Report of the European Patent Practice Committee (EPPC)


C. Mercer (GB), ChairC. Mercer (GB), Chair


This is the first report from EPPC since Francis Leyder was elected as President and I have taken over as Chairman of EPPC. Francis was an excellent Chairman of EPPC and led us all with a great deal of energy and insight and provided us with the benefit of his encyclopaedic knowledge of everything to do with the EPC. He will be a hard act to follow. However, I hope that, with the support of the members of EPPC, past and present, I will be able to follow Francis' lead. I have been a member of EPPC on a number of occasions in the past and have been in particular involved in the SACEPO Working Party on Rules and the meetings with the PAOC Directors (see below). I have had a great deal of experience in prosecuting applications, oppositions and appeals at the EPO and I trust that this experience will serve EPPC and, through it, epi well while I am Chairman.

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 seven permanent sub-committees (EPC, Guidelines, MSBA, PCT, Trilateral & IP5, Quality and Unitary Patent). Additionally, ad hoc working groups are set up when the need arises. Two thematic groups have also been set up.

EPPC Meeting

EPPC met on 25 and 26 April, right after the C82 epi Council meeting.

At the C82 epi Council meeting, Mr Francis Leyder was elected as the new President of the epi. Therefore, Mr Leyder stepped down as Chair of the EPPC. Mr Chris Mercer will chair the Committee until the next C83 epi Council meeting (to be held next 18 November 2017) where the election of the members of the EPPC will take place.

The EPPC discussed its new structure (as recently approved by the epi Council at its C82 meeting) and had an exchange of views with Mr John Beatty (Director Patent Procedures Management, EPO) on non-unity matters and Early Certainty. Mr. Beatty has kindly provided us with copies of the slides he presented at the meeting and these slides can be accessed by epi members after login at http://patentepi.com/en/epi/forum/threads/171. The EPPC further reviewed the PCT International Search and Preliminary Examination Guidelines. In particular, it analysed the examples concerning Unity of Invention provided in Chapter 10 with the aim of making proposals for the forthcoming Guidelines update. The Committee agreed to send further comments to Mr Emmanuel Samuelides (Chair of the PCT EPPC Sub-Committee), who committed to compile them all in a document to be sent to the EPO. Lastly, the EPPC heard brief reports on meeting held with the EPO (including SACEPO Working Party on Quality and SACEPO Working Party on Rules meetings) and prepared future internal meeting as well as further meetings with the EPO.

PAOC Meeting

EPPC's special interest group on pharma applications held its annual meeting with the Directors of the Cluster concerned with Pure and Applied Organic Chemistry (PAOC) in Munich on 16 May 2017.

The examiners in this Cluster deal primarily with pharmaceutical chemistry but also with cosmetics and similar subjects as well as subjects overlapping with biotechnology. The EPO regards this meeting as very important, as can be seen from the fact that the meeting was attended by one Principal Director, one Director of Operations, 8 Directors and two Senior Experts. They were very well briefed and provided some very useful guidance on a number of topics. There were also 11 people from epi, including our President.

The organiser of this meeting, Ruurd Jorritsma, gathered a number of topics and designated one of epi's members to present each topic. These were sent to the EPO well in advance so that the EPO could prepare for the meeting. As a new feature this year, the EPO sent a number of topics to us for our comments. All these topics were discussed very frankly and we are grateful to the EPO for such good discussions.

The topics discussed included Article 53(c) in relation to methods of using a sub-assembly, non-surgical methods and the difference between cosmetic and therapeutic uses, PCT searches for methods of treatment, plausibility in pharma cases, Article 123(2) in relation to combining dependent claims and ranges, toxic priorities, procedural matters, both in general and specifically relating to opposition procedures, amendment of the description and unity of invention. A full report of the meeting will be made available as soon as possible.

EPO-epi Partnership for Quality Meeting

The annual EPO-epi Partnership for Quality Meeting between EPO and epi took place in the main EPO building on 18th May. The meeting was held as part of the 'Quality for Partnership' program, a continuous dialogue between the epi and the EPO by means of which both organizations exchange their views and update each other on quality matters.

The delegation from the epi was composed by some members of the EPPC sub-committees EPC and Quality and was headed by the epi President, Francis Leyder. The delegation from the EPO included Directors from DG 1 (Operations), DG 2 (Operational Support) and DG 5 (Legal/International Affairs) and was headed by Vice-President Raimund Lutz.

The EPO highly stressed the importance of user feedback, remarking on the valuable contributions provided by epi in this regard. epi welcomed the opportunity to discuss further enhancements and seize the occasion to encourage its members to make use of the feedback mechanisms and bring their input.

The presentations and materials shown by the EPO have been kindly provided to the epi for further distribution among its members and can be accessed by epi members after login at http://patentepi.com/en/epi/forum/threads/171.

Working Group on Article 123(2) EPC

A Working Group to study the application by the EPO, in particular the Boards of Appeal, of Article 123(2) EPC has been set up. This is chaired by Conor Boyce and will be looking to find examples of good and bad application of Article 123(2). Any input to this Working Group is most welcome.

Working Group on the Rules of Procedure of the Boards of Appeal

A Working Group to study the Rules of Procedure of the Boards of Appeal has been setup. This is chaired by myself. It is aimed at looking at the present RoP to develop suggestions for amendment in advance of any changes being made by the Boards of Appeal Committee of the Administrative Council. Any input to this Working Group is also most welcome.

If you have any questions/concerns/issues you would like to raise/input for the Working Groups relating to any of the topics referred to above, please send an email to eppc@patentepi.com.