Report of the European Patent Practice Committee (EPPC)


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


This report covers the period from the last Council meeting in Helsinki to the Council meeting in Sofia.

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, Unitary Patent and Patent Documentation). Additionally, ad hoc working groups are set up when the need arises. Four thematic subcommittees have also been set up (Mechanics, Pharma, ICT and Chemistry). Members of EPPC are also delegates to various meetings organised by the EPO, including meetings under the SACEPO banner.

Membership

Pieter Vandersteen (BE) has resigned from all committee memberships. He was a member of EPPC and he is thanked for his active service.

The BE Council members will propose a BE candidate for election to EPPC.

Pieter was also a member of the Pharma Thematic Group. In light of his resignation, it is proposed that Alain Werner (FR), who was the candidate with the next most votes at the election at C83 (Warsaw), should replace Pieter. Council is requested to agree to this replacement.

Meetings - Past

A report on the following two meetings was not available for the last report of EPPC.

18-22/06/2018 - WIPO-PCT Working Group
The official report on this meeting is attached (Document EPPC 1) (it was only issued in January this year). Manolis Samuelidis as chair of the PCT sub-committee attended Monday to Wednesday. Users were invited to take the floor and present their opinion on correction of erroneously filed application documents. On behalf of epi, Manolis made the attached PowerPoint presentation (Document EPPC 2). A PowerPoint presentation regarding the subjects covered by the PCT sub-committee is available as Document EPPC 3.

30/10/2018 - ICT Thematic Group
The ICT group met with the EPO's directors in the area of ICT on October 30, 2018. The meeting continued to strengthen the already good relationship of the directors with the epi in the area of ICT. The epi was represented by a total of 15 members; the EPO was represented by 19 members, including the COO in the ICT field, Grant Philpott. A specific list of attendees can be taken from the attached minutes of the meeting (for which acknowledgement by the EPO is pending) available as Document EPPC 4.
The main discussion in the meeting revolved around the past amendments to the Examination Guidelines 2018 in the relevant sections for examination of ICT inventions, in particular mathematical methods, artificial intelligence, algorithmic inventions, and related fields. In many cases, the discussion resulted in the EPO's acknowledgement of the potential need to improve the wording of the guideline amendments, so as to clarify certain passages and ensure a consistent examination amongst all mixed-type-claim fields. Such amendment will become part of the 2019 Guidelines.

As further item of discussion a perceived increase in the number of unsubstantiated novelty rejections was raised by the epi delegation.
Lastly the EPO gave a status update on the examination backlog and its QC actions in relation to examination quality.
In the period between the Helsinki Council meeting and the Sofia Council meeting, EPPC members attended the following meetings.

12/11/2018 - Meeting with VP1
A delegation of EPPC members, together with our VP, Heike Vogelsang-Wenke, met with the outgoing VP1, Mr. Casado, at the new EPO building in The Hague. A report on this meeting is present in the attached report of the EPC sub-committee prepared by its Chair, Marjut Honkasalo (Document EPPC 5).

16/11/2018 - Meeting with Biotech Boards of Appeal
As liaison member with the Biotech Committee, I attended a meeting of representatives of the Biotech Committee with the members of the Boards of Appeal dealing with biotech inventions. A report of this meeting will be found in the report from the Biotech Committee.

21/11/2018 - SACEPO-WPG
As usual, epi was well represented at a meeting of the SACEPO Working Party on Guidelines (WPG). epi's preparations for this meeting are extensive and are handled with great efficiency under the leadership of the Guidelines sub-committee's chair, Anette Hegner. Available as Document EPPC 6 is a report of all the activities of epi concerning the Guidelines. The attachments to the report are available as Documents EPPC 7 to 17.

23/11/2018 - Meeting with Members of the Boards of Appeal
A delegation from epi, headed by our Vice-President Heike Vogelsang-Wenke, attended a meeting with the President of the Boards of Appeal and a number of his senior staff. We received a detailed update of the operation of the Boards. The main features were that:

  • The AC has approved a number of increases in the appointments to the Boards, both in 2018 and 2019, so that the staffing numbers of the Boards should increase significantly;

  • The number of appeals has increased, although it was difficult to see any particular trend; and

  • The average pendency time has increased, but it was expected that this would reduce as the new appointments come on line.

There was also a discussion of the new Rules of Procedure, which were further discussed later (see below).

05/12/2018 - Consultation on New Rules of Procedure of the Boards of Appeal (RoPBA)
The Boards of Appeal held a consultation on the proposed new RoPBA in Room 102 of the Isar Building of the EPO. It was well attended. Heike and I were invited to be panel members for the event. It was chaired by Sir Colin Birss. There were formal presentations by members of the drafting committee, then discussions with the panel members and questions from the floor. It was a very interactive event and a number of points against certain aspects of the new RoPBA were made.

Following the meeting, the BoA drafting committee has worked on further revisions to the RoPBA and these have been presented to the Board of Appeals Committee (BOAC) of the AC. It is expected that the new RoPBA will be approved by the AC in June and will come into force on 1st January, 2020. It appears that the only significant change from the previously-published version is that the period for responding to an appeal will be extensible.

07/12/2018 - Case Law Seminar
Members of EPPC have been assisting PEC by presenting topics at a series of Case Law Seminars. These seminars are presented by two epi members and two Board of Appeal members and include a mock oral proceedings.

11/12/2018 - Litigation Committee
As liaison member with the Litigation Committee, I attended the meeting of this committee. A report of this meeting will be found in the report from the Litigation Committee.

17/01/2018 - SACEPO-WPR
The members of the EPC subcommittee attended this meeting. A report of the meeting is in attached Document EPPC 5. A relevant document referred to in that report is available as Document EPPC 18.

24/01/2019 - Quality Subcommittee Meeting
A report on meeting of the Quality Subcommittee, prepared by its Chair, Bogoljub Ilievski, is available as Document EPPC 19. The documents referred to in the report are available as Documents EPPC 20 to EPPC 22.

21-22/02/2019 - Committee on Patent Law
A copy of the agenda for the meeting is attached as Document EPPC 23. The main point of discussion was the patentability of plants produced by essentially biological means, which will be discussed the Council meeting in Sofia (see below).

22/02/2019 - SACEPO-WPG (Biotech)
A special meeting of SACEPO-WPG took place and is reported on in Document EPPC 6.

26-27/02/2019 - EPPC Meeting
A full meeting of EPPC and all the thematic groups was held in the Isar Building at the EPO on 26th and 27th February. A copy of the agenda is available as Document EPPC 24. Due to a computer failure, the Minutes of the meeting are not yet available but will be provided as soon as possible.

On 26th February, the meeting consisted of "normal" EPPC business. On 27th February, the meeting was joined by the President of the Boards of Appeal, Mr. Josefsson, and a number of senior members of the Boards of Appeal. The meeting started with a presentation of the general situation at the Boards by Mr. Josefsson. This was followed by a general question and answer session. Mr. Josefsson did not want to discuss in detail the proposed new Rules of Procedure as they were at that stage undergoing revision. The meeting then split into four groups according to EPPC's four thematic groups and there was in each group a lively discussion between the Appeal Board members and the members of the thematic groups, supplemented by members of EPPC who are not members of the groups. The meeting with the President and members of the Boards was very fruitful.

21/03/2019 - SACEPO-PDI
epi has four delegates to SACEPO-PDI. A personal report from one of the present members is available as Document EPPC 25.

As can be seen from the report, this is a very interesting meeting but is a little removed from the normal activities of patent attorneys. epi has a strong representation on SACEPO-PDI but the delegation can be varied if there is any epi member who has expertise in the areas covered by SACEPO-PDI and wishes to join the epi delegation. If there is anyone on Council or anyone known to a Council member who fits these criteria, please contact me at eppc@patentepi.com.

03/04/2019 - G4(?)/19 Telecon
A Working Group has been formed to prepare an epi amicus curiae brief relating to a yet-to-be-received reference to the Enlarged Board on double patenting. There will be a presentation about this at the Council meeting. The questions which it is believed will be referred to the Enlarged Board are shown in Document EPPC 26.

Meetings - Future

25/04/2019 - G4(?)/19 Meeting
The Working Group on double patenting will meet on this date to provide a framework for epi's brief.

02/05/2019 - Meeting with VP1
A meeting has been arranged to meet the new Vice-President - Patent Granting Process in the new EPO building in The Hague. No agenda is yet available but the main purpose is to start or re-start the meetings of the Thematic Groups with the directors in DG1.

09/05/2019 - SACEPO
The main meeting of SACEPO will take place on the above date and I will attend as part of epi's delegation.

Actions

The main activity of EPPC in the near future will be to deal with the four referrals to the Enlarged Board. G1/19 will be dealt with by the ICT Thematic Group. G2/19 will be dealt with by a Working Group which I will chair. G3/19 will be dealt with by a joint Working Group of Biotech and EPPC. G4/19 will be dealt with by the Working Group referred to above. Presentations on the four referrals will be made at the Sofia Council meeting so that we can have an indication from Council as to the direction to be taken for each amicus brief. The questions for each referral are shown in Document EPPC 26. A copy of the presentation for G2/19 is available as Document EPPC 27*.


* All documents are available at:

https://patentepi.com/r/report-eppc-0219


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