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Act revising the Convention on the Grant of European Patents

Act revising the Convention on the Grant of European Patents (European Patent Convention), of 5 October 1973, last revised at 17 December 1991.

The European patent system is regulated by the European Patent Convention (EPC) signed in Munich in 1973. The EPC is an intergovernmental agreement that provides for the establishment of the European Patent Organisation. This comprises the European Patent Office (EPO) and its Administrative Council (AC) in which all contracting states to the EPC are represented. The aim of the Convention is to make the patenting of inventions in these contracting states easier, cheaper and more reliable by creating a single patent procedure on the basis of a uniform body of substantive patent law. The resultant patent is, in effect, a bundle of national patents obtained using a single application and grant procedure. As of 1 July 2002, the EPC has 24 contracting states.1

In November 2000, a Diplomatic Conference of the European Patent Organisation successfully adopted a revised text of the EPC. This is the first major revision of the Convention since its creation in 1973. The changes concern:

(i) Substantive patent law:

The Conference agreed that, in future, patents would be available for further medical uses of known pharmaceutical compounds. It also clarified and strengthened the extent of protection conferred by European patents. A mechanism whereby contracting states can conclude special agreements amongst themselves in the interests of improving efficiency or reducing cost or administrative burden was approved. It was also decided that the EPC contracting states should meet periodically (e.g., every 5 years) to review how well the system is performing.

(ii) New and more efficient procedures at the EPO:

The AC has been given a new limited power to amend the EPC to ensure that the EPO can keep pace with changes in the international IPR (intellectual property rights) system and in WIPO (World Intellectual Property Organisation). This new power is balanced by the safeguard that changes in the EPC cannot be implemented until the contracting states have enacted them. A diplomatic conference of the contracting states of the EPO will still be required to make changes to the EPC other than those arising from WIPO and/or international IPR issues. A new procedure was agreed to give patent owners the option of limiting (or revoking) the protection afforded by their patents via a central one-stop procedure before the EPO. The EPO also now recognises the right of the patent owner to limit the scope of his patent in the course of legal proceedings. The EPO Enlarged Board of Appeal will have greater power to review cases to ensure consistency and quality in procedures. In the interest of speeding up procedures, it was also agreed that the Office could require an applicant to provide copies of any prior art documents referred to in their application [or its national or regional equivalent(s)].

(iii) Streamlining EPC:

The remaining changes to the Convention were proposed as a means to slim down the number of EPC Articles and to move as much as possible of their content to the Implementing Regulations. This is important as in future changes to the EPC will require a diplomatic conference involving up to 30 states once all the accession states have joined the EPC. Such conferences will thus become increasingly cumbersome and will only be possible when significant changes to the EPC are required. These changes also simplify the patent grant procedure by removing references to where certain tasks will be performed. The application process has been made easier, for example, applicants will be able to file their application in any language and will have more time to file the required translation of the application into an official EPO language.

Purpose

The purpose of this revision is to bring about a modernisation and reform of the European patent system. The changes clarify a number of issues regarding what is and what is not patentable. Greater account has been taken of the needs of users with the creation of the new limitation procedure and the development of a review mechanism for Board of Appeal decisions. Recognition is given to the need for the European Patent Organisation to be more firmly within the political responsibility of the contracting states by the agreement to hold a regular conference of ministers.

Implementation

The Revision Act is open to ratification or accession by the EPC contracting states (24 as from 1 July 2002, see footnote 1). The Czech and Slovak Republics, Bulgaria and Estonia deposited their instruments of accession to the EPC in April 2002 and the EPC entered into force for these states on 1 July 2002. This starts the clock running on the ratification process. The revised text of the EPC will enter into force two years after fifteen contracting states have ratified the Revision Act or acceded to it. But where all states have ratified or acceded before that time, the revised text will apply three months after the last ratification or accession if this is earlier.

Primary legislation will be required to amend some patent national legislations. Failure to amend these patent legislation according to the above timetable will result in the country being expelled from the Convention.

Author: international

Mentioned in these Entries

Patents, country.