Report of the European Patent Practice Committee
F. Leyder (BE), Chair
This report completed on 2 November 2016 covers the period since my previous report dated 12 August 2016 published in epi Information 3/2016.
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 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.
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 has created some uncertainty about the ratification by the UK. The entry into force of the unitary patent system will most likely be delayed.
The Select Committee held its 20th meeting in Munich on 25 October 2016.
The Committee noted the results of a questionnaire on national measures accompanying the implementation of the Unitary Patent.
It further noted an oral report given by the Office on the technical, namely IT, implementation of the Unitary Patent and on pre-certification of the Unitary Patent under ISO 9001.
During a closed session, the Committee approved administrative instructions relating to the distribution of fees amongst the participating member states and noted that this completed the legal preparation of the Unitary Patent.
The next meeting 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.
In the meantime, the series of UP/UPC seminars initiated by epi has successfully continued, in Milan (25 October) in Prague (8 November) and Hamburg (7 December). The schedule of the next seminars is still under review.
2. Meeting with TWPAA
On 12 September 2016, the undersigned participated in the meeting with a delegation of the Taiwan Patent Attorneys Association and made a short presentation on the unitary patent.
3. 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 met on 15 and 16 September 2016 to discuss the draft and set up a list of further proposed amendments.
The lists have been sent to the EPO, in advance of the meeting of the SACEPO/Working Party on Guidelines that took place on 14 November 2016.
4. ICT thematic group
epi delegates of the Information and Communication Technologies (ICT) thematic group of the EPPC met again with EPO representatives (mainly Directors in that field) on 21 September 2016. The report had not yet been finalised at the time of preparing the present report.
It can be said to be a positive result of these meetings that the group actively contributed to the preparation of the epi comments of the draft 2016 Guidelines and generally welcomed the recent and proposed amendments of the Guidelines relating to computer-implemented inventions.
5. PCT Union Assembly
The PCT Union Assembly met in Geneva, as one of the 56th Series of Meetings of the Assemblies of the Member States of WIPO that took place from 3 to 11 October 2016.
The Assembly essentially appointed the Turkish Patent Office as ISA and IPEA, and approved 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.
The PCT Assembly documents are available on the WIPO website: http://www.wipo.int/meetings/en/details.jsp?meeting_id=39951
6. TOSC 83
The 83rd meeting of the Technical and Operational Support Committee took place on 3 November 2016. The agenda includes two items directly relevant to the work of the EPPC, namely Quality at source and Quality at the EPO. Bogoljub Ilievski and the undersigned will represent epi.
7. SACEPO/WPR 15
A meeting of the SACEPO/Working Party on Rules has been summoned on 15 November 2016. In addition to several agenda items for information, the agenda includes four main topics:
2. Corrective actions - clarification of Rules 51 and 162 EPC (aiming at re-establishing the EPO’s long-standing practice in view of decisions T 1402/13 and J 11/12)
3. Fee payment methods (update on the changes as from 1 November 2016 [see OJ] and changes expected in the first half of 2017: (i) Rejection of a debit order ("Validation tool") (ii) Online management of deposit accounts (iii) Applicability of Automatic Debiting to the current exceptions provided by the ADAs)
4. Entry into the European Phase (preliminary discussion on the possibility to delay entry in the European phase from 31 to 34 months, with a corresponding reduction of the period for replying to the Rule 161/162 communication)
5. Update on Early Certainty (with further proposals: telephone interviews as first action; positive statements and suggestions; summons to Oral Proceedings as first action in examination; preliminary opinion accompanying partial search results; further harmonisation in the treatment of auxiliary requests in examination)
8. CPL 47
The 47th meeting of the Committee on Patent Law took place on 21-22 November 2016. The agenda includes two EPPC-related items:
- The patentability of plant-related inventions
- Amendments to the Implementing Regulations to the EPC – Clarifications of Rule 51 and Rule 162 EPC (see above).
9. G1/16 (disclaimers)
Board 3.3.09 referred in decision T437/14 three new questions to the Enlarged Board of Appeal, relating to disclaimers, more precisely relating to the relationship between G1/03 and G2/10:
- Is the standard referred to in G 2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC, i.e. whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed, also to be applied to claims containing undisclosed disclaimers?
- If the answer to the first question is yes, is G 1/03 set aside as regards the exceptions relating to undisclosed disclaimers defined in its answer 2.1?
- If the answer to the second question is no, i.e. if the exceptions relating to undisclosed disclaimers defined in answer 2.1 of G 1/03 apply in addition to the standard referred to in G 2/10, may this standard be modified in view of these exceptions?
The EPPC will consider at its next meeting (17 November 2106) whether to set up a dedicated working group for preparing an amicus curiae brief.