The changes in the European Patent Convention, generally known under the name EPC2000, will enter into force on 13 December 2007.
Many of these changes relate to the modernising and streamlining of the law, but the most important changes are caused by the adaptation to TRIPs and to the Patent Law Treaty (PLT) . This article focuses on the new procedures for filing a patent application, which now comply with the requirements of PLT.
Art. 5 PLT requires that a filing date shall be accorded to an application on the basis of three simple elements. These elements are specified in new Rule 40(1) EPC as:
a) an indication that a European patent is sought;
b) information identifying the applicant or allowing the applicant to be contacted; and
c) a description or reference to a previously filed application.
This also means that European patent applications can be filed in any language (Art. 14(2) EPC). Of course, a translation in an Official Language (i.e. English, French or German) should be filed afterwards (within two months, Rule 6(2) EPC). The originally filed text, however, remains the authentic text, meaning that translation errors can be repaired.
There is no definition of “language” given in the EPC and it is thus assumed that any language would in fact be possible. However, the European Patent Office (EPO) acknowledges that it cannot accommodate all languages and urges applicants who file an application in a language the EPO is not familiar with, to file a translation as soon as possible. If the applicant does not file a translation of his own motion, then the EPO will issue an invitation to do so.
An applicant who has his place of residence outside the contracting states of the EPC may file an application, but is obliged to appoint a professional representative (Art. 133(2) EPC) for further communication with the Office. Thus, foreign applicants may, for the purposes of obtaining a filing date, file an application with the EPO, but should then appoint a professional representative, also for the act of filing the translation. In practice this would mean that such an applicant would not get an invitation to file a translation, but an invitation to appoint a professional representative.
It will be more problematic if not only the description, but also the indication that a patent is sought and/or the information identifying the applicant are filed in a language the EPO is unfamiliar with. Although the EPO has indicated that it will be diligent in deciphering incoming information in non-EPO languages, in some cases it is conceivable that the EPO will not be able to ascertain whether the requirements of Rule 40 EPC are being fulfilled. If the EPO is able to contact the sender of the information (e.g. because they have the fax number from which the information was sent), it will send a request for more information on what has been filed. If the EPO is not able to contact the applicant, it cannot do anything but wait until the applicant contacts the EPO.
Further, it follows from Rule 40(1) that it is no longer necessary to file claims with the application to establish a filing date. If no claims are filed, the EPO will invite the applicant to file claims with a time limit of two months (Rule 58 EPC). It should be emphasized that late filing of claims has two disadvantages: first, late-filed claims can only be filed in the language of the proceedings (English, French or German) and second, late-filed claims should not contain any added matter (Art. 123(2) EPC). It is to be expected that European Examiners will be very critical with respect to this latter requirement, since compliance with Art. 123(2) is regarded as very important in European case law.
Rule 40 now also enables filing by reference. Again, to obtain a filing date, the requirements of Rule 40(1) (a) and (b) should be fulfilled, and to complete the filing by reference the filing date and number of that application and the office with which it was filed should be stated. Also a statement should be made to the effect that the referenced application will replace the description and any drawings (Rule 40(2) EPC). If the claims of the referenced application are also to be included, this should be indicated at filing. If this is not indicated, the claims will be deemed not to have been filed and can only be filed later, running the risk of non-compliance with Art. 123(2) EPC.
Filing by reference is limited to one single reference. It will therefore not be possible to combine two earlier applications, or, for that matter, to combine a paper description with an application filed by reference. Only filing of a single application by reference together with a paper version of the claims is permitted.
Filing by reference can be useful if the applicant has no time or no opportunity to file a paper description and drawings (and if the application to be filed should be identical to the referenced earlier application). Another example where filing by reference can be used is the filing of divisional applications.
Thus, under the new EPC, filing possibilities are extended. However, some of the new possibilities entail disadvantages or even risks. Continuation of your filing strategy as developed under the “old” EPC is therefore recommended.