stated that the matter had not been discussed and informed SACEPO member that some Authorities were in favour of replacing the supplementary international search service with the CS&E. The EPO did however not share this view. As to the second suggestion, the Office replied that the idea is indeed to introduce some financial incentives in the national/regional phases.
As a general remark, a SACEPO member argued that no examination fee should be requested in the European phase if examination was carried by the EPO in the international phase with positive results (at present reduction of 50% is granted). He therefore invited the Office to reconsider this issue also in light of the fact that the USPTO does not charge any fee in these cases. The Office replied that it was looking at this matter.
Finally a SACEPO member invited the Office to provide in future a written document to facilitate the understanding of the changes presented.
VIII. Update on procedural patent law harmonisation issues
The Office updated SACEPO members on recent developments in the area of procedural patent harmonisation and in particular unity of invention (a PowerPoint presentation was provided).
Epi enquired whether its participation was foreseen. The Office informed SACEPO members that discussions on the participation of associations in the framework of the IP5 were ongoing, but that there was yet no common line as to how representation within Industry IP5 should evolve.
IX. Update on substantive patent law harmonisation issues
The Office provided an update on substantive patent law harmonisation issues (a presentation was provided to SACEPO members).
Epi asked the Office whether its participation in the Symposium was foreseen. The Office replied that the participation of European associations was under discussion and that the user associations were trying to get China on board as observer (no formal invitation had however been sent).
A SACEPO member requested clarification as to the added value of the Symposium to be held in 2017 in comparison to the ones which took place in the past. He moreover added that the lack of progress was not necessarily a negative element since he felt that some limits had been crossed. He showed in particular dissatisfaction with the solution of having a full year grace period without declaration and with prior user rights limited to the country of the prior use. The Office replied that, unlike in the past, users were in the driver's seat and that the Symposium was not going to be an information session but a discussion among experts working on a way forward. The Industry Trilateral was working on reaching a consensus on a package of norms, and after a setback earlier this year, there were encouraging signs that progress was being made.
X. Any other business
Epi invited the Office to further consider the issue of the last day of validity of a European patent which was discussed in the Committee on Patent Law held in May 2016. It also mentioned two documents published in CIPA Journal in this regard. The Office referred to the conclusions of the Chair of the PLC but took note of the invitation.
The Office finally informed the SACEPO members that a suitable period for the 16th SACEPO WPR could be the end of March 2017.
- At the 83rd meeting of the Technical and Operational Support Committee (TOSC) that took place on 3 November 2016, i.e. before the UK indicated that it would ratify the Agreement on a UPC, the EPO indicated that it would provide the forms and the plugin as soon as they would have a more concrete schedule for entry into force, well in advance, to include additional changes to the system