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Changes in UK patent law as a result of revised European Patent Convention Implementation

The revised version of the European Patent Convention (EPC 2000) comes into force on 13 December 2007. It is proposed that sections 1-5 of the Patents Act 2004 will be commenced on the same date to implement changes brought about by EPC 2000. The changes relate to the following:

Methods of treatment or diagnosis

Methods of treatment or diagnosis will no longer be treated as un-patentable due to a lack of industrial applicability, they will lack patentability in their own right. The law will also be simplified and clarified with regard to substances or compositions for use in such a method to ensure continued consistency between United Kingdom (UK) patent law and European Patent law.

Post-grant amendment

EPC 2000 introduces a new central amendment process for post-grant amendment of European patents. This process will proceed at the European Patent Office and the amendment will be effective in all Contracting States designated by the European Patent. It will still be possible to amend a European patent (UK) at the UK Intellectual Property Office wherein the amendment will only be effective in the UK. The provisions on relief for a partially valid patent or revocation of a patent are also amended to take account of the new central amendment process.

Prior art effect of European Patent applications

EPC 2000 changes the procedure for designation of Contracting States when filing a European Patent application. All Contracting States will be automatically designated on filing and removal of a designation prior to publication of the application will no longer affect the prior art status of the European patent application for assessing novelty of an invention under Article 54(3). Similarly under section 2(3) of the Patents Act 1977, removal of the UK designation prior to publication will not affect the prior art status of a European patent application. This means that every European patent application will automatically represent a potential section 2(3) document.

Review by the Enlarged Board of Appeal

The revised European Patent Convention will provide for a review of decisions by the Board of Appeal by an Enlarged Board of Appeal. However, in such a review the decision of the Board of Appeal is not suspended for the duration of the review. Provision is therefore made for third party terms allowing third parties who have, in good faith, commenced working a patent subsequent to a decision of the Board of Appeal to continue to do so after restoration of the patent. Some changes to UK patent law are required to ensure that such protection is available to third parties where a European patent has been revoked or refused and then restored or reinstated. The changes ensure that there is consistency between the treatment with respect to restored or reinstated European patents and reinstated or resuscitated national patent applications.

Conversion of EP(UK) applications

Transitional provisions associated with setting up of the EPO in the 1970's are removed and provisions for conversion of a European patent application to a national application when a European patent application is deemed to be withdrawn because the application has not been forwarded to the EPO within the required time are restated.

Further explanation of all these provisions can be found in the Explanatory Notes External Link to the 2004 Act, which are available (along with the 2004 Act External Link itself) from the OPSI website.