Highlights of EPC 2000 and the London Agreement
On EPC 2000 (starting December 13, 2007):
- Swiss type claims are no longer necessary, e.g. “The use of X for the manufacture of a medicament for treatment of disease Y”.
- Now can claim: “Product X for use for treatment of disease Y.”
- Protocol on Interpretation of Art 69 EPC provides new Article 2 on equivalents: "For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims”
- Prior filed but unpublished EP or EP(PCT) applications may now be cited against all designated states in EPs filed after 13 December 2007 ("rarely important")
- Can now file by reference to a previously filed application stating just filing date ; application number; the Office in which it was filed. Certified copy then due in two months with translation, if necessary.
- Can add or correct priority claims within 16 months from priority date
- No need to file a translation of priority document unless it is relevant to patentability.
- EPO will only search the first invention, so put the most important independent claim first; can no longer pay extra search fees
- EPO now uses same examiner for search and examination. However, unduly broad or speculative claims may not be searched
- Divisionals can be delayed until prior to grant of parent – but not later!!!
- Four months to pay grant fee and file French and German claims translations, but further processing is available.
On The London Agreement:
- No country having English, French or German as an official language can require a further translation.
- For other member countries, no translation of the description may be required provided that it is in a preferred language. However, English is likely to be the preferred language for most countries, translations of the claims into each official language is likely to be required, and enabling legislation is yet to be passed in most countries.
- The Agreement will only apply to EPs granted after it comes into force.
On Reduced Costs:
- Claims Fees - Save $75.00 per claim
- Using EPO as ISA/IPEA for PCT-Euro - Save $500
- Attend to formal requirements after claims agreed - Save - $1500
- Manipulate Renewal fee – pay one central fee
Potential Savings during prosecution ~20%