01 September 2005

Nearly there with Munich 2000

I am grateful to Axel Horn for pointing out that the UK is the 14th state to ratify the revisions to the EPC. I had always thought we had ratified EPC2000 when the the Patents Act 2004 received royal assent a year ago.

According to the Patent Office's Commencement Page the sections of the new Act that change our law on such things as second medical use, limitation and amendment are supposed to come into force at the same time as the amendments to the EPC come into force. That, as Mr Horn says, is two years after accession of the 15th contracting state.

The really interesting change will be the insertion of a second article into the Protocol on Interpretation of Art 69 EPC (page 71 of Special Edition No. 1 OJ EPO) which seems to import a doctrine of equivalents into the EPC:

"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."

I note that page 62 of the Basic Proposal would also have inserted a third article into the Protocol that looks very much like file-wrapper estoppel to me:

"Article 3
Prior statements
(3) For the purpose of determining the extent of protection, due account shall be taken of any statement unambiguously limiting the extent of protection, made by the applicant or the proprietor of the patent in the European patent application or patent, or during proceedings concerning the grant or the validity of the European patent, in particular where the limitation was made in response to a citation of prior art."


That proposed article was dropped from the final Act. I should be interested to learn why.

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