Report of the European Patent Practice Committee (EPPC)
C. Mercer (GB), Chair
This report was completed on 26th October, 2017 and covers the period from the Munich Council meeting held on 24th and 25th April 2017 (C82) to date.
EPPC and its Structure
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.
During the period covered by this report, EPPC was organised with seven permanent Sub-Committees (EPC, Guidelines, MSBA, PCT, Trilateral & IP5, Quality and Unitary Patent). Additionally, ad hoc working groups were set up when the need arose. Two thematic groups had also been set up.
From the Warsaw Council meeting on 18th November, 2017 (C83), EPPC will consist of one full member per member state and will have the seven permanent Sub-Committees mentioned above. There will then be four thematic groups (ICT, Mechanics, Chemistry and Pharma). As usual, ad hoc working groups will be set up when the need arises.
The Previous Chair
This is the first report to Council from EPPC since Francis Leyder was elected President of epi at C82 and I have taken over as Chair of EPPC. Francis was an excellent Chair of EPPC, 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.
EPPC met on 25th and 26th April, 2017, immediately after C82.
At C82, Francis Leyder was elected as the new President of epi and stepped down as a member of EPPC so that a new member from Belgium could be elected by Council. As Francis had stepped down as an EPPC member, he could no longer be Chair of EPPC. Chris Mercer was elected to chair the Committee until C83 where the election of the members of the new EPPC will take place.
EPPC discussed its new structure (as recently approved by Council at C82) 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 found at http://patentepi.com/en/epi/forum/threads/171 (can be accessed by epi members after login).
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 Sub-Committee), who committed to compile them all in a document to be sent to the EPO. This has now been completed, with input from a number of the members of EPPC, and the document has been sent to the EPO. A copy of the document is attached as Annex 1.This has been well received by the EPO, which intends to use it in its forthcoming discussions with WIPO.
Lastly, EPPC heard brief reports on meetings held with the EPO (including SACEPO Working Party on Quality and SACEPO Working Party on Rules meetings) and prepared for future internal meetings as well as further meetings with the EPO.
EPPC's thematic 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 16th 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 report of the meeting was published in epi Information 3/2017 on pages 12 to 15.
EPO-epi Partnership for Quality Meeting
The annual EPO-epi Partnership for Quality Meeting took place in the main EPO building on 18th May, 2017. The meeting was held as part of the 'Quality for Partnership' program, a continuous dialogue between 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 of some members of the EPPC Sub-Committees on 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 strongly 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 (RoP) 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 (BOAC) of the Administrative Council of the EPOrganisation (AC). Any input to this Working Group is also most welcome.
It became known to epi that the BOAC was going to discuss the RoP and so a letter was drafted, discussed at the 97th Board meeting and agreed with amendments requested by some participants. It was sent to Mr. Josefsson, the new President of the Boards of Appeal, with a copy to the President of the EPO. A copy of the letter can be found on the epi website.
After C83, the usual MSBA will take place at the new Boards of Appeal building in the Haar at the invitation of Mr. Josefsson. (MSBA used to be "Meeting of the members of SACEPO with the Boards of Appeal" but in recent years has changed to a meeting of invited representatives, mainly of epi and Business Europe, with selected members of the Boards. At the request of Mr. Josefsson, this year the epi delegation will be limited to five members, headed by Vice-President Vogelsang-Wenke.) A report on this meeting will be prepared in due course.
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 party to the UPC Agreement, including Germany, France and the UK. The outcome of the "Brexit" referendum had created some uncertainty about the ratification by the UK, but these disappeared when the UK confirmed that it will be ratifying the UPCA and the necessary steps are being taken in the UK. However, the UPC/UP project has now been further delayed by a challenge to the UPC lodged with the German Constitutional Court. The Constitutional Court is waiting for comments from the German Government and a number of other organisations. The deadline for receiving these comments has been postponed from 31st October to 31st December. When the Constitutional Court will issue a decision is highly unpredictable. In light of this, the plans regarding entry into force of the unitary patent system have been put on hold.
In the period covered by this report, there have been two meetings of the Select Committee of the AC, one in The Hague and one in Munich. These have shown that the EPO is ready to implement its obligations under the UP Regulations and has been taking the necessary steps to ensure that data is transferrable between the EPO and the relevant member states. epi has been present at both of these meetings and continues to raise concerns about the top-up search for prior national rights (see also WPR report below), SPCs, the location of a (principal) place of business, training and payment of compensation.
The series of UP/UPC seminars initiated by epi resumed in May, with seminars in Copenhagen, Basel, Barcelona, Manchester, Brussels, Stockholm and Bern. Shortly before C83, there will be a seminar in Eindhoven. After this seminar, the programme will be suspended until the outcome of the challenge at the German Constitutional Court is known.
The Working Group set up by EPPC to deal with this reference to the Enlarged Board (EB) finalised epi's amicus curiae brief, which was filed with the EB. After its filing, the EB issued a communication setting out some preliminary views on the matter. epi's Working Group prepared and filed a further submission. Oral proceedings on the referral were held and were attended by Gaby Leissler-Gerstl. A short report on the oral proceedings is present in the members' area of the epi website. A decision of the EB is now awaited. The brief and the submission are available on the EPO Register for this case.
The Guidelines Sub-Committee met on 13th and 14th September, 2017 and went through the proposals from the EPO for amendment of the Guidelines, which was a very intensive effort. Some points were so complex that the discussion had to continue afterwards electronically. The Chair of the Sub-Committee has gathered together all the comments and has provided them to the EPO. A copy is available from the epi Secretariat if anyone would like to see them.
This year, the EPO chose to focus on amending the sections of the EPC Guidelines relating to "presentation of information" and timeliness. The amendments suggested by the EPO to the PCT Guidelines are mainly of a formal nature.
The Guidelines Sub-Committee aims to make the EPC and PCT Guidelines as clear and comprehensive as possible, to ensure that they reflect the EPC and case law and to ensure that the developed procedures are fair to all parties (applicants, patentees, opponents and third parties).
The SACEPO WPG will be held on 21st November, 2017.
A summary of the conclusions of the 16th Meeting of the SACEPO Working Party on Rules can be found on the epi website.
The 17th meeting of the SACEPO Working Party on Rules was held on 17th October, 2017. A brief note of the topics discussed can be found on the epi website.
One major topic was the proposal by the EPO to increase the appeal fee by about 20% but with no increase for SMEs and similar. The epi delegates spoke out against this and did so again at the recent meeting of the Budget and Finance Committee (BFC) of the AC (see EPO Finances Committee report). In light of the urgency of the matter, some members of EPPC and the EPO Finances Committee produced a letter which was sent to the AC. This was based on a previous submission made by epi in connection with the then proposals for reform of the Boards of Appeal. A copy of the letter can be found on the epi website.
Another major topic was "Early Certainty with Flexibility" which is addressed in a separate paper.
ICT Thematic Group
The ICT thematic group will be holding its annual meeting with the EPO on 8th November, 2017, just before C83.