Report of the Harmonisation Committee
J. Brown (GB), Chair
Futher to my report published in epi Information 1/23, the then epi President Mr Francis Leyder, I, six other members of epi Harmonisation Committee (“HC”) and an epi Legal Advisor (Nicole van der Laan) attended Part I of the EPO Symposium on Substantive Patent Law Harmonisation (“SPLH”) at the EPO on 23rd March 2023. Other members of epi attended the Symposium virtually.
On 4th April 2023, the attendees at the Symposium received a Questionnaire from the EPO, one Questionnaire to be completed on behalf of epi and submitted to the EPO by 10th May 2023.
epi Harmonisation Committee prepared a “draft answer” to the EPO Questionnaire and this was added to the Accumulated File for the epi Council Meeting to be held in May. Mr Filippo Santi, Secretary of HC, gave a presentation to Council, entitled “Substantive Patent Law harmonisation – Possible epi Proposal”. I then introduced the “draft Answer” to the epi Council and presented a number of Motions to be voted upon, after due discussion in Council.
The following statements were inserted into the draft Answer to the EPO Questionnaire:
epi feels that all applications should be published at 18 months from the earliest of pre-filing disclosure (“PFD”), priority date and the filing date.
epi has a “red line” - a formal declaration must be mandatory, with a time limit for filing the statement (short enough for the declaration to be published together with the application).
In any agreed harmonised system, the gracing of a PFD must only remove the graced disclosure from the prior art for the application for which the grace period was claimed – no other rights are to be derivable from the grace period. In other words, the gracing removes the PFD from the prior art BUT GIVES NO RIGHTS. Harmonisation MUST preserve a “file first, disclose later” paradigm.
epi is strongly of the view that NOTHING IS AGREED UNTIL EVERYTHING IS AGREED.
Traditionally, epi has felt that any grace period should have a duration of 6 months preceding the priority date. However, as Council had seen from Mr Filippo Santi’s presentation “Substantive Patent Law Harmonisation - Possible epi Proposal”This presentation was prepared by Mr Filippo Santi, Secretary of HC, with assistance from Fr Gabriele Leissler-Gerstl, the presentation being made by Mr Filippo Santi., HC, having reflected on what had been said recently, especially but not exclusively at Part I of the EPO Symposium on SPLH held on 23rd March 2023, now felt that any grace period should have a duration of 12 months preceding the filing date. This is subject to there being mandatory publication at 18 months from the earliest of the pre-filing disclosure (“PFD”), priority date and filing date.
The Motions passed by epi Council were:
Council agrees that epi is opposed to any kind of grace period,
Council could however consider a grace period as a safety net as part of a harmonised system, and
Council agrees that Question 2 (reading “12 months are usually considered as an acceptable duration for a grace period. Do you agree?”) should be answered “Yes if from the filing date” and that Question 3 (reading “[where] should the grace period be calculated from”) should be answered “The filing date only”.
I revised the draft Answer in line with the Motions agreed by the epi Council at the meeting on 2nd and 3rd May 2023. I filed the epi Answer to the EPO Questionnaire on 5th May, 2023,
On 22nd May, 2023, the EPO held Part II of their Symposium and this was attended on behalf of epi by myself as leader of the delegation, six other members of HC, including Mr Francis Leyder, then the epi Immediate Past President and epi Legal Advisor (Nicole van der Laan). Mr Filippo Santi and I both gave presentations and then, on behalf of epi, answered questions.
During the discussion, I, Mr Francis LeyderMr Leyder said “The prior art effect of PCT applications is not in my opinion an area where best practice can be identified. I believe it is a purely political decision: should the PCT be available as a defensive tool (to create freedom to operate) or should more valid patents be allowed by reducing the amount of prior art?” and others of the epi delegation spoke.
At the conclusion of the Symposium, I gave closing remarks on behalf of epi. Included in what I said was:
epi thanks the EPO for organising this two part Symposium and Ms Sylvie Strobel in particular for her analysis of the replies to the EPO Questionnaire.
epi is willing and able to participate in further discussions relating to SPLH. The positions taken by passed Motions by epi Council are binding on epi but only until such time as the epi Council passes a suitable Motion amending or changing the position previously provided in one or more Motions. Matters generally agreed by epi Council are not binding but rather highly persuasive and could therefore (at least in theory) be changed on behalf of epi in negotiations without the specific consent of epi Council (but would I think require the approval of the epi President).
The epi position on SPLH will continue to be led by the epi Harmonisation Committee (“HC”). HC will be very happy to participate in discussions with the EPO, National Organisations, Sector Group Organisations, pan-European Organisations and any other Organisation and, if felt helpful, individual members of any such Organisations.
I will keep Members of epi fully informed of the progress (or otherwise!) relating to SPLH via further reports in epi Information.
