Report of the European Patent Practice Committee


Francis LeyderF. Leyder (BE), Chair


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.

This report completed on 12 August 2016 covers the period since my previous report dated 16 May 2016 published in epi Information 2/2016.

1. European patent with unitary effect in the participating Member States

On 18 May 2016, the EPO published on its website an invitation to the patent community to test and give feedback until 31 July 2016 on a new "Unitary Patent DEMO" plug-in for the online registration of unitary effect. This plug-in enables users of the Online Filing software to simulate the drafting, signing and sending of a request for unitary effect and to file subsequent documents in a demonstration mode.

On 20 May 2016, the EPO organised a Workshop on the technical implementation of the unitary patent system. OCC represented epi.

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. The outcome of the “Brexit” referendum has created some uncertainty about the ratification by the UK.

The 20th Select Committee meeting was scheduled on 21 September, and has been postponed to 25 October 2016.

In the meantime, the series of UP/UPC seminars initiated by epi has successfully continued, in Paris (29 June) and in London (11 July). The schedule of the next seminars is being reviewed.

2. PCT WG9

The PCT Working Group met in Geneva from 17 to 20 May 2016, with a PCT User Meeting in the morning of 18 May. The working documents (including the summary by the Chair) are available on the WIPO website: http://www.wipo.int/meetings/en/details.jsp?meeting_id=39464
A report is attached.

The proposals endorsed by the PCT WG will be submitted for approval to the PCT Assembly that will take place in the 56th Series of Meetings of the Assemblies of the Member States of WIPO that will take place from 3 to 11 October 2016. The PCT Assembly documents are or will be available on the WIPO website: http://www.wipo.int/meetings/en/details.jsp?meeting_id=39951

The proposals relate essentially to the approval of the Turkish Patent Office as ISA and IPEA, and to the amendment of Rule 45bis.1(a) to extend the time limit for requesting supplementary international search from 19 to 22 months from the priority date.

3. TOSC 82

The 82nd meeting of the Technical and Operational Support Committee on 19 May 2016 included an item on information exchange on ISO 9001 certification and Quality Management. Users (epi and BusinessEurope) had been invited to make presentations on “Quality Management Systems, their certification and user’s expectations”.

4. SACEPO 48

The agenda of the 48th meeting of SACEPO on 21 June 2016 contained the following items with relevance to the EPPC:

2. President's report on the development of the European patent system
Each delegate found on his table an A3-size copy of the poster prepared for and shown at the Search Matters and Examination Matters events. The pdf version is available for download in the Documents/Member section of the epi website.

3. Timeliness in the EPO: Early Certainty from Examination and Opposition
These « Early Certainties » had already been presented at the SACEPO/WPR meeting of 7 April 2016 (cfr my previous report). A Notice from the EPO concerning the opposition procedure as from 1 July 2016 has been published in the OJ EPO 5/2016, A42.

4. Refunds of fee for examination
This topic had also been discussed at the SACEPO/WPR meeting of 7 April 2016 (cfr my previous report). Decision CA/D 4/16 of the Administrative Council amending Article 11 RRF has been published in the OJ EPO 5/2016, A48.

5. Fee payment methods
The EPO presented again their intention, already expressed at the SACEPO/WPR meeting of 7 April 2016 (cfr my previous report), to limit the filing of a debit order to “online means”.

In general, the users repeated their wishes for making payments user-friendlier. The EPO made some promises to implement alternatives.

In particular, having been alerted by one of the EPPC members, I pointed out that the EPO removed the possibility of paying by cheque in 2008, arguing in particular that the use of cheques “stands in contrast to common business practice" (CA/101/07 Rev. 1, item 7), but continues to reimburse using cheques.

6. Reform of the EPO’s Boards of Appeal
See item 8 below.

7. IP5 Projects: Global Dossier, CPC, PPH
Relevant to the EPPC was the report on the various PPH programs. The EPO announced an expansion of the EPO PPH activities, with continuation of the IP5 PPH trial, promotion of the PCT-PPH, and preparation of new bilateral PPH pilot programmes (Australia, Colombia).

9. Update on PCT matters
The EPO reported on their work as ISA and IPEA, reminded us of some changes already implemented, and announced that all IP5 Offices would participate in Pilot Phase 3 of the Collaborative Search & Examination, expected to be launched mid-2017.

10. Unitary patent protection – progress report

5. PAOC thematic group

Ten epi delegates of the PAOC thematic group of the EPPC (pure and applied chemistry, including pharmaceuticals) met again with thirteen EPO representatives (mainly Directors in that field) on 22 June 2016. The report had not yet been finalised at the time of preparing the present report.

Examples of the specific topics discussed were use claims containing the feature “non-therapeutic” and whether experimental evidence of a second medical use needs to be included in the priority application. Many topics of more general interest were discussed.

The epi delegates concluded that the meeting was very useful again, they appreciated the open and cooperative atmosphere, and they hoped such a meeting could be repeated on an annual basis.

6. Independence of the Boards of Appeal

The Administrative Council approved a comprehensive package of reform of the Boards of Appeal on 30 June 2016. The decisions (CA/D 5/16, 6/16, 7/16 and 7/16) and the preparatory documents (CA/29/16 Rev.1 and CA/43/16 Rev.1) are available on the EPO website: http://www.epo.org/about-us/organisation/documentation/ac-documents.html

7. IP5

IP5 announced on 1 August 2016 a common PPH request form http://www.fiveipoffices.org/activities/ws/ip5pph.html

8. Guidelines sub-committee

The epi delegates to the SACEPO/Working Party on Guidelines received the draft 2016 Guidelines for review in preparation of the annual meeting in the autumn. The sub-committee will meet on 15 and 16 September to discuss the draft and set up a list of further proposed amendments.

9. ITC thematic group

The ITC thematic group of the EPPC (Information and communications technology) will meet again with the EPO Directors in that field on 21 September 2016.

Guidelines

The EPPC urges the readers of this journal to address at any time to its Guidelines Sub-Committee at eppc@patentepi.com any comments regarding the Guidelines for Examination in the European Patent Office https://www.epo.org/law-practice/legal-texts/guidelines.html or suggestions to improve them.

The same applies to the Guidelines for Search and Examination at the EPO as PCT authority https://www.epo.org/law-practice/legal-texts/guidelines-pct.html.