issn 1434-8853 march 2017

Information 1 17

Institut der beim Europäischen Patentamt zugelassenen Vertreter

Institute of Professional Representatives before the European Patent Office

Institut des mandataires agréés près l’Office européen des brevets

ISSN 1434-8853 March 2017

®

5 Results of the Election to the 18th Council

21 Committee Reports

31 Forthcoming Educational Events

33 Decision T102/08 and the 2016 Guidelines

35 Annual meeting of epi (EPPC) delegation with EPO directors

37 The Long-Awaited European Patent with Unitary Effect and ad hoc Unified Patent Court: United Kingdom shows goodwill for driving the patent package to entry into force

Dr. Hans-Rainer Jaenichen is amolecular biologist, German

Patent Attorney and ProfessionalRepresentative before the EuropeanPatent Office. Since 1990 he is partnerin the law firm Vossius & Partner. Inthe course of his work as a PatentAttorney he presented several lecturesand publications concerning issuesrelated to the industrial propertyrights. Furthermore he has publishedthe book “From Clones to Claims”about the jurisdiction of the Boardsof Appeal of the EPO in the field ofgenetical and pharmaceutical inventi-ons. Since his youth he has made pen-cil drawings, oil paintings, posters,photos and then later digital moviesand slideshows of several subjects. Asof 2013 he started to paint again oilpaintings, which are a reminiscenceof his posters in the 70’s , which arepainted with tempera colours on card-board and which are showing popand rockstar idols. The cover pictureof the journal is called “Icon #2,Marsha Hunt” and is one of the firstnew pictures which have been paintsince 2013. The row of these workswill be continued.

Dr. Hans-Rainer Jaenichen istMolekularbiologe sowie deut-

scher Patentanwalt und zugelassenerVertreter beim EPA. Seit 1990 ist erPartner in der Kanzlei Vossius & Part-ner. Im Rahmen seiner Tätigkeit alsPatentanwalt hat er zahlreiche Vor-träge und Veröffentlichungen zu The-men des gewerblichen Rechtsschut-zes gestaltet und das Buch „FromClones to Claims” über die Rechtspre-chung der Beschwerdekammern desEPA im Bereich der gentechnologi-schen und pharmazeutischen Erfin-dungen verfasst. Er hat seit seinerJugend Bleistiftzeichnungen, Ölbilder,Plakate, Fotos und später digitaleFilme und Diashows zu vielseitigenThemen angefertigt. Ab 2013 hat erwieder begonnen Ölbilder zu malen,die eine Reminiszenz sind an seine inden 70er Jahren auf Karton mit Tem-perafarben gemalten Plakate, diePop- und Rockstar-Idole zeigten undzeigen. Das Foto auf der Titelseite derAusgabe dieser Zeitschrift hat denTitel „Icon #2, Marsha Hunt” und isteines der ersten neuen Bilder, die ab2013 entstanden sind. Die Reihe die-ser Arbeiten wird fortgesetzt.

Dr. Hans-Rainer Jaenichen est biolo-giste moléculaire, avocat des bre-

vets allemand et mandataire agréé prèsl'OEB. Depuis 1990, il est partenaire ducabinet d‘avocats Vossius & Partner.Dans le cadre de son activité en tantqu’avocat des brevets, il a tenu de nom-breuses conférences et contribué à denombreuses publications sur la propriétéindustrielle. Il a également fait paraîtrele livre « From Clones to Claims » sur lajurisprudence des chambres de recoursde l’OEB dans le domaine des inventionsbiotechnologiques et pharmaceutiques.Dès son enfance, il a produit des dessinsau crayon à papier, des peintures àl’huile, des affiches, des photos et, plustard, des films numériques et des dia-poramas sur des sujets divers. À partirde 2013, il a recommencé à peindredes toiles à l‘huile, qui sont une rémi-niscence à ses posters réalisées dans lesannées 70 sur carton avec de la peintureà la tempera, et qui représentent desRockstars et des popstars. La photoreprésentée sur la couverture dunuméro de ce journal est intitulée « Icon#2, Marsha Hunt » et est une des pre-mières peintures produites à partir de2013. Cette série de travaux sera poursuivie.

Dr. Hans-Rainer Jaenichen

Cover:Icon #2 Marsha Hunt(Munich 2013)This picture painted byMr. Hans-Rainer Jaenichen (European Patent Attorney, DE) was part of the epi Artists Exhibition 2015 at the EPO, Munich

Information 01/2017 Table of Contents 3

Editorial . . . . . . . . . . . . . . . . . . . . . . . . . 4

I – Information concerning epi

Results of the Election to the 18th Council . . . . . . . 5Election Results . . . . . . . . . . . . . . . . . . . . . . 6Inventor Assistance Program (IAP) – Meeting between WIPO and the epi in Munich . . . . . . . . . 20Important Information to all epi Committee Members . . . . . . . . . . . . . . . . 41

Committee Reports

Report of the European Patent Practice Committee (EPPC), by F. Leyder. . . . . . . . . . . . . 21Report of the Harmonisation Committee (HC), by F. Leyder. . . . . . . . . . . . . . 27Report of the Litigation Committee (Litcom), by A.Casalonga . . . . . . . . . . . . . . . . . . . . . 28Minutes of the Meeting of the Committee on Biotechnological Inventions, by S. Wright . . . . . 29

Education and Training

Forthcoming Educational Events . . . . . . . . . . . . 31epi Studentship Admissions Committee . . . . . . . . 31

Information from the EPO

Contact Data of Legal Division . . . . . . . . . . . . . 32

Information from the Secretariat

Deadline 2/2017 . . . . . . . . . . . . . . . . . . . . . 4Next Board and Council Meetings . . . . . . . . . . . 32epi Disciplinary bodies and Committees . . . . . . . . 42epi Board . . . . . . . . . . . . . . . . . . . . . . . . 47

II – Contributions from epi Members and other contributions

Articles

Decision T102/08 and the 2016 Guidelines, Collective paper by the CII Thematic Group (Computer Implemented Inventions) of the EPPC . . . 33Pure and applied organic chemistry (PAOC), Annual meeting of epi (EPPC) delegation with EPO directors, by R. Jorritsma. . . . . . . . . . . . . . 35The Long-Awaited European Patent with Unitary Effect and ad hoc Unified Patent Court: United Kingdom shows goodwill for driving the patent package to entry into force, even though roadblocksare still lying down the way, by P. Marollé . . . . . . . 37

Table of Contents

We had a thought aboutPlato’s Republic and

his discussion of the dialogueof Socrates, in whichSocrates asserts that ademocracy can become‘over-ripe’ as it develops andmatures. Plato, as we under-stand him, is generally infavour of the democraticideal insofar as it leads tomultiple freedoms and equal-ity for the population it

serves. But such a system has flaws which Plato lists ineloquent detail. Those flaws are essentially political inconsequence, which we shall not elaborate here.

Suffice it to say that our Institute is set up on democraticlines. We are sure that our readers are grateful that thatis the case. Moreover, and satisfyingly, our epi democ-racy cannot become ‘over-ripe’ as it is not open- ended.It currently has a term of three years, after which thereis an election of a new Council and Officers, this Councilin turn electing new Committees. This year being anelection year, and with due deference to the previousCouncil, we look forward to the democratically electednew Council, officers, and Committees bringing a freshimpetus to the Institute, in their full knowledge thatthey have but a three-year term, and so cannot over-reach the democratic process owing to the time con-straint.

We are sure that Plato would approve!

Editorial

T. Johnson (GB), Editorial Committee

Information 01/2017Editorial4

Nächster Redaktionsschluss für epi Information

Next deadline for epi Information

Prochaine date limite pour epi Information

Informieren Sie bitte den Redaktions -ausschuss so früh wie möglich überdas Thema, das Sie veröffentlichenmöchten. Redaktionsschluss für dienächste Ausgabe der epi Informationist der 19. Mai 2017. Die Dokumente,die veröffentlicht werden sollen,müssen bis zum diesem Datum imSekretariat eingegangen sein.

Please inform the Editorial Committeeas soon as possible about the subjectyou want to publish. Deadline for the next issue of epi Information is19th May 2017. Documents for pub-lication should have reached the Sec-retariat by this date.

Veuillez informer la Commission derédaction le plus tôt possible du sujetque vous souhaitez publier. La datelimite de remise des documents pourle prochain numéro de epi Informa-tion est le 19 mai 2017. Les textesdestinés à la publication devront êtrereçus par le Secrétariat avant cettedate.

Terry Johnson

Information 01/2017 Election Results 5

Mitglieder des Instituts, die gegen das Wahlergebnis Ein-wände erheben möchten, mussen ihre schriftlichen Ein-wände rechtsgultig unterzeichnet bis spätestens 29. März2017 beim Sekretariat des Instituts einreichen. Spätereingehende Einwände werden nicht berucksichtigt.

Ich danke den Mitgliedern des Wahlausschusses, denHerren M.A. Muller, P. Barrett, und A.Vilhjálmsson sowieFrau V. Pröll (epi Sekretariat) fur ihren Einsatz.

Ergebnisse der Wahl zum 18. RatHinweis

Members of the Institute wishing to object against theelection results must submit their written objection dulysigned to reach the Secretariat of the Institute by 29 March2017 at the latest. Any objections reaching the Instituteafter this date will not be taken into consideration.

I thank the members of the Electoral Committee, Messrs.M.A. Muller, P. Barrett, A.Vilhjálmsson and Ms V. Pröll fromthe epi Secretariat for their commitment.

Results of the Election to the 18th CouncilNotice

Les membres de l'Institut désirant contester les résultatsde l'élection doivent faire parvenir leurs objections écritesdûment signées au Secrétariat de l'Institut avant le 29mars 2017 au plus tard. Toute objection parvenant à l'In-stitut après cette date ne sera plus prise en considération.

Je remercie les membres de la Commission Electorale, MM.M.A. Muller, P. Barrett, et A.Vilhjálmsson et Mme. V. Pröll(epi Secrétariat) pour leur engagement.

Résultats de l'élection au 18 ConseilNote

João Pereira da CruzGeneralsekretär / Secretary General / Secrétaire Général

Erläuterung * als stellvertretendes Mitglied

zur Wahl

** Losentscheid bei gleicherStimmenzahl

+ nominiert im wieder eröffnetenNominationsverfahren

Legend* stood as substitute only

** tie vote position decided by lot

+ nominated in reopenednomination procedure

Légende* éligible comme suppléant

uniquement

** classement par tirage au sortà égalité de voix

+ nominé dans la procedure denomination re-ouvertre

Information 01/2017Election Results6

DODBIBA Eno ** 2NIKA Vladimir 4PANIDHA Ela ** 2

SHOMO Vjollca 3

NIKA Vladimir 4SHOMO Vjollca 3

Full Member

DODBIBA Eno ** 2PANIDHA Ela ** 2

Substitute

HAAS Franz * 12HEDENETZ Alexander Gernot 13SCHRITTWIESER Waltraud * 13

SCHWEINZER Friedrich 17

SCHWEINZER Friedrich 17HEDENETZ Alexander Gernot 13

Full Member

SCHRITTWIESER Waltraud * 13HAAS Franz * 12

Substitute

FORSTHUBER Martin 21HARRER-REDL Dagmar 22ISRAILOFF Peter 10

WEINZINGER Philipp 19

HARRER-REDL Dagmar 22FORSTHUBER Martin 21

Full Member

WEINZINGER Philipp 19ISRAILOFF Peter 10

Substitute

CLERIX André 55DAELEMANS Frank F.R. * 37DE CLERCQ Ann G. Y. 52LEYDER Francis 59MACKETT Margaret 26NOLLEN Maarten Dirk-Johan 25

QUINTELIER Claude ** 42VAN DEN BOECK Wim 32VAN MALDEREN Joëlle 50VANDERSTEEN Pieter ** 42

AL - AlbaniaSent ballots: 16 Participation: 50 % Received ballots: 8

Candidates

Allotment of seats

AT - AustriaSent ballots: 145 Participation: 36 % Received ballots: 52

Other Capacity

Received valid ballots: 19

Candidates

Allotment of seats

Private Practice


Candidates

Allotment of seats

BE - BelgiumSent ballots: 230 Participation: 53 % Received ballots: 123

Candidates


LEYDER Francis 59CLERIX André 55DE CLERCQ Ann G. Y. 52VAN MALDEREN Joëlle 50

Full Member

QUINTELIER Claude ** 42VANDERSTEEN Pieter ** 42DAELEMANS Frank F.R. * 37VAN DEN BOECK Wim 32

Substitute

ANDREEVA Natasha Petkova 9BENATOV Samuil Gabriel 13CHILIKOV Alexy Atanasov 2DARAKTSCHIEW Todor Dotschew 1GEORGIEVA-TABAKOVA Milena Lubenova 13IVANOV Ivan Nikolov 2

KOSSEVA Radislava Andreeva 10PAKIDANSKA Ivanka Slavcheva 12SHENTOVA Violeta Varbanova 6STOYANOV Todor Nikolov 5VINAROVA Emilia Zdravkova 4

BENATOV Samuil Gabriel 13GEORGIEVA-TABAKOVA Milena Lubenova 13PAKIDANSKA Ivanka Slavcheva 12KOSSEVA Radislava Andreeva 10

Full Member

ANDREEVA Natasha Petkova 9SHENTOVA Violeta Varbanova 6STOYANOV Todor Nikolov 5VINAROVA Emilia Zdravkova 4

Substitute

BOSKOVIC Davor 5DLACIC Albina 8HADZIJA Tomislav ** 6KORPER ZEMVA Dina 3

VUKINA Sanja 8VUKMIR Mladen * /** 6

DLACIC Albina 8VUKINA Sanja 8

Full Member

VUKMIR Mladen * /** 6HADZIJA Tomislav ** 6

Substitute

DEMETRIADES Achilleas L. 4MARKIDES Hermione Al. 5

THEODOULOU Christos A. 5

MARKIDES Hermione Al. 5THEODOULOU Christos A. 5

Full Member

DEMETRIADES Achilleas L. 4

Substitute

Allotment of seats

BG - BulgariaSent ballots: 58 Participation: 29 % Received ballots: 17

Candidates

Allotment of seats

HR - CroatiaSent ballots: 25 Participation: 40 % Received ballots: 10

Candidates

Allotment of seats

CY - CyprusSent ballots: 11 Participation: 91 % Received ballots: 10

Candidates

Allotment of seats


ANDERA Jiri * /** 21FISCHER Michael 6GUTTMANN Michal 22HAK Roman * /+ 18HOLASOVA Hana 21

MALUSEK Jiri 20ZAK Vitezslav 16ZEMANOVÁ Veronika * /** 21

GUTTMANN Michal 22HOLASOVA Hana 21MALUSEK Jiri 20ZAK Vitezslav 16

Full Member

ZEMANOVÁ Veronika * /** 21ANDERA Jiri * /** 21FISCHER Michael 6HAK Roman * /+ 18

Substitute

KANVED Nicolai 21PEDERSEN Soeren Skovgaard 16


Full Member Substitute

CHRISTIANSEN Ejvind * 16HEGNER Anette 20KOEFOED Peter 48

STRUVE Casper 24

KOEFOED Peter 48STRUVE Casper 24

Full Member

HEGNER Anette 20CHRISTIANSEN Ejvind * 16

Substitute

KAHU Sirje 13KOITEL Raivo 6KOPPEL Mart Enn 10NELSAS Tónu 12

OSTRAT Jaak * 12SARAP Margus * 8TOOME Jürgen 13

CZ - Czech RepublicSent ballots: 93 Participation: 27 % Received ballots: 25

Candidates

Allotment of seats

DK - DenmarkSent ballots: 257 Participation: 33 % Received ballots: 84

Other Capacity


Candidates

Allotment of seats

Private Practice


Candidates

Allotment of seats

EE - EstoniaSent ballots: 26 Participation: 54 % Received ballots: 14

Candidates


KAHU Sirje 13TOOME Jürgen 13NELSAS Tónu 12KOPPEL Mart Enn 10

Full Member

OSTRAT Jaak * 12SARAP Margus * 8KOITEL Raivo 6

Substitute

Allotment of seats

AALTO Juha-Matti ** 22ERKKILÄ Anniina * 39ETUAHO Kirsikka Elina * 27HÄYRINEN Ville Tapani ** 22HONKASALO Terhi Marjut Anneli 43

KÄRKKÄINEN Veli-Matti * 24KONKONEN Tomi-Matti Juhani 25SAHLIN Jonna Elisabeth 26TIMONEN Tuomo Markus Antero 11

HONKASALO Terhi Marjut Anneli 43SAHLIN Jonna Elisabeth 26KONKONEN Tomi-Matti Juhani 25HÄYRINEN Ville Tapani ** 22

Full Member

ERKKILÄ Anniina * 39ETUAHO Kirsikka Elina * 27KÄRKKÄINEN Veli-Matti * 24AALTO Juha-Matti ** 22

Substitute

FI - FinlandSent ballots: 183 Participation: 40 % Received ballots: 73

Candidates

Allotment of seats



Full Member


Substitute




Full Member


Substitute





STRUVE Casper 24


Full Member


Substitute




Full Member


Substitute




Full Member


Substitute

BAUVIR Jacques 92CONAN Philippe Claude * 75GENDRAUD Pierre 71LE VAGUERÈSE Sylvain Jacques 62

ROUGEMONT Bernard * 73TARAVELLA Brigitte 83

BAUVIR Jacques 92TARAVELLA Brigitte 83GENDRAUD Pierre 71

Full Member

CONAN Philippe Claude * 75ROUGEMONT Bernard * 73LE VAGUERÈSE Sylvain Jacques 62

Substitute

CASALONGA Axel 113DELORME Nicolas * 72LEBKIRI Alexandre 88MOUTARD Pascal Jean 69

NEVANT Marc 105NUSS Laurent 114PRUGNEAU Philippe * 42

NUSS Laurent 114CASALONGA Axel 113NEVANT Marc 105

Full Member

LEBKIRI Alexandre 88DELORME Nicolas * 72MOUTARD Pascal Jean 69

Substitute

KREMER Véronique Marie Joséphine 216MARX Thomas 208TÜNGLER Eberhard 200WACHTLING Bernd ** 190

WEINGARTEN Ulrich ** 190WINTER Andreas 273

WINTER Andreas 273KREMER Véronique Marie Joséphine 216MARX Thomas 208

Full Member

TÜNGLER Eberhard 200WACHTLING Bernd ** 190WEINGARTEN Ulrich ** 190

Substitute

BANSE Klaus-Dieter 84BOCKHORNI Josef 154BRÖCHER Dirk Joachim 46GONG Jinping 42HARTIG Michael 89JANSSEN Bernd Christian 45KELLER Günter 117KEULERTZ Robin 49KILGER Christian 55LEISSLER-GERSTL Gabriele 335MAIKOWSKI Michael 249

NOACK Andreas 47POTT Thomas 55RAUNECKER Klaus Peter 46RICHLY Erik * 29SCHOBER Christoph D. 65SCHÜLLER Michael 61SPRINGORUM Harald 99SUN Yiming 53UNGERER Olaf 102VOGELSANG-WENKE Heike 338

VOGELSANG-WENKE Heike 338LEISSLER-GERSTL Gabriele 335MAIKOWSKI Michael 249

Full Member

BOCKHORNI Josef 154KELLER Günter 117UNGERER Olaf 102

Substitute

BAKATSELOU Vassiliki ** 3LIOUMBIS Alexandros 1SAMUELIDES Emmanuel * /** 3

TSIMIKALIS Athanasios 4YAZITZOGLOU Evagelia S. 8

YAZITZOGLOU Evagelia S. 8TSIMIKALIS Athanasios 4

Full Member

SAMUELIDES Emmanuel * /** 3BAKATSELOU Vassiliki ** 3

Substitute

BANDY Tamasné * 2BIRO Irén Erzsébet 0BODIZS Arpad * 3KENYERES Mihaly * 1KERESZTY Marcell * 13KÖTELES Zoltan * 11LENGYEL Zsolt 15

MACHYTKA-FRANK Daisy 4MAK Andras 8PETHO Arpad 19SZENTPÉTERI Zsolt 15TÖRÖK Ferenc 18

PETHO Arpad 19TÖRÖK Ferenc 18LENGYEL Zsolt 15SZENTPÉTERI Zsolt 15

Full Member

KERESZTY Marcell * 13KÖTELES Zoltan * 11MAK Andras 8MACHYTKA-FRANK Daisy 4

Substitute

DAVIDSSON Snaebjorn H. * 6FRIDRIKSSON Einar Karl ** 3HARDARSON Gunnar Örn 4

INGVARSSON Sigurdur ** 3JONSSON Thorlakur 2

HARDARSON Gunnar Örn 4INGVARSSON Sigurdur ** 3

Full Member

DAVIDSSON Snaebjorn H. * 6FRIDRIKSSON Einar Karl ** 3

Substitute

BOYCE Conor 28CASEY Lindsay Joseph 24GAFFNEY Naoise Eoin * 21GILLESPIE Richard 15HARTE Seán Paul 26

KELLY Donal Morgan * 24MCCARTHY Denis Alexis 30ROCHE Dermot 16SYRTSOVA Ekaterina * 22

MCCARTHY Denis Alexis 30BOYCE Conor 28HARTE Seán Paul 26CASEY Lindsay Joseph 24

Full Member

KELLY Donal Morgan * 24SYRTSOVA Ekaterina * 22GAFFNEY Naoise Eoin * 21ROCHE Dermot 16

Substitute

BARACCO Stefano 19COLUCCI Giuseppe 22GUERCI Alessandro 22LEGANZA Alessandro * 20

MACCHETTA Francesco 24PIO Federico 20

MACCHETTA Francesco 24COLUCCI Giuseppe 22GUERCI Alessandro 22

Full Member

LEGANZA Alessandro * 20PIO Federico 20BARACCO Stefano 19

Substitute

CHECCACCI Giorgio 126CONTADIN Giorgio 14DE GREGORI Antonella 60FREYRIA FAVA Cristina 25GERLI Paolo 76GERMINARIO Claudio 31GISLON Gabriele 46

MODIANO Micaela Nadia 137PES Matteo 37RAMBELLI Paolo 120SANTI Filippo 73TAGLIAFICO Giulia 44TRILLAT Anne-Cecile 26

MODIANO Micaela Nadia 137CHECCACCI Giorgio 126RAMBELLI Paolo 120

Full Member

GERLI Paolo 76SANTI Filippo 73DE GREGORI Antonella 60

Substitute

FORTUNA Jevgenijs 10LAVRINOVICS Edvards * 8OSMANS Voldemars 10

SMIRNOV Alexander 4

FORTUNA Jevgenijs 10OSMANS Voldemars 10

Full Member

LAVRINOVICS Edvards * 8SMIRNOV Alexander 4

Substitute

ALLWARDT Anke 12GYAJA Christoph Benjamin * /** 12HARMANN Bernd-Günther 11

PISCHETSRIEDER Tobias M. * /** 12

ALLWARDT Anke 12HARMANN Bernd-Günther 11

Full Member

PISCHETSRIEDER Tobias M. * /** 12GYAJA Christoph Benjamin * /** 12

Substitute

DRAUGELIENE Virgina Adolfina * 8GERASIMOVIC Liudmila ** 7KLIMAITIENE Otilija 9PAKENIENE Ausra 4

PETNIUNAITE Jurga ** 7SIDLAUSKIENE Aurelija 4VIESUNAITE Vilija 6

KLIMAITIENE Otilija 9PETNIUNAITE Jurga ** 7

Full Member

DRAUGELIENE Virgina Adolfina * 8GERASIMOVIC Liudmila ** 7

Substitute

KUTSCH Bernd 4LAMPE Sigmar * 4

KUTSCH Bernd 4

Full Member

LAMPE Sigmar * 4

Substitute

BEISSEL Jean 4BRUCK Mathis 6

MELLET Valérie Martine * 5

BRUCK Mathis 6

Full Member


Substitute

DAMJANSKI Vanco ** 5FILIPOV Gjorgji ** 5ILIEVSKI Bogoljub ** 5JOANIDIS Aleksandar 2JOANIDIS Jovan 6JOANIDIS Biljana * 2

KJOSESKA Marija ** 5KOSTOVSKA-STOJKOVSKA Zivka ** 2PEKEVSKA Anna ** 2PEPELJUGOSKI Valentin 7VUKADINOVIC PEKEVSKA Margarita 2

PEPELJUGOSKI Valentin 7JOANIDIS Jovan 6ILIEVSKI Bogoljub ** 5KJOSESKA Marija ** 5

Full Member

FILIPOV Gjorgji ** 5DAMJANSKI Vanco ** 5PEKEVSKA Anna ** 2KOSTOVSKA-STOJKOVSKA Zivka ** 2

Substitute

GERBINO Angelo * 1SANSONE Luigi 3

SANSONE Luigi 3

Full Member

GERBINO Angelo * 1

Substitute

AMIRA Sami 1HAUTIER Nicolas 2SCHMALZ Günther 2

THACH Tum * 2

HAUTIER Nicolas 2SCHMALZ Günther 2

Full Member

THACH Tum * 2AMIRA Sami 1

Substitute

AALBERS Arnt Reinier 72AMIRSEHHI Ramin 30BLOKLAND Arie 79CLARKSON Paul Magnus 58DU PONT Jeroen * 52HOGENBIRK Marijke 113KETELAARS Maarten F.J.M. 74

KRAAK Hajo 76LAND Addick Adrianus Gosling * 39MULDER Cornelis A.M. 96SCHOENMAKER Maarten 78TANGENA Antonius Gerardus 105VAN WEZENBEEK Lambertus A.C.M. * 65

HOGENBIRK Marijke 113TANGENA Antonius Gerardus 105MULDER Cornelis A.M. 96BLOKLAND Arie 79SCHOENMAKER Maarten 78KRAAK Hajo 76

Full Member

KETELAARS Maarten F.J.M. 74AALBERS Arnt Reinier 72VAN WEZENBEEK Lambertus A.C.M. * 65CLARKSON Paul Magnus 58DU PONT Jeroen * 52LAND Addick Adrianus Gosling * 39

Substitute

BERG André 11BERG Per Geir * 10MIDTTUN Gisle Johan + 4REKDAL Kristine 14

TAFJORD Harald 6THORVALDSEN Knut 5THRANE Dag 15

THRANE Dag 15REKDAL Kristine 14BERG André 11TAFJORD Harald 6

Full Member

BERG Per Geir * 10THORVALDSEN Knut 5MIDTTUN Gisle Johan + 4

Substitute

AUGUSTYNIAK Magdalena Anna 32BURY Marek ** 25GODLEWSKI Piotr 20KAWCZYNSKA Marta Joanna 30KORBELA Anna 15KREKORA Magdalena 16

LEWICKA Katarzyna Dorota ** 25LUKASZYK Szymon ** 23MALCHEREK Piotr 26MALEWSKA Ewa ** 23ROGOZINSKA Alicja ** 25

AUGUSTYNIAK Magdalena Anna 32KAWCZYNSKA Marta Joanna 30MALCHEREK Piotr 26LEWICKA Katarzyna Dorota ** 25

Full Member

BURY Marek ** 25ROGOZINSKA Alicja ** 25MALEWSKA Ewa ** 23LUKASZYK Szymon ** 23

Substitute

ALVES MOREIRA Pedro 18CARVALHO FRANCO Isabel 18CORTE-REAL CRUZ António * /** 18CRUZ Nuno * /** 18DE SAMPAIO José Eduardo * /** 18

DIAS MACHADO Antonio J. * 17FERREIRA MAGNO Fernando Antonio 17PEREIRA DA CRUZ Joao 18SILVESTRE DE ALMEIDA FERREIRA LuísHumberto

2

ALVES MOREIRA Pedro 18CARVALHO FRANCO Isabel 18PEREIRA DA CRUZ Joao 18FERREIRA MAGNO Fernando Antonio 17

Full Member

CRUZ Nuno * /** 18DE SAMPAIO José Eduardo * /** 18CORTE-REAL CRUZ António * /** 18DIAS MACHADO Antonio J. * 17

Substitute

BONCEA Oana-Laura 10FIERASCU Cosmina-Catrinel 16NICOLAESCU Daniella Olga 9PETREA Dana-Maria ** 7PUSCASU Dan 2STANCIU Adelina ** 4

STRENC Alexandru Cristian 6TEODORESCU Mihaela 14TULUCA F. Doina 4VASILESCU Raluca ** 7

FIERASCU Cosmina-Catrinel 16TEODORESCU Mihaela 14BONCEA Oana-Laura 10NICOLAESCU Daniella Olga 9

Full Member

PETREA Dana-Maria ** 7VASILESCU Raluca ** 7STRENC Alexandru Cristian 6STANCIU Adelina ** 4

Substitute

AGAZZANI Giampaolo 12MAROSCIA Antonio 12MASCIOPINTO Gian Giuseppe 2PETRAZ Davide Luigi * 12

PRIMICERI Maria Vittoria 4TIBURZI Andrea 5

AGAZZANI Giampaolo 12MAROSCIA Antonio 12

Full Member

PETRAZ Davide Luigi * 12TIBURZI Andrea 5

Substitute

BOGDANOVIC Dejan 12BRKIC Zeljka 4JANKOVIC Mara * 3MARKICEVIC PIJEVIC Marija 0PETOSEVIC Slobodan 5

PLAVSA Uros 7TRAVICA Katarina 7ZATEZALO Mihajlo 6

BOGDANOVIC Dejan 12PLAVSA Uros 7TRAVICA Katarina 7ZATEZALO Mihajlo 6

Full Member

PETOSEVIC Slobodan 5BRKIC Zeljka 4JANKOVIC Mara * 3

Substitute

BAD'UROVÁ Katarina 9CECHVALOVA Dagmar + 7MAJLINGOVA Marta 8MESKOVA Viera 3

NEUSCHL Vladimir 8ZOVICOVA Viera 2

BAD'UROVÁ Katarina 9MAJLINGOVA Marta 8NEUSCHL Vladimir 8MESKOVA Viera 3

Full Member

ZOVICOVA Viera 2CECHVALOVA Dagmar + 7

Substitute

BENCINA Mojca 3FLAK Antonija * 15GOLMAJER ZIMA Marjanca 18IVANCIC Bojan * 17KUNIC TESOVIC Barbara 19

MACEK Gregor 18MARN Jure 2OSOLNIK Renata 18ROS Zlata * 13

KUNIC TESOVIC Barbara 19GOLMAJER ZIMA Marjanca 18MACEK Gregor 18OSOLNIK Renata 18

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IVANCIC Bojan * 17FLAK Antonija * 15ROS Zlata * 13BENCINA Mojca 3

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ARIAS SANZ Juan 37BERNARDO NORIEGA Francisco ** 40ELOSEGUI DE LA PENA Inigo * 14GALLARDO Antonio M. * 10HERNANDEZ LEHMANN Aurelio 21IGARTUA Ismael 47ILLESCAS Manuel 18

JORDÁ PETERSEN Santiago 41MOHAMMADIAN Dario 14SÁEZ GRANERO Francisco Javier 45SANZ-BERMELL MARTINEZ Alejandro 12STIEBE Lars Magnus 28VILALTA JUVANTENY Luis ** 40

IGARTUA Ismael 47SÁEZ GRANERO Francisco Javier 45JORDÁ PETERSEN Santiago 41BERNARDO NORIEGA Francisco ** 40

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VILALTA JUVANTENY Luis ** 40ARIAS SANZ Juan 37STIEBE Lars Magnus 28HERNANDEZ LEHMANN Aurelio 21

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BJERNDELL Per Ingvar ** 45EKSTRÖM Nils + 53ESTREEN Lars J.F. 52HASSELGREN Erik Joakim + 38LÖWENADLER Jenny * /+ 44

MARTINSSON Peter ** 45SJÖGREN PAULSSON Stina 65WESTMAN Maria Elisabeth Mimmi * 48YDRESKOG Margareta 51

SJÖGREN PAULSSON Stina 65ESTREEN Lars J.F. 52YDRESKOG Margareta 51BJERNDELL Per Ingvar ** 45

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WESTMAN Maria Elisabeth Mimmi * 48MARTINSSON Peter ** 45EKSTRÖM Nils + 53LÖWENADLER Jenny * /+ 44

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COGNIAT Eric Jean Marie ** 43DE LUCA Giampiero ** 43DE WEERD Petrus G.W. 33KLEY Hansjörg 58

MAUÉ Paul Georg 72THOMSEN Peter René 76

THOMSEN Peter René 76MAUÉ Paul Georg 72KLEY Hansjörg 58

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DE LUCA Giampiero ** 43COGNIAT Eric Jean Marie ** 43DE WEERD Petrus G.W. 33

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BLANCHARD Eugène Gilles 27KAPIC Tarik 50KÖRNER Thomas Ottmar 30LATSCHA Silvan 63

LIEBETANZ Michael 74REUTELER Raymond Werner 57RUDER Susanna Louise 46

LIEBETANZ Michael 74LATSCHA Silvan 63REUTELER Raymond Werner 57

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KAPIC Tarik 50RUDER Susanna Louise 46KÖRNER Thomas Ottmar 30

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ARKAN Selda Mine 15ATALAY Baris 19CAYLI Hülya 12DERIS M.N. Aydin ** 11KÖKSALDI A. Sertaç Murat ** 14

MUTLU Aydin 15SEVINÇ Erkan ** 14YAVUZCAN Alev * /** 11YURTSEVEN M. Tuna 7

ATALAY Baris 19ARKAN Selda Mine 15MUTLU Aydin 15KÖKSALDI A. Sertaç Murat ** 14

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SEVINÇ Erkan ** 14CAYLI Hülya 12YAVUZCAN Alev * /** 11DERIS M.N. Aydin ** 11

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ASQUITH Julian Peter 143BLAKE Stephen James 146BOFF James Charles 159BROWN John D. 140DUNLOP Hugh Christopher 160DUNN Paul Edward 129GRAY John James 138

JACKSON John Timothy 131MERCER Christopher Paul 207RADKOV Stoyan Atanassov 122WHITLOCK Holly Elizabeth Ann 158WRIGHT Simon Mark 182

MERCER Christopher Paul 207WRIGHT Simon Mark 182DUNLOP Hugh Christopher 160BOFF James Charles 159WHITLOCK Holly Elizabeth Ann 158BLAKE Stephen James 146

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ASQUITH Julian Peter 143BROWN John D. 140GRAY John James 138JACKSON John Timothy 131DUNN Paul Edward 129RADKOV Stoyan Atanassov 122

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On February 24, 2017, a meeting between Mr. MarcoAleman, Director, Patent Law Division, World Intellectual

Property Organization (WIPO), Mr. Tony Tangena, Presidentof the epi and Mr. Peter Thomsen, Treasurer of the epi, washeld in epi’s Secretariat in Munich.

The purpose of such an encounter was to discuss epi’srole as a supporter of the Inventor Assistance Program(IAP). The IAP, a WIPO initiative in cooperation with theWorld Economic Forum (WEF), is the first global programof its kind. The Program aims at matching under-resourcedinventors in developing countries with patent attorneyswho are willing to assist them, free of charge, in the patent-granting proce-dure before their nationalpatent office. Patent pro-tection is a powerful legaltool that gives a patentowner the control overwho uses his/her inven-tion. Patents can be veryvaluable but all too oftenhowever, inventors andsmall businesses in thedeveloping world fail toseek and obtain patentsas they lack the resources,or specialists’ knowledge,that are needed to navi-gate the system.

As mentioned in issue4/2016 of the epi Infor-mation, the epi is proudto become a supporterof the IAP program. Dur-ing their first meeting in Munich Mr. Aleman, Mr. Tangena,Mr. Thomsen and Ms. Sadia Liebig, epi Secretariat, thedesignated person in charge of the IAP within the epiSecretariat, discussed further details with regards to thecooperation between epi and WIPO, in the framework ofthis project.

Mr. Aleman reported in great detail on the developmentof the IAP, and provided interesting feedback regardingits implementation in the present participating countries(Colombia, the Philippines and Morocco). WIPO hopesthat more developing countries will apply to the IAP pro-gram during the year and that it would be extendedaccordingly.

Mr. Thomsen gave a short introduction on the epi. Emphasiswas put on the fact that the epi, with more than 11,700European patent attorneys constituting its members, providesan ideal target group to recruit volunteers that would bewilling to assist selected inventors in developing countries topatent their inventions in Europe. Following the announce-ment in the epi Information and on the epi website, bothparties agreed that further steps should be taken to promotethe program in the European region.

epi’s members should be aware that providing their serv-ices in the framework of the IAP will only require theirprofessional skills and practical support, and will not imply

any additional costs.The participating patentattorney works in closecollaboration with theinventor/patent appli-cant, and it is worthmentioning that the lat-ter will bear all of thecosts inherent to the fil-ing and prosecuting ofthe patent application.The patent attorney willbenefit from the probono work by increas-ing his/her professionalexperience and bygrowing his/her net-work by making contactwith persons who may,down the road, becomepaying clients as theirbusinesses grow.

During the meeting, organisational matters, such as the pos-sibility of registering via the epi website and the transmissionof information to WIPO, were discussed. It was agreed thatepi would provide WIPO with further information on futuredevelopments and on the progress of the IAP.

Meanwhile, should you be interested in participating in theIAP program as a European patent attorney, please contactthe epi Secretariat on the following e-mail addresses: [email protected] or [email protected]

Further information on the program can also be found on the following WIPO webpage:http://www.wipo.int/iap/en/

Inventor Assistance Program (IAP) – Meeting between WIPO and the epi in Munich

S. Liebig, epi Secretariat

Information 01/2017Information concering epi20

Information 01/2017 Committee Reports 21

This report completed on 28 February 2017 coversthe period since my previous report dated 2 Novem-

ber 2016 published in epi Information 4/2016.

The EPPC is the largest committee of the epi, but also theone with the broadest remit: it has to consider and discussall questions pertaining to, or connected with, practiceunder (1) the EPC, (2) the PCT, and (3) “the future EUPatent Regulation”, including any revision thereof, exceptall questions reserved for the Biotech Committee.The EPPC is presently organised with seven permanentSub-Committees (EPC, Guidelines, MSBA, PCT, Trilateral& IP5, Quality and Unitary Patent). Additionally, ad hocWorking Groups are set up when the need arises. Twothematic Groups have also been set up.

1. European patent with unitary effect in theparticipating Member States

The entry into force of the unitary patent system requiresratification or accession of 13 States to the UPC Agree-ment, including Germany, France and the UK. As men-tioned earlier, the outcome of the “Brexit” referendumhad created some uncertainty about the ratification bythe UK, but these disappeared when the UK confirmed .The latest plans provide for entry into force of the unitarypatent system on 1 December 2017.The next (21st) meeting of the Select Committee wouldtake place at the latest in March 2017 or earlier, depend-ing on the development of the question of the entryinto force of the unitary patent system at the politicallevel, within the framework of the European Union. Ithas now been postponed and will take place in Munichon 27 June 2017.The series of UP/UPC seminars initiated by epi will resumein May, with seminars in Copenhagen, Basel andBarcelona. The forms and the plugin for online filing willhopefully be available by then1.

2. PAOC thematic group

epi delegates of the Pure and Applied Organic Chemistry(PAOC) thematic group of the EPPC met with EPO repre-sentatives (mainly Directors in that field) on 22 June2016. The report has now been finalised and will bepublished in epi Information 1/2017.

The next meeting will be held on 16 May 2017. Thegroup welcomes suggestions as to topics for discussion.

3. Meetings of the EPPC

The EPPC met on 17 November 2016.The highlight of the meeting was a presentation by Ms.Heli Pihlajamaa, Director Patent Law, who also answeredthe questions of the participants.The committee also agreed to set up a new sub-committeeto deal with quality, matching a new SACEPO/WorkingParty on Quality (WPQ). Bogoljub Ilievski, who has beenappointed as the epi delegate to the WPQ, will lead thesub-committee.The next meeting has been scheduled on the fringe ofthe Council meeting, starting in the afternoon of 25April 2017.

4. G1/16 (disclaimers)

At its last meeting, the EPPC decided to set up a dedi-cated working group for preparing an amicus curiae brief.Once filed, the brief will be available in the file:https://register.epo.org/application?number=EP08003327

5. SACEPO/WPQ

The new SACEPO/Working Party on Quality was createdby a decision of the President of the EPO “to provideanother channel to gather feedback on quality at theEPO based on the experiences of major user groups”. Ashort report of the first meeting, held on 17 January2017 was published on the EPO website:http://www.epo.org/news-issues/news/2017/20170124.html

6. ICT thematic group

epi delegates of the Information and CommunicationTechnologies (ICT) thematic group of the EPPC metagain with EPO representatives on 25 January 2017, todiscuss some aspects of the passages in F-IV and G-VIIrelating to eligibility of computer implemented inven-tions (CII). A paper prepared by the ICT thematic groupwill be published in epi Information 1/2017, discussingExample 3, G-VII 5.4.2.3, which has been adapted fromT102/08 (see page 33).

7. PCT Working Group

The PCT will take place in Geneva, from 8 to 12 May2017. The draft agenda is already available on the WIPOwebsite (“Future development of the PCT System”,

Report of the European Patent Practice Committee (EPPC)

F. Leyder (BE), Chair

1 At the 83rd meeting of the Technical and Operational Support Committee(TOSC) that took place on 3 November 2016, i.e. before the UK indicatedthat it would ratify the Agreement on a UPC, the EPO indicated that itwould provide the forms and the plugin as soon as they would have amore concrete schedule for entry into force, well in advance, to includeadditional changes to the system

Information 01/2017Committee Reports22

“Proposed changes to the PCT procedural and legalframework”, “Other matters”), and the working papersare being uploaded at the same location:http://www.wipo.int/meetings/en/details.jsp?meeting_id=42289

8. SACEPO/WPR 15

The summary of conclusions of the 15th meeting of theSACEPO/Working Party on Rules held on 15 November2016 is attached. Thanks must go to the numerous col-leagues who commented on the working documents,mainly on the website forum. In particular, the vast major-ity of comments included arguments against delayingentry in the European phase from 31 to 34 months witha corresponding reduction of the period for replying tothe Rules 161/162 communication.

9. Meeting with the Vice-President DG1

On 1 March 2017, an epi delegation has meet the Vice-President DG1 (Operations).

10. SACEPO/WPR 16

The 16th meeting of the SACEPO/Working Party on Ruleswill be held on 22 March 2017. The agenda includes thefollowing items related to the EPPC (for which the work-ing papers have not yet been received):2. XML [this item will be dealt with in

cooperation with OCC]3. Information about Fraudulent invoices4. Application of Rule 134 EPC7. Assessment of unity of invention

11. CPL 48

The 48th meeting of the Committee on Patent Law willtake place on 27-28 April 2017. The agenda had not yetbeen received at the time of finalising this report.

SACEPO WORKING PARTY ON RULES

Summary of conclusions of the 15th

meeting held on 16 November 2016

I. Opening and adoption of the agenda[SACEPO/WPR 7/16]

The Office welcomed the participants. The provisionalagenda was adopted by the participants with the additionof a topic on the last day of validity of a European patentunder “Any other business”.

II. Corrective actions – clarification of Rules 51 and 162 EPC[SACEPO/WPR 8/16]

Document SACEPO/WPR 8/16 was presented by the Office.

As to the proposed amendments to Rule 51(2) EPC,SACEPO members showed appreciation for the proposedchange which was considered to increase clarity and there-fore bring advantages for both applicants and third parties.The necessity to eliminate any legal uncertainty regardingthe filing of divisional applications was in particular pointedout. A SACEPO member was concerned that the changecould lead to a lack of internal consistency due to thefact that the lapse date was determined in different wayswithin the procedure. He in particular referred to the post-grant procedure, since for unitary patents the date oflapse for the non-payment of the renewal fees would cor-respond to the end of the regular period. Another SACEPOmember invited the Office to raise this point with the par-ticipating states. The Office replied that the proposedamendments to Rule 51 EPC simply consist in a clarificationof the current practice and stated that there is no legalimpediment to the provision of different regimes in thepre- and post-grant procedure; both regimes are in linewith the Paris Convention. SACEPO members suggestedthat the wording be clarified in the English text by replac-ing “on the due date” with “by the due date” in Rule51(2) EPC. The EPO will consider the proposal further andif necessary reflect the change in the French and Germantranslation.

SACEPO members showed understanding for the goalof the proposal aimed at re-establishing the long-stand-ing practice of the EPO under Rule 162 EPC, i.e. to com-pute the number of claims fees due on the basis of thetotal number of claims on file at the end of the 6-monthperiod under Rule 161 EPC. In reply to a SACEPO mem-ber who argued that the new system could lead toabuses, the Office explained that examiners do not startthe search or the examination until the end of the sixmonths. This means that they are always informed forwhich claims fees have been paid. The Office furtherclarified that the waiver has effect only subject to thepayment of all claims fees due.

Guidelines

The EPPC urges the readers of this journal to addressto its Guidelines Sub-Committee at [email protected] comments regarding the Guidelines for Examina-tion in the European Patent Office https://www.epo.org/law-practice/legal-texts/guidelines.htmlor suggestions to improve them.

The same applies to the Guidelines for Search andExamination at the EPO as PCT authorityhttps://www.epo.org/law-practice/legal-texts/guidelines-pct.html.


Some SACEPO members invited the Office to reconsiderthe proposed text of the Rule with the aim to furtherimprove the clarity of its wording. In particular, a SACEPOmember suggested that the second sentence contained inparagraph (2) of the proposed Rule 162 EPC be inserted ina new paragraph to make clear that the two sentences arenot connected. Another SACEPO member argued that inthe second sentence of Rule 162(2) EPC also the additionalclaim fees should be mentioned (i.e. “the claims fees orany additional claim fees”). The Office informed that itwould consider these proposals.Finally, a SACEPO member asked for clarification as to whatwould happen in case an applicant limits the claims duringthe further processing period; the Office clarified that theuse of further processing into the period of Rule 161, forinstance if an applicant decides at a late stage that hewants to file further claims, will be reflected in the claimsfees due.

III. Fee payment methods[SACEPO/WPR 9/16]

The Office presented document SACEPO/WPR 9/16.

SACEPO members expressed dissatisfaction with the EPO’sdecision to move to the “online only” management ofdeposit accounts for several reasons. Moving to the elec-tronic management of deposit accounts put parties in adifficult situation where there is a technical breakdown atthe users’ end or in case the EPO online services are notavailable. Suitable alternative measures have therefore tobe offered to users and clear instructions on the procedureto be followed in emergency situations have to be provided.The use of the fax as an emergency solution in case oftechnical breakdown at the users’ side is considered to bethe best solution even if it would not help in case of networkfax machines. Credit cards payments are also consideredas a suitable emergency measure: users should be allowedto call and simply provide their credit card details in thosesituations. The Office clarified that this measure, which onlyconcerns the payments via deposit account, is meant toincrease transparency. It further explained that the EPCcontains specific provisions addressing the cases of technicalbreakdowns; similar safety net will also be foreseen in thearrangements for deposit accounts. A SACEPO membersuggested that when a disruption of the system isannounced, a reference to Rule 134(1) EPC be included inthe warning published by the Office.

Concerns were raised in respect of applications which mustbe filed with the national patent offices for state securityand national defence reasons since applications are mostlyfiled in paper together with the debit order for paying thefees due on filing. Under the new regime applicants willhave to pay the fees separately. According to SACEPOmembers, this will increase the risk of errors. Also not allnational Offices provide for a possibility to use the EPO’sonline filing tool. In that context the compliance of this

measure with Rule 2 EPC was questioned. The Office repliedthat most national Offices already offer the possibility tofile online also the debit order; cooperation in this respectwith countries which do not offer such possibility will beconsidered. The Office further clarified that the paymentof fees is not considered an integral part of the procedureand therefore the debit order is not a “document” underRule 2 EPC (for the interpretation in this sense see legaladvice 6/91).

SACEPO members argued that the EPO’s user-friendlinessfor making payments has decreased over the recent yearsdue to the abolition of the administrative fee and theclosure of the national bank accounts. They mentionedthat not all contracting states are members of SEPA andthat experience shows that SEPA transfers can take longerthan one day. They felt an amendment of Art. 7(3) RFeesas necessary to reflect the rapidity of the bank transfers.The Office replied that SEPA transfers last maximum oneday. Finally, the Office stated that only Turkey is not a SEPAmember but that it has accepted nevertheless the SEPAregulations and that therefore there are no disadvantagesfor Turkish users.

The Office concluded by saying that it would give to thepoints raised further consideration.

IV. Entry into the European phase [SACEPO/WPR 10/16]

Document SACEPO/WPR 10/16 was presented by theOffice.

The comments to the proposal to extend the time limit forentry into the European phase to 34-months and to shortenthe time limit under Rule 161 EPC by 3 months differedamongst SACEPO members.

The majority of the SACEPO members were not in favourof the proposed extension of the time limit for entry intothe European phase, especially in light of the shortening ofthe Rule 161 period which, according to them, would resultin a very limited time at the disposal of the attorneys.

It was in particular argued by some SACEPO members that,such extension would increase the complexity of the systemsince it would not be a harmonised change adopted by alloffices but it would only be valid before the EPO; applicantswould therefore no longer take a global decision on thefuture of the patent but would work on the possible amend-ments of the application twice incurring greater costs.

A SACEPO member stated that such change of the estab-lished framework would entail huge efforts for the re-edu-cation of the users of the system and would moreover havethe following side effects: 1) agents, normally asked by applicants to prepare an invoicefor all national phase entries, would have to pay the foreign

agents without having the possibility to invoice the clientsbefore 34 months; 2) in-house patent departments of European applicants wouldhave to work on the same application more than once; 3) foreign applicants, who decide to enter thenational/regional phase themselves, generally wait until thefirst EPO’s communication is issued before instructing theEuropean patent attorney; if the Rule 161 EPC period isreduced to 3 months, European representatives will not havesufficient time to work on a case, to the detriment of thequality of the reply to the written opinion and with the resultthat more objections will be submitted at a later stage of theprocedure.

The same SACEPO member further noted that he did notshare the Office’s view that this extra time could allow theapplicant to improve the documents for entry into the Euro-pean phase on the basis of the comments provided by foreignagents or offices for the other national phase entries (para-graph IV, point 9 of the EPO document); the extra time ofthree months provided would indeed not be sufficient. More-over, applications are prepared to meet specific nationalrequirements and therefore cannot be used for allnational/regional procedures.

According to him, moreover, the amendments under Articles28 and 40 PCT may be filed on entry irrespective of theissuance of Rule 161 invitation. Rule 161 thus does notimplement the right under Articles 28 and 40 PCT but onthe contrary offers applicants the opportunity to file amend-ments under Article 123(1) EPC.

The same SACEPO member showed disagreement with thestatement in paragraph III point 6, according to which moretime is needed by the applicant to take the results of theinternational preliminary examination into account whenpreparing the amendments for the European phase, sincethe major part of the applicants do not make use of theChapter II procedure.

Moreover, it was noted that, according to Rule 95.1 PCT (asin force as from 1.07.2017), designated and elected Officesare requested to inform the IB of national/regional phaseentries: this would also be delayed if the time limit for entryis postponed.

Another SACEPO member indicated that the industry wouldwelcome the three extra months for the decision to enterthe European phase, since it would allow shifting the highcosts of entry by three months. Applicants would in anyevent still have the possibility to enter before the deadline ifpreferred. However, he noted that European representativeswould in practice – probably - still get the files only shortlybefore expiry of the extended time limit under Rule 159 EPCand would, therefore, often have three months less thantoday to prepare the amendments. Therefore, according tohim, the proposal would be appreciated by applicants butmay have negative consequences for attorneys.

Two SACEPO members noted that the proposal would haveconsequences for third parties. They would 3 months laterthan today be informed 1) whether an application wouldenter the European phase and become relevant prior artand 2) what an application is about since - under the proposal– also the publication in an EPO language of any Euro-PCTapplication not published in an EPO language by the IB,would be delayed by 3 months.

The Office acknowledged that SACEPO members were notin favour of an extension of the time limit for entry but clar-ified that the proposal was aimed at providing more flexibilityto applicants. As to third parties, the Office stated that theirposition was carefully considered and that it was concludedthat a delay of three months would not be too detrimentalfor them.

The Office moreover clarified that Rule 161 EPC implementsArticles 28 and 40 PCT and that the time limit under Rule161 EPC was extended from one month to six months toaddress the concern of the users concerning the introduc-tion of the obligatory reply to the WO-ISA; before thatmoment users had never expressed any dissatisfaction withthe deadline of one month. In this respect, a SACEPOmember suggested that the 6-month time limit be usedas regular office time limit (not a fixed office time limit) or4 months in case the EPO acted as ISA in the internationalphase.

As to the translation into an EPO-language, the Office repliedthat the delay of three months would not create problemsin practice since the translation would already be availablein many cases from the entry into other national phases.

In reply to a concern of a SACEPO member, the EPO notedthat only in rare cases the prior art from an internationalapplication which has not entered the European phase isrelevant. It further explained that Rule 165 EPC was intro-duced as a protection for European users to ensure thatinternational applications that had not been published wouldnot have an effect on the grant of the applications pendingat the EPO. A SACEPO member however argued that inpractice this could be problematic in certain technical fields(i.a. polymer chemistry).

There was broad consensus that it would be helpful for theusers if the 3rd year renewal fee could be paid upon entryinto the European phase at expiry of the regular time limitfor entry. SACEPO members suggested that Art. 51(1) EPCbe amended to address this issue. A SACEPO member statedthat another option would be to amend R. 159 EPC butthat, according to him, such amendment would not achievethe purpose.

He moreover added that the Office could allow applicantsto pay on entry subject to the condition that the amount tobe paid on that date is not lower that the one which wouldbe due according to the current wording of Art. 51(1) EPC.


Positive feedback was given on the proposal to have a newcheckbox in Form 1200 by which users may indicate thewish to start earlier the processing of the application in theEuropean phase (“early entry”). A SACEPO member showedappreciation for the proposed checkbox but stressed thatapplicants would still be faced with the problem of havingto pay the 3rd renewal fee later; he finally argued that accord-ing to him a long list of actions to be performed if duewould not simplify the system for applicants not routinelyusing this procedure. In addition a SACEPO member stressedthe importance that fees can also be automatically debitedin the case of early entry. The Office informed SACEPO mem-bers that the work on this has already started.

The Office summarised the feedback and concluded thatthe prolongation of the time limit for entry into the Europeanphase was not sufficiently supported. It further announcedthat it would initiate the work on the 3rd renewal fee.

V. Update on Early Certainty [SACEPO/WPR 11/16]

With regard to telephone interviews as first action, SACEPOmembers welcomed the proposal in general and thankedthe Office for taking their comments on board. They invitedthe Office to inform agents of the upcoming telephone inter-view with a short notice in advance by phone or email. ASACEPO member insisted on the importance of ensuringthat a complete report of the telephone interview is issuedby the examiner. Another SACEPO member stated that theuse of this instrument has to be limited to cases where smallissues have to be clarified or examiners decide to make pro-posals. Finally, a SACEPO member noticed that applicantsare reluctant to pay for the work related to telephone inter-views since they are not announced in official communica-tions. The Office acknowledged that it would be good prac-tice to inform the agents of the telephone interview inadvance. It moreover stated that the instructions concerningthe telephone minutes are clear and that those individualcases where the instructions are not complied with shouldbe reported and addressed (some examples would be pro-vided by epi). More in general, however, the Office wouldmake sure that the instructions on how a telephone interviewhas to be conducted are clear enough.

SACEPO members were in favour of the proposal concerningthe positive statements and suggestions, which would haveas a positive consequence a reduction in the number of aux-iliary requests and communications issued. However, exam-iners should not take offence if their suggestion is not fol-lowed by the applicant. The Office replied that this wouldbe mentioned in the e-learning material.

The opinions of SACEPO members on summons as firstaction were diverging. A SACEPO member argued that theproposal would result in increased costs and that the Officeshould at least ensure that sufficient VICO facilities are avail-able with no time constraints especially for complex cases.

According to another SACEPO member, two office actionsare necessary before the oral proceedings. SACEPO membersagreed that an advance telephone contact before the sum-mons would be useful. Instructions on the summons shouldbe inserted in the guidelines in order to avoid any lack ofclarity. The Office replied that this instrument is not intendedto be widely used, but rather when it is the only way out ofa deadlock situation where no essential progress has beenmade to overcome the objections raised in the written opin-ion accompanying the search report and the Examining Divi-sion identifies no patentable subject matter in the application.The Office concluded that further consideration will be givento the suggestions provided.

SACEPO members showed appreciation for the proposal onthe preliminary opinion accompanying the partial searchresults.

As to the proposal on the further harmonisation in the treat-ment of auxiliary requests, SACEPO members welcomed thedecision of the Office not to limit the number of the auxiliaryrequests.

With regard to the streamlined opposition procedure,SACEPO members stated that it was too early to assess theeffect of the change. However, a SACEPO member madereference to a specific case where a preliminary opinion wassent by the examiner a few weeks before the oral proceedingand asked the Office whether this was due to the change ofprocedure. The Office asked him to provide the number ofthe mentioned file.

A SACEPO member finally referred to previous discussionson early certainty and asked whether there was any follow-up with regard to the proposal of the Office to insert a boxin the written opinion similar to the one present for PCT filesand to the proposal to indicate the basis of the amendmentsfor Euro-PCT applications according to Rule 137(4) EPC. Withregard to the first question the Office replied that it wouldwork on this; with regard to the second one, it explainedthat the proposal was put aside and that further options arecurrently considered by the Office.

VI. Report on the results of the user survey on the pilot on search strategies [oral report]

The Office reported on the results of the user survey carriedout in the framework of the SACEPO PDI and SACEPO WPR.

SACEPO members expressed both in writing and orally duringthe meeting appreciation for the service provided by theOffice, which meets users’ expectations and needs.

The Office informed SACEPO members that following thepositive feedback derived from the consultations as well asthe support received from users in several meetings andseminars in 2016, the Office had decided to extend the cur-rent pilot programme by one year (until the end of 2017).


VII. Recent developments in the PCT framework (i.a. CS&E) [oral report]

The Office reported in particular on the CS&E pilot, informingSACEPO members that the mandate was adopted by IP5Heads (CS&E Cooperation Framework) and the preparatoryphase of the pilot was launched on 2 June 2016. The fol-lowing milestone would be the launch of the operationalphase tentatively by mid-2017 on the basis of the workproduced by the CS&E Pilot Group (IP5 representatives &WIPO).

The Office moreover informed SACEPO members of thepossibility to file subsequently filed documents via ePCT asof 1.11.2016, and of the success of the PCT-Direct serviceoffered by the Office, largely used by users (220 PCT-Directrequests submitted in average per month) and consideredvaluable by the other ISAs (for instance IL decided to offerthe same service).

General information on recent Rule changes were also pro-vided by the Office (revised Rules 9, 48 and 94 PCT in forcesince 1 July 2016; revised Rule 92 PCT in force since 1 July2016; revised Rule 82quater PCT in force since 1 July 2016;revised Rule 45bis in force as of 1 July 2017). Finally, SACEPOmembers were updated on the new Rule 23bis PCT, whichwould enter into force on 1 July 2017, according to whichany earlier search results and classification results availableat the RO will have to be forwarded to the competent ISA.

SACEPO members thanked the Office for the report. As tothe CS&E, a SACEPO member commented that, in light ofthe high costs, such system would be useful only in PCTDirect cases and not for the first search. He further addedthat the system would be attractive only if fee reductionsare provided in the national phases before the designatedOffices involved. As to the first comment, the Office statedthat the matter had not been discussed and informedSACEPO member that some Authorities were in favour ofreplacing the supplementary international search servicewith the CS&E. The EPO did however not share this view.As to the second suggestion, the Office replied that theidea is indeed to introduce some financial incentives in thenational/regional phases.

As a general remark, a SACEPO member argued that noexamination fee should be requested in the European phaseif examination was carried by the EPO in the internationalphase with positive results (at present reduction of 50% isgranted). He therefore invited the Office to reconsider thisissue also in light of the fact that the USPTO does not chargeany fee in these cases. The Office replied that it was lookingat this matter.

Finally a SACEPO member invited the Office to provide infuture a written document to facilitate the understandingof the changes presented.

VIII. Update on procedural patent law harmonisation issues

The Office updated SACEPO members on recent devel-opments in the area of procedural patent harmonisationand in particular unity of invention (a PowerPoint pres-entation was provided).

epi enquired whether its participation was foreseen. TheOffice informed SACEPO members that discussions on theparticipation of associations in the framework of the IP5were ongoing, but that there was yet no common line asto how representation within Industry IP5 should evolve.

IX. Update on substantive patent law harmonisation issues

The Office provided an update on substantive patentlaw harmonisation issues (a presentation was providedto SACEPO members).

epi asked the Office whether its participation in the Sym-posium was foreseen. The Office replied that the partic-ipation of European associations was under discussionand that the user associations were trying to get Chinaon board as observer (no formal invitation had howeverbeen sent).

A SACEPO member requested clarification as to theadded value of the Symposium to be held in 2017 incomparison to the ones which took place in the past.He moreover added that the lack of progress was notnecessarily a negative element since he felt that somelimits had been crossed. He showed in particular dissat-isfaction with the solution of having a full year graceperiod without declaration and with prior user rightslimited to the country of the prior use. The Office repliedthat, unlike in the past, users were in the driver’s seatand that the Symposium was not going to be an infor-mation session but a discussion among experts workingon a way forward. The Industry Trilateral was workingon reaching a consensus on a package of norms, andafter a setback earlier this year, there were encouragingsigns that progress was being made.

X. Any other business

epi invited the Office to further consider the issue of thelast day of validity of a European patent which was dis-cussed in the Committee on Patent Law held in May2016. It also mentioned two documents published inCIPA Journal in this regard. The Office referred to theconclusions of the Chair of the PLC but took note of theinvitation.

The Office finally informed the SACEPO members that asuitable period for the 16th SACEPO WPR could be theend of March 2017.



This report completed on 20th February 2017 coversthe period since my previous report dated 2nd Novem-

ber 2016.

The Harmonisation Committee deals with all questionsconcerning the worldwide harmonisation of Patent Law,and in particular within the framework of WIPO.

25th Session of the SCP

The 25th session of the Standing Committee on the Lawof Patents (SCP) of WIPO was held in Geneva from the12th to the 16th of December 2016. epi has been repre-sented by the undersigned then by John Brown.

The meeting papers are or will be available on the WIPOwebsite:http://www.wipo.int/meetings/es/details.jsp?meeting_id=42299

26th Session of the SCP

The 26th session of the SCP will be held in Geneva; it hasbeen postponed by one week and will now take placefrom the 3rd to the 6th of July 2017. epi will be representedby John Brown then by the undersigned.

The meeting papers are or will be available on the WIPOwebsite:http://www.wipo.int/meetings/es/details.jsp?meeting_id=42299

Discussions on Substantive Patent Law Harmonisation in Group B+

The meetings of Group B+ do not involve observers, how-ever some (old) documents have been made available onthe EPO website during the period reviewed (during whichthe webpage has also been refreshed):http://www.epo.org/news-issues/issues/harmonisation/group-b-plus.html

The newly posted documents were:2015: Promoting Transparent Use of the Grace Period(Sept.2015) and Treatment of Conflicting Applications(Sept.2015)

2016: B+ Workstream on Prior User Rights: Further Workon the Scope of Prior User Rights

International substantive patent law harmonisation wason the agenda of meetings of the SACEPO/Working Partyon Rules (16th November 2016) and of the Committeeon Patent Law (21st November 2016), in both cases forinformation.

Group B+ Users’ Symposium

As mentioned in my previous report, the Group B+ Ple-nary meeting took place on 4th October 2016. An agreedstatement has been published, mentioning:

[…] Group B+ reaffirmed the importance of continuedengagement with all interested stakeholders. As a nextstep towards finalising the consultation document,the Group agreed to hold a user symposium to allowa wider range of users to contribute to the develop-ment of proposals.

In the “save the date” message sent to epi, the EPOstated that the purpose was in particular to allow IndustryGroups from Group B+ delegations not represented inthe Industry Trilateral, i.e. from Australia, Canada, Koreaand New-Zealand, the opportunity to be informed ofthe harmonisation process within the Industry Trilateraland its results so far. It was thought that these nationalIndustry Groups, some of which operate under systemsquite different from the Industry Trilateral participants,might also perhaps contribute to the process, inter aliaby bringing fresh views which might be beneficial to theexercise.

The Users’ Symposium, entitled “Cornerstones for patentlaw harmonisation: a B+ Sub-Group / Industry Sympo-sium” will be held on 20th June 2017, at the EPO inMunich. epi would be cordially invited to designate twoparticipants to attend on its behalf.

Report of the Harmonisation Committee (HC)

F. Leyder (BE), Secretary


The Brexit

1. We are faced with theresult of the British referen-dum which decided that UKshould leave the EuropeanUnion.In order to effectively leavethe EU, UK has to triggerArticle 50 of TEU. According to Ms. TheresaMay, British prime Minister,this Article would be trig-

gered by the end of March 2017. After that date, a timeperiod of two years should be used by the UK and theEuropean Union to negotiate the practical and legal impli-cations of such a leave.This time period ends in March 2019 i.e. shortly beforethe next elections to the EU Parliament which are sched-uled for June 2019. It can therefore be expected that thedeadline of June 2019 will be met and that any extensionwill be short.

What are the consequences of the Brexit for the UPC Agreement?

2. Since the UPC Agreement (UPCA) as it now stands,cannot enter into force as long as UK has not ratified,the Agreement is presently on standby.

3. The UK representative at the last Competitive Com-mittee announced that UK would ratify the UPCA soon,i.e. before leaving the EU.

4. UK has recently ratified the Protocol on Privileges andImmunities, thereby confirming the will of UK to allowentry into force of the UPCA.The entry into force of the UPC Agreement could there-fore still be expected before the end of 2017, after ratifi-cation by the UK and Germany (France has already rati-fied).

5. The local division in London as well as the London sec-tion of the Central Division could be opened as soon asthe UPCA enters into force. British judges could be nom-inated to act in the various divisions of the First InstanceCourt as well as in the Court of Appeal.

6. However, as soon as UK will leave the European Union,UK would cease to be a Contracting Member State ofthe UPC unless appropriate steps would have been takenbefore the effective leave.

What are the hurdles for the UK to participateto the UPCA after leaving the EU?

7. The obstacles to a participation of UK after leave, i.e.after having ceased to be a Member State of the EuropeanUnion, are mainly those dealt with by Opinion 1/09 ofthe CJEU.That opinion considered that the draft Agreement on aEuropean and Community Patents Court 7928/09 ofMarch 2009 was not compatible with the EU treaties. Inthis draft Agreement, the European Community (nowEuropean Union) was a party, thus opening a possibilityfor an opinion of the CJEU.

8. The CJEU was particularly concerned with the fact thatthe proposed jurisdiction would have been competentfor the future Community patent (now Unitary patent).

9. Since the proposed Agreement related to a jurisdictionhaving competence not only for European patents but alsofor Community patents, the Court insisted in its opinionon the fact that it is essential to guarantee a direct coop-eration between the CJEU and the national jurisdictions inview of a uniform interpretation of the Union law. Sincethe proposed jurisdiction replaced the national jurisdictions,this direct cooperation between the proposed jurisdictionand the CJEU would not be guaranteed.

10. In addition, according to the opinion of the CJEU,the liability of a Member State of the European Unionshould always remain in case of a violation of Union lawby a national jurisdiction and therefore also by the pro-posed jurisdiction.

11. In its opinion, the CJEU also noted that the Beneluxcourt was in a different situation since it is a jurisdictionwhich is common to several Member States of the Euro-pean Union and therefore within the jurisdictional systemof the European Union.

12. In its conclusion, the CJEU indicated that the proposedjurisdiction was not compatible with the EU treaties sinceit had an exclusive competence for actions relating tothe Community Patent while being outside of the juris-dictional system of the European Union.

13. The present UPCA has been amended so as to takeinto account this opinion. In particular, only EU MemberStates are admitted as signatory States and Article 21 ofthe present UPCA concerning the requests for preliminaryrulings before the CJEU has replaced Article 48 of thedraft Agreement 7928/09 of March 2009.

Report of the Litigation Committee (Litcom)

A. Casalonga (FR), Chair

Axel Casalonga


What could be done to eliminate such hurdles?

14. According to the definitions of Article 2 UPCA, “Mem-ber States” used throughout the Agreement, means“Member States of the European Union”. For example,Article 84 UPC clearly mentions that the UPCA is openfor signature to “Member States” which means “MemberStates of the European Union”. If, however, UK ratifiesthe UPCA before leaving the EU, as it now seems to bethe case, Article 84 should not be an obstacle since thecondition will have been fulfilled on the date of ratifica-tion of the Agreement.

15. Concerning the liability of the Contracting MemberStates, the UK should positively recognize its remainingliability.

16. The UK should also positively recognize the possibilityof preliminary rulings by the CJEU and the full application

of Union law by the UPC. This may be difficult since Ms.May clearly indicated in her speech and repeated in theBill authorizing the UK government to trigger article 50,that the UK will not recognize anymore the jurisdictionof the ECJ.

Actions of the LitCom

17. The Litigation Committee is monitoring the situationresulting from the Brexit and will propose specific actionsif it appears appropriate.

18. The LitCom is presently studying the UPC ITCMS (ITCourt Management System) and will issue a positionpaper on the legal implications of the ITCMS in liaisonwith the OCC.

19. The LitCom is also studying the Draft Rules on medi-ation and arbitration and will issue a position paper onthis question.

Minutes of the Meeting of theCommittee on Biotechnological Inventions

S. Wright (GB), Secretary

Held on 22 November 2016 in Munich.

1.Minutes

The minutes of the last meeting in 2015 were approved. The meeting in 2016 did not take place immediately beforeour annual meeting of EPO Directors since the EPO meetingwill take place later, perhaps next spring and probablywith a slightly different format. The date has not yet beenfixed, but it is likely to be in Munich. SMW is to contactthe EPO in order to obtain dates on which the EPO Directorsare meeting (probably in Munich).

2.Patentability of Plants

Apparently Austrian law has now also changed, to besimilar to the law in France, Germany and Hollandwhereby plants, that are products of essentially biologicalprocesses, are unpatentable. Mr Wright reported on theCPL meeting that was held at the EPO on 21 November2016. The issue of plant patentability had first been raisedat the previous CPL meeting, and following that the EUCommission, under the Dutch Presidency, organised ameeting in Brussels in May. Only a few weeks ago therewas an announcement from the EU Commission sug-

gesting that the BiotechDirective should be inter-preted to exclude plant prod-ucts. At the CPL meeting on21 November the EU (even asobservers) gave a short pres-entation. Most of the nationaldelegates encouraged theEPO to consider changing thelaw, perhaps by amendmentof the implementing regula-tions. The EPO promised toreview the matter, and comeup with proposals in the spring of next year.

3.Stem Cells

Not much has happened since the publication of the EUexpert group report. The cut-off date for patentabilitywas now 5 June 2003, which is the publication date ofthe relevant ACT PCT case which refers to (how to obtainhESCs from) parthenotes. There has been a Board ofAppeal Decision which referred the case back to theOpposition Division to take account of the EPO’s changeof practice to the 5 June date.

Simon Wright


4.Sequence Listings

Anna Hally will talk to David Brophy (who is in her firm),Secretary of the OCC Committee, about the use of BISSAP.We should perhaps also tell the Directors at an appropriatepoint in time that we prefer the PatentIn software. WIPOis discussing a new standard 26 in 2017, and this will con-cern xml formats (and may change the rules on when youcan use X to denote more than one amino acid).

5.Medical Use Claims

There was a brief discussion of the Warner Lambert litigationin the UK on the meaning of second medical use claims(there is parallel litigation in many European countries, includ-ing Spain, Germany, France, Denmark and Sweden).

6.Added Matter

It was reported anecdotally that Boards of Appeal are hope-fully going to interpret Article 123 less strictly.

7.Pharmacogenetics

There has been no progress on this matter since the lastmeeting.

8.Antibodies

One member suggested that the EPO’s practice had becomea little bit easier, but we think it very much depends on theExaminer. Many Examiners are insisting on the introductionof sequences in the independent claims. This may be a topicfor a presentation at the next meeting with the Directors.

9. Purpose Bound Protection

This was mentioned in connection with the EC Expert Groupreport.

10. Ariosa vs Sequenom

The epi filed an amicus brief at the Supreme Court, whichunfortunately declined to take the case.

Separately, one member had a US case where the US Exam-iner added a method of treatment step at the end in orderto secure allowance of the case.

11. Non-Unity

This is still causing our members problems, in particular ifthe objection is an "a posteriori" one. This stance cancause considerable difficulties for Applicants when thesubject matter fragments according to the EPO Examiner’sassessment of the case. In one particular application therewas no disunity on the priority application, but one wasraised in the later filed PCT application, so there was aninconsistency. Another member reported fewer problemsand wondered whether the EPO is finally listening to attor-neys’ protestations. This, too, might be a useful topic for apresentation to Directors next year, perhaps with somecase studies. We wonder whether the situation is worse inBiotech, especially if there are sequences, as the EPO hasa tendency to regard each sequence as being a differentinvention. Several members reported that they had paidadditional search fees and simply got the same art cited.One member suggested that we ought to get a refund ofthe search fee if there is no new art (although it was men-tioned that in order to avoid this the EPO would simplyjust cite another “A” category document).

12. Guidelines for Examination

We had received a question from Francis Leyder, Chair ofthe UPC, which is being dealt with.

13. Candidate Associate Members

We have had no new requests, but note that Sisko Knuth-Lehtola has retired and has been replaced by Outi Elina Vir-taharju.

14. Other Matters

Mr Wright is to contact Aliki Nichogiannopoulou for datesfor the next epi-EPO meeting. Mr Wright also explainedthe changes in the epi Board for the next election term,and that Committees will carry on with the existing mem-bership until the Warsaw Council Meeting in Poland, cur-rently scheduled for 18 November, which would thendecide the composition of Committees. This is differentfrom the past where Committee Members had normallybeen elected in the first Council Meeting of the three yearterm.

The meeting closed at about 2:30pm.

Information 01/2017 Education and Training 31

Forthcoming epi Educational Events

4 May 2017 Copenhagen (DK) epi roadshow supported by the EPO

30 May 2017 Barcelona (ES) epi roadshow

31 May 2017 Basel (CH) epi roadshow

June 2017 Manchester (UK) epi roadshow

June 2017 Brussels (BE) epi roadshow

June 2017 Sofia (BG) epi roadshow

September 2017 Stockholm (SE) epi roadshow supported by the EPO

September 2017 Istanbul (TR) epi roadshow

September 2017 Lyon (FR) epi roadshow

September 2017 Vienna (AT) epi roadshow

September 2017 Bologna (IT) epi roadshow supported by the EPO

September 2017 Lisbon (PT) epi roadshow supported by the EPO

October 2017 Bern (CH) epi roadshow supported by the EPO

October 2017 Birmingham (UK) epi roadshow

October 2017 Bucharest (RO) epi roadshow

October 2017 Budapest (HU) epi roadshow

November 2017 Warsaw (PL) epi roadshow

16 November 2017 Eindhoven (NL) epi roadshow supported by the EPO

November 2017 Munich (DE) epi roadshow

The Committee has been created following a decisiontaken during the 81st Council Meeting held in Berlin on

12th November 2016. It shall consist of six members electedby the Council.The purpose of this Committee is to determine whethereach person applying to become an epi student has thenecessary qualifications to meet the requirements set out inthe Rules governing the epi studentship (“the Rules”).According to the new Rules governing the epi studentship(“the Rules”), the epi Secretariat is responsible for a pre-

checking of each epi Student application and make surethat the applicant fulfil all the requirements. Therefore, theepi Secretariat will carry out a review of each application tobecome an epi student and forward it to the Committee.The Committee will scrutinise each case forwarded by theepi Secretariat and will decide whether the candidate meetsthe requirements of the Rules.Please note that Ms Hannah Mardoian is the Person in chargewithin the epi Secretariat. For further information she can becontacted by email under [email protected]

epi Studentship Admissions Committee

H. Mardoian, epi Secretariat

UP/UPC Seminars 2017

In 2017 epi will resume the series of one day seminars onthe Unitary Patent (UP) and the Unitary Patent Court (UPC)that began in 2016. The seminars will provide knowledge of unitary patentprotection and the Unified Patent Court (UPC) toallow epi members to work with the new system and toadvise clients on strategic choices, for example on whether

to request unitary effect for their European patents, orwhen and whether to opt out of the UPC.A number of the seminars will be held jointly with theEPO, with expert speakers from both the epi and the EPO. The fee to attend the one day seminars will be: 380€ for epi members, 190€ for epi students and 480€

for non-epi members/non-epi students (for seminars in B-countries there will be a discount of 50%).Please find here the current schedule:

Concrete dates and locations will be announced on the epi website.

CPE Seminars 2017 – Opposition and Appeal16 May 2017 Rome (IT) epi roadshow supported by the EPO

26 September 2017 Dublin (IE) epi roadshow supported by the EPO

21 November 2017 Budapest (HU) epi roadshow supported by the EPO

Information 01/2017Information from the EPO32

Please send any change of contact details using EPO Form 52301 (Request for changes in the list of profes-

sional representatives: http://www.epo.org/applying/online-services/representatives.html) to the EuropeanPatent Office so that the list of professional representativescan be kept up to date. The list of professional representa-tives, kept by the EPO, is also the list used by epi. Therefore,to make sure that epi mailings as well as e-mail corre-spondence reach you at the correct address, please informthe EPO Directorate 523 of any change in your contactdetails. Kindly note the following contact data of the Legal andUnitary Patent Division of the EPO (Dir. 5.2.3):

European Patent OfficeDir. 5.2.3Legal and Unitary Patent Division80298 MunichGermany

Tel.: +49 (0)89 2399-5231Fax: +49 (0)89 [email protected]

Thank you for your cooperation.

Contact Data of Legal and Unitary Patent Division

Update of the European Patent Attorneys Database

Next Board and Council Meetings

Board MeetingsDue to the new structure of the Board of the epi the dates for the Board Meetings will be determined at a later stage.

Council Meetings82nd Council meeting on 24/25 April 2017 in Munich (DE)83rd Council meeting on 18 November 2017 in Warsaw (PL)

We performed a search in the BoA online database andfound no other BoA decision citing T102/08. Therefore,T102/08 seems not to have been taken as a referenceexample of an application of Comvik decision.

The Guidelines 2016 G VII 5.4.2.3 example provides acomplete problem-solution approach with the steps out-lined in G VII 5.4 for mixed-type (technical/non-technical)inventions. The first step provides for a “prima facie” (sic.!)determination of the features making a technical contri-bution, while at the beginning of third step (determinationof the differing features with respect to the closest priorart) the technicality analysis is deepened before formulatingthe objective technical problem.

In the example at hand, a feature “available data ratebeing lower than a maximum data rate for the data con-nection to the remote client” is found non-technical dueto a specific disclosure in the description indicating appli-cation of a pricing model. The objective technical problemis therefore formulated as “how to implement in the systemof the closest prior art a pricing model which allows thecustomer to choose to pay a lower amount to receivebroadcast media channels at a quality of service lowerthan the highest possible quality of service” (i.e. at a datarate lower than the maximum possible data rate of thedata connection).

With respect to the Example 3, for one thing we note thatthe expression “prima facie” has a well-recognized legalmeaning, i.e. a prima facie positive assessment already hasa full degree of certainty. For another thing, the fact thatsection 5.4 provides for a refinement of the assessment,confirms that the legal meaning of “prima facie” was notreally meant in both 5.4 and 5.4.2.3.

Therefore, in our opinion, “prima facie” should be con-strued in this framework as meaning “at first glance”.

Moreover, the above objective technical problem “howto implement in the system of the closest prior art a pric-ing model which allows the customer to choose to pay alower amount to receive broadcast media channels at aquality of service lower than the highest possible qualityof service” contains a clear pointer to the implementationsolution, because it contains “quality of service” as aquantitative parameter (“lower than”) which is directlytied to a corresponding technical parameter, i.e. “datarate of the data connection”, as outlined in the descrip-tion of the invention.

Information 01/2017 Articles 33

Decision T102/08 and the 2016 Guideline

Collective Paper by the CII Thematic Group (Computer Implemented Inventions) of the EPPC

The 2016 version of the Guidelines for Examination inthe EPO entered into force on November 1st, 2016.

This edition includes a comprehensive review of the pas-sages in F-IV and G-VII relating to eligibility of computerimplemented inventions (CII). The EPO introduced guidanceon clarity and four examples of eligible/non-eligible,patentable/non patentable subject matter in CII, with acomplete problem-solution approach reasoning withrespect to exemplary prior art.

We deem that, on the whole, the introduced examplesare very valuable and we appreciate the efforts of EPO,which takes the thoughtful direction in harmonizing theapproach to inventions entailing ICT aspects.

In the following, we are concerned with Example 3, G-VII5.4.2.3, which has been adapted from T102/08 of Boardof Appeal 3.5.04. A brief summary of T102/08 is given inthe following paragraphs before explaining how, in ouropinion, Examiners should construe the guidance of rele-vant Example 3 above, avoiding taking it literally in somepassages.

Decision T102/08 deals with invention entitled “A systemfor the transmission of a broadcast media channel to aremote client over a data connection”. The discussion ofthe decision is about the features involving the determina-tion of a data rate at which the signal of the media channelis to be transmitted. The Board of Appeal clearly deter-mined that there are two partial problems solved by theinvention, namely:

(1) how to provide channels to subscribers over limitedbandwidth data connection at the highest possiblequality of service (i.e. at the maximum possible datarate of the data connection); and

(2) how to implement a pricing model which allows thecustomer to choose to pay a lower amount and toreceive broadcast media channels with a quality ofservice lower than the highest possible quality ofservice,

and that both are solved by obvious means. In the secondproblem (2), the pricing model is included as a constraintto be met according to Comvik decision T641/00. This islikely the reason why decision T102/08 is cited in theCase Law of BoA 2016 in section I.D.9.22 (partial prob-lems).

In our opinion, even if T641/00 allows the non-technical aimto be added to the objective technical problem as a constraintto be met, care should be taken as to not use words in thenon-technical aim that have a clear technical meaning withinthe framework of the invention, as in case T102/08. InT641/00, the problem was defined as “how to implementthe GSM system in such a way as to allow user-selectablediscrimination between calls for different purposes or by dif-ferent users”, which doesn’t contain any pointer to a tech-nical solution and even doesn’t mention any pricing modelalthough there was a clear one in the invention’s description.

Besides the fact of introducing a pointer, the passage from“data rate of the data connection” to “quality of service” inT102/08 changes the framework for evaluating novelty andinventive step, in that a formerly technical feature disappearswhich could have contributed to the technical character, anda non-technical feature appears in its place, which is, per se,not only devoid of any technical meaning, but also very gen-eral and thus well known (“pricing model” is everywhere inthe commerce field). Thus, application of the Guideline exam-ple in its present form to other cases would lead to inventionsbeing unfairly prejudiced. In the case at hand, we can push the reasoning even to thepoint where there is a clear technical effect in that a lowerbandwidth consumption is required. The non-technical aimbehind (the customer may pay less when he/she consumesless bandwidth) should not play a role when assessing thetechnical problem-solution, although it is clear that there issuch an aim as a general constraint. The invention may beobvious because the implementation is within the averageskill of the skilled person, but such assessment should bebased on a correct problem-solution substantiation.

These considerations are confirmed in the comment to theobjective technical problem formulation given in the sameExample 3. Indeed, the Guidelines state:

“Thus the only technical effect achieved is determiningthe transmission data rate in accordance with the pricingmodel. The pricing model itself represents an aim to beachieved in a non-technical field which may be includedin the formulation of the objective technical problem as aconstraint to be met.”

In accordance with the Comvik decision T641/00, the for-mulation of the technical problem has to be construed as tonot include any statement about the “data rate” but onlythe implementation of a pricing model allowing to choosebetween two different pricing options corresponding to dif-ferent levels of service.

We fully understand that the aim of the EPO was to illustratethat a non-technical aim can be included in the formulationof the technical problem. This is why we propose changingthe technical problem in the Example 3 in the next editionof the Guidelines and to interpret the present one, in themeantime, as above indicated.

Further, the reference to T102/08 should be removed. Infact, once a decision is in the Guidelines in a specific sec-tion, it is seen as established case law by the Office forcases dealt with in that section. However, in the presentcase, when looking at the more recent decision T963/09(Selective auditing/ORACLE), the opposite conclusion aboutaim to be achieved in a non-technical field and objectivetechnical problem is given – namely that, once there is atechnical implementation which solves a technical problemin an inventive way, it does not matter whether there is anon-technical aim behind (point 7 of the decision).

Lastly, a search of other subsequent decisions of the Board3.5.04 on the same subject-matter (mixture of technicaland non-technical features) has revealed only the followingones:

1) T1869/08 of 4.10.20122) T2407/10 of 8.10.2013

which do not refer to T102/08, as above mentioned.

The first decision though repeats the scheme of T102/08considering the differing features non-technical and inte-grally including them in the technical problem. Upon exam-ination of the main request claims, we deem that one ofthem is technical instead (cf. decision, sections 2.8-2.9),so that the technical problem has a pointer to the solutionagain and is thus also defective.

The second decision takes a milder approach, since it offerstwo different equivalent formulations of the technical prob-lems (cf. decision, beginning of sec. IX), and one is certainlydevoid of any pointer. Moreover, the main claim featuresare such that the result is the same with both problems(inventive).

Hence, the above confusion in T102/08 between non-technical aim and objective technical problem, with all theensuing drawbacks, seems to be little propagated althoughnot officially validated by this Board of Appeal.

As a conclusion, Example 3 should be interpreted as pro-viding an example of a two-stage assessment of technicalityin a claim, i.e. a “first glance” assessment and a final, wellconsidered assessment, and as providing a formulation ofthe technical problem which includes a non-technical aim(providing choice according to a pricing model) but whichis focused on the relevant implementation, and avoidingany reference to technical features that are associated topricing model, which have to be assessed in the inventivestep assessment. Corresponding reformulation of theGuidelines would be highly welcomed.

This topic has been discussed with the EPO at a meetingof SACEPO/WPG (Standing Advisory Committee to theEPO/Working Party on Guidelines) and we believe that asatisfactory amendment of the Guidelines has been found.

Information 01/2017Articles34


be acceptable and should be the first approach. Thismay apply for instance when a distinction betweenpurely nutritional or also therapeutic effects becomesrelevant. T1635/09, which ruled otherwise, is followedonly in very similar cases. EPO prefers to follow T74/93.Application with nutraceuticals is much broader, whereregulatory authorities have not delimited a scope. Incosmetics the disclaimer should be used with activeingredients having a physiological function.

4. Experimental support which is not in the priority documentWhen claiming a second medical use, experimentalsupport in the application as filed is typically required.Whether the invention is the same if the priority docu-ment does not have the support, i.e. whether priorityright can be acknowledged, is basically a question ofplausibility, to be decided case by case. Some industriesnow wait with filing product claims until they have suf-ficient data for medical use.

5. Sufficiency vs. inventive step as a basis for supportWhether defective support for a claimed (medical)effect is a matter of insufficiency (T609/02) or of lackof inventive step (T1329/04) depends on the case, e.g.whether there was a specific product. If the effect is inthe claim, it would primarily be a matter of sufficiency.If only in the description, then it would typically beinventive step.

6. Clarity examination at first instance after G3/14 On the question whether and how G3/14 has influ-enced training programs and practice in examinationG3/14, the directors responded that there has been nochange in practice or training. The decision is clear forEPO. If a feature of a claim of one category is taken toa claim of another category, clarity is to be checked,also in opposition. epi stressed the importance of clarityexamination before grant.

Opposition proceedings

7. Convergent / divergent requests in opposition proceedings It was discussed whether convergence of requestsas required in appeal proceedings is also to be fol-lowed in first instance proceedings. EPO feels thatbefore the R 116 time limit, any request, even diver-

Pure and Applied Organic Chemistry (PAOC)Annual meeting of epi (EPPC) delegation with EPO directors

R. Jorritsma (NL), Chair of EPPC PAOC Subcommittee

The annual EPO-epi meetings serve to discuss problemsand developments in the communication between rep-

resentatives and first instance divisions of EPO in the fieldsof pure and applied organic chemistry, which includepharma and medical uses. Most or all of the PAOC directorsparticipate in the meeting. epi is represented by the PAOCgroup, which is a subcommittee of EPPC.

The next (5th) meeting will be held on 16th May 2017. epimembers who have questions, suggestions or experiencesrelated to (first instance) interaction with EPO in thesechemical and medical fields that may deserve a discussionwith the directors, are emphatically invited to pass on their comments to the epi secretariat or to the reporter ([email protected]) before 31st March 2017.

As an illustration of the discussions between the EPO direc-tors and the epi delegation, the topics discussed at the 4th

meeting of EPO-epi PAOC meeting, held in Munich on22nd June 2016 are summarised below. All of the topicswere submitted by epi.

Substantive issues

1. A double patenting between parent and divisionalOn the question what “merely partly overlapping” inGuidelines 5.4 means as a condition for allowing doublepatents, especially in chemistry, it was concluded that a(any) difference in scope is sufficient for avoiding doublepatenting objection. For the rest, double patenting is aquestion of national law only. EPO agreed that theGuidelines are to be adapted in view of the practice.

2. Novelty of selections from broader ranges of Markush GroupingThe issue was the third criterion (“purposive selection”)of the criteria for novelty of selections after T230/07(Guidelines G.VI.8). According to the directors, the thirdcriterion never comes up with Markush groups (groupsof entities), whether individualised or not. For numericalranges, it depends on the case. This is in line with theGuidelines. The examiners look at what is “individu-alised” to allow the selection or determine novelty. InA54.3 cases, the third criterion should not play a roleat all.

3. Non-therapeutic useIt was agreed that a disclaimer such as “non-thera-peutic” to overcome an Article 53(c) objection should

gent, will have to be considered. It is up to the pat-entee or applicant to give his priorities. At oral pro-ceedings, requests should be funnelling. A laterequest directed at a dependent claim should typi-cally be acceptable, unless it would be a surprise.Mutual understanding between parties and officeis important. EPO is specialising examiners for oppo-sitions.

8. Amendments under R80An inconsistency in the description only needs tobe resolved if it affects the claims. A pre-existinginconsistency cannot be repaired. In a discussionabout the need for amending the description at all,arguments in favour seemed to prevail, mainly forquality reasons. EPO takes note, for further study.

9. Examination of all grounds of opposition atfirst instance so as to minimise remittals lateron For EPO, this would generally be too much effort. Ifpatentee wants it, he can manage his requests orpropose a particular order of grounds. Practice is todeal first with the issue that is common to multiplerequests. In cases where inventive step is the biggestproblem, it should perhaps be the first to deal with,but this is not usually done. The Opposition Divisionshould point at important issues in summons. Thisrequires a strong chair to indicate preferred and effi-cient order at the beginning of hearing. The com-ments were said to be useful input for the office.

General Procedural matters

10.Two oral proceedings on the same day for the same attorney of an association.The question was how to avoid rejection of a requestfor postponement of one of the two oral proceedingson the basis that a colleague would be equally pre-pared. What is relevant is who regularly signs letters. Ifthat person requests postponement for one of the twohearings, the request would normally be allowed.

11.PCT direct: noticed by examinerThere have been a few problems in the beginning. Ifthe PCT direct is clearly identified – which it normally is– it should go well.

12.Announcement of cancelled proceedings in examinationCancelled proceedings should always be communi-cated. Silence of a party in general means oral pro-ceedings are maintained.

It was concluded from both sides that the meeting wasvery useful again, and the open and cooperative atmos-phere was appreciated. To be continued.



The Long-Awaited European Patent with Unitary Effect and adhoc Unified Patent Court: United Kingdom shows goodwill for

driving the patent package to entry into force, even though roadblocks may still be lying down the way

P. Marollé (FR), French and European Patent Attorney

A long, ever-lasting journey

For many decades, the Council of Europe, then theformer European Economic Community and eventu-

ally the European Union have worked on putting intoplace a system of a European patent with unitary effect,and on establishing a unified and specialized patent juris-diction. It has been a long journey initiated in the fifties,which has been passionately debated within the patentcommunity, fiercely opposed by some of the key players,and often subject to unexpected turnovers. Overall, ithas severely tested the patience of many people. Thejourney has not ended yet, but it was expected to crossthe finish line early 2017. Tremendous progresses havebeen made over the past years and months, with theadoption of a legal toolbox known as the “patent pack-age”, and the preparation work by the Preparatory Com-mittee. However, the results of UK’s referendum last Junehave thrown a serious pitfall in the way. C’est la vie!claimed many resigned persons. Indeed, the ratificationof the Unified Patent Court Agreement – so-called UPCAgreement – was at stake, while it was supposed to bea mere formality. After several months of uncertainty andspeculations, the UK government, however, announcedlast November their indeed intention to ratify the Agree-ment. There is still, though, a great deal of uncertainty,considering that a “hard Brexit” should prevail. If UK andGermany’s ratifications happen, which appears to be likelyin light of the latest developments, this should allow thepatent package to enter into force and the Court to startbusiness in a foreseeable future. However, depending onthe negotiations to be held between the UK and theUnion vis-à-vis the withdrawal agreement and the politicalwill of all parties, it is still questioned whether UK wouldremain a contracting State of the Court, after its with-drawal from the Union. Hence, this project, which haslikely been one of the oldest of the Commission, mayeventually come to a happy end… with or without par-ticipation of the UK in the long run, as time will tell.

Unsuccessful past initiatives

The very first attempt for unifying the European patentsystem was led by the Council of Europe as of 1949, withthe project of a convention on the creation of a EuropeanPatent Office, which was never adopted. However, two

conventions relating to patentformalities and patent classi-fication were signed respec-tively in 19531 and 19542, setting the trend of the har-monisation of standards. Amore ambitious conventionrelating to substantive lawincluding patentability crite-rion – so-called Strasbourgconvention – was also signedin 19633, but never enteredinto force. The European Eco-nomic Community relayed the Council of Europe to work-ing on unifying patent laws across Europe. A first draftproposal for a European patent convention was elaboratedin 19624, which was debated within the Member States.It paved the path for a common procedure for the grantof patents, as enacted by the European patent convention– so-called EPC – adopted in 19735, which was an inter-national treaty creating the European Patent Office. In par-allel, the community patent convention relating to revoca-tion and infringement proceedings – so-called Luxemburgconvention – was signed in 19756. In the absence of suffi-cient ratification, further negotiations were held, and ledto another agreement signed in 19897. Once again, someof the Member States did not ratify it. These successivecul-de-sac were challenging people’s hopes. However, aftera decade of stand-by, the Commission revived the projectof a community patent by releasing a Green Paper on thesubject in 19998. This led to the first draft of an interna-tional agreement establishing a European communitypatents Court, designed to be concluded by the Union,

Patrick Marollé

1 European convention relating to the formalities required for patent appli-cations, signed in Paris on 11 December 1953

2 European convention on the international classification of patents forinventions, signed in Paris on 19 December 1954

3 Council of Europe’s convention on the unification of certain points ofsubstantive law on Patents for Invention, signed in Paris on 27 November1963.

4 Avant-projet de convention relatif à un droit européen des brevets élaborépar le groupe de travail « brevets », drafted in 1962

5 European patent convention, adopted in Munich on 5 October 19736 Convention for the European patent for the common market (community

patent convention), signed in Luxemburg on 15 December 19757 Agreement relating to community patents, signed in Luxemburg on 15

December 19898 European Commission, communication entitled “Promoting innovation

through patents – Green Paper on the Community Patent and the PatentSystem in Europe”, released on 5 February 1999


the Member States and certain EPC contracting thirdStates. However, the Court of Justice of the EuropeanUnion declared in 20119 that such agreement was incom-patible with the Treaties of the Union.

The patent package

After the negative opinion from the Court of Justice, theCommission made a revised proposal for the creation of aunitary patent and translation arrangements, via the tworegulations n° 1257/2012 and n° 1260/201210. In theabsence of consensus between the Member States, twenty-five out of twenty-eight of them11 were authorized to pro-ceed with the enhanced cooperation for the creation of aunitary patent protection. Spain challenged unsuccessfullythis initiative12. In order to complete the patent package, aseparate international agreement13 – the UPC Agreement –was signed in 2013 between the participating States. Sub-sequently, a protocol14 to the Agreement was signed in2015 for allowing a provisional application, which is con-ventionally called the “sunrise period”. It aims at providinga smooth transition, considering that the Court shouldbecome fully operational upon entry into force of the Agree-ment, and for allowing the Administrative Committee tostart its work, including the appointment and training ofthe judges. A Preparatory Committee has been set-up forestablishing the Court, and it has focused since then onseveral areas including the legal framework15, financialaspects, and human resources. None of the previous projectsever reached such stage of preparation, and the establish-ment of the Court was expected to be only a matter oftime. Indeed, pursuant to article 89 of the Agreement, thepatent package will enter into force four months after thedeposit of the thirteenth instrument of ratification or acces-sion, including the three Member States in which the highestnumber of European patents had effect in 2012 i.e. France,Germany and UK. These three countries were given thereforea pivotal role in the system. So far, twelve countries haveratified the Agreement, including France and lately Italy.The entry into force of the patent package was thenexpected early 2017, after ratification by both UK and Ger-many. However, the unexpected result of the British refer-endum held on 23 June 2016 has suddenly cast doubt on

whether UK would – or even could still – ratify the Agree-ment for both legal and political reasons. Indeed, some ofthe amendments brought to the revised patent packageappear a posteriori to be of paramount importance.

The specifics of the revised Agreement

The patent package as it currently stands aims at estab-lishing a Court, not being an institution of the Union.However, for ensuring that the Agreement would be com-pliant with the Treaties of the Union, and would not beoutside its judicial system, three principles have beenenacted i.e.: the application of the Union law and its pri-macy over the other sources of law; the requests for pre-liminary rulings and the binding effect of the decisions ofthe Court of Justice; the joint liability of the contractingStates for damage resulting from an infringement of theUnion law by the Court of Appeal16. In addition, eventhough the Court has an international competence, it hasbeen designed as a court common to the contractingMember States, which is then solely opened for signatureand ratification by Member States of the Union17. Theexclusion of non-Member States, i.e. European patent con-vention contracting third States including for instance Nor-way and Switzerland, went a priori far beyond the opinionof the Court of Justice. Indeed, even though its reasoningis opened to interpretation18, it is apparent that the Courtof Justice did not expressly state that the Unified PatentCourt may only be lawfully entered into between MemberStates. In the future, if the Court of Justice had to considerthe question of the participation of non-Member States, itmay confirm such interpretation, even though this is merespeculation at this stage.

The scenarios post-referendum

The foreseen Brexit has immediately casted a shadow onthe roadmap. There is no debate that UK could not ratifythe Agreement after withdrawal, as UK would not qualifyanymore as a contracting Member State pursuant to article2 of the Agreement. However, such withdrawal would beeffective only after the UK has notified the Council pursuantto article 50 of the Lisbon Treaty, and after completion ofthe negotiations and adoption of a withdrawal agreementpursuant to article 218 of the functioning Treaty of theUnion. The entitlement19 between the government and theparliament for notifying the Council has been debated. In

9 Court of Justice of the European Union, Opinion 1/09 of 8 March 201110 Regulation (EU) n° 1257/2012 of the European Parliament and of the

Council implementing enhanced cooperation in the area of the creationof unitary patent protection, signed on 17 December 2012; Council reg-ulation (EU) n° 1260/2012 with regard to the applicable translationarrangements, signed on 17 December 2012;

11 Croatia, Italy and Spain did not participate to the enhanced cooperation,however Italy eventually signed the Agreement

12 Court of Justice of the European Union, Judgments C-274/11 and C-295/11 of 16 April 2013 ; Judgment C-146/13 of 5 April 2015

13 Agreement on a unified patent Court, signed in Brussels on 19 February2013

14 Protocol to the agreement on a unified patent Court on provisional appli-cation, signed on 1st October 2015

15 The patent package has been completed with additional legal texts anddocuments, including the Decision on the scale of recoverable cost ceilings(draft dated 16 June 2016), Rules of procedures (18th draft dated 19October 2015), Rules on the European patent litigation certificate (reviseddraft), Proposal for a code of conduct (4th draft dated 22 June 2016),Protocol on privileges and immunities signed on 29 June 2016

16 Articles 20 to 22 of the UPC Agreement17 Articles 1, 2 and 84 of the Agreement18 Council of the European Union, annex II to the note n° 10630/11 relative

to “Creating a unified patent litigation system – Orientation debate”,released on 26 May 2011 – cf. page 7, first paragraph, “As a result ofopinion 1/09 of the CJEU, it appears that the participation of third coun-tries must be excluded”; page 8, first paragraph, “The only possiblesolution identified is the conclusion of an international agreementbetween the Member States to set up a unified patent court with juris-diction for the Member States only”; for opposite opinions, see Pr. Dr.Tilmann’s article and the opinon from Gordon and Pascoe (cf. infra).

19 London High Court of Justice, Judgment “R (Miller) –v- Secretary of Statefor Exiting the European Union”, n° CO/3809/2016 et CO/3281/2016, 3 November 2016


a landmark judgment given on 24 January 201720, theSupreme Court ruled that the parliament had a word tosay. Indeed, a majority of the judges considered that the“change in the law required to implement the referendum’soutcome [should] be made in the only way permitted bythe UK constitution, namely by legislation”, and that “anact of parliament [was] required to authorise ministers togive notice to the decision of the UK to withdraw from theEuropean Union”. Hence, UK is not expected to leave theUnion at least before 2019. Before such withdrawal, as afull Member State and as a signatory State of the Agree-ment, UK may still ratify it. Several scenarios appear to bepossible, all of them requiring a priori, to a certain extent,an adaptation of the patent package and the adoption ofadditional legal texts. Indeed, there is no provision relativeto the termination of a membership to the Union of a con-tacting State, and the effects and consequences associatedherewith, after ratification of the Agreement and its entryinto force. In a first conservative scenario, UK may merelywithdraw from the Agreement due to a “fundamentalchange of circumstances”, pursuant to the related proce-dure enacted in the Vienna Convention21. It may then besubstituted by Italy as the third contracting country withhighest number of European patents having effect in 2012,only after the corresponding revision of the Agreement,which may be difficult to achieve as requiring a renegotia-tion. In addition, the attractiveness of the Court would bedramatically altered. In a second non-cooperative scenario,UK may decide to neither ratify nor withdraw from theAgreement. This would considerably delay the establish-ment of the Court, if any, and may require the other signa-tory States to rely upon the Vienna convention for excludingUK from the Agreement. In a third compromising scenario,UK may decide to ratify the Agreement on the principle ofsincere cooperation pursuant to article 4.3 of the LisbonTreaty, but withdraw from it concomitantly to the with-drawal from the Union. The greatest advantage would beallowing the entry into force of the Court in the near future,without putting its existence at stake after the withdrawalof the UK. However, again, the attractiveness of the Courtwould be deeply diminished. Eventually, the fourth scenario,supported by a great majority of the patent community,would be the ratification of the Agreement by the UK, andits continued participation after withdrawal from the Union.This would require, however, a significant adaptation ofthe patent package, and the adoption of new legal texts.

UK’s goodwill

For more than four months, the UK government remainedsilent about its intention relative to the ratification of theAgreement. Several observers and actors of the patentcommunity argued about the possibility – and the necessity

– for the UK to take part to the Court. Concerns wereexpressed that, independently to the legal feasibility, UKmay decide not to ratify for political reasons. Indeed, theapplication and primacy of the Union law, as well as theauthority of the Court of Justice on the Unified PatentCourt, have been seen as potential insurmountable road-blocks, especially in the event UK would contemplate a“hard Brexit”, which is apparently the case. Some pro-Brexiters may indeed argue that the ratification of theAgreement would lead to UK devolving further sovereigntyto a Court, that may be considered de facto a Union body.In August 2016, the UK Intellectual Property Officeannounced that the UK remained a signatory State of theAgreement, that they would continue to attend and par-ticipate in meetings, and that there would be “no imme-diate changes”22. While showing UK’s goodwill for notblocking the on-going preparation work, this announce-ment was laconic enough for being opened to interpreta-tion and speculations. In September 2016, a comprehensiveopinion23 relating to the effect of Brexit on the patentpackage was released. On one hand, this opinion showsthe strong support from the UK’s patent profession andstakeholders24 for a continued cooperation of the UK. Onthe other hand, it confirms that “it would be constitution-ally possible for the UK to continue to participate in theUPCA after ‘Brexit’”, even though reserves were emittedabout the adaptations needed to the patent package,about the fact that the Court of Justice may come to a dif-ferent conclusion, and about the political will. In October2016, the UK’s Labour Party sent a letter to the governmentaddressing a list of one hundred and seventy questionsabout the government’s plan regarding Brexit. Two ques-tions ranking one hundred ten and one hundred elevenwere relating to the Court. Even though this reform is noton the top-list of the items to be dealt with, these questionsshow that it is still on the radar of the politicians of bothsides, which is a positive sign. As a side remark, it shouldbe noted that it was unfortunate that a reference wasmade to the “ratification of the EU agreement to establisha Unified patent Court”, as the Agreement is instead aninternational agreement. It was intended that the UK wouldrender their final decision, which many expected to benegative, at the Competitiveness Council meeting hold in28 November 2016. Ahead of this meeting, the Councilpointed out that several delegations had requested “tospeed up the process of ratification of the UPC agreementin the member states that have not done yet with a viewto a swift entry into force”25. Despite a general scepticism,several organisations representing the future users of the

20 The UK Supreme Court, Judgment “R (on the application of Miller andanother) (Respondents) v Secretary of State for Exiting the European”,[2017] UKSC 5, 24 January 2017

21 Articles 54, 62, 65 to 67 of the convention on the law of treaties con-cluded in Vienna on 23 May 1969

22 UK Intellectual Property, announcement “IP and Brexit: The facts”,released online on 2 August 2016

23 R. Gordon QC and T. Pascoe, Brick Court Chambers, opinion “Re theeffect of ‘Brexit’ on the unitary patent regulation and the unified patentcourt agreement”, released on 12 September 2016

24 The influential IP Federation, Chartered Institute of Patent Attorneys andthe Intellectual Property Lawyers Association have taken the initiative ofthis opinion

25 Council of the European Union, note n°12612/16 relative to the outcomeof the 3485th Council meeting on competitiveness, released on 29 Sep-tember 2016


Court also lobbied for having the UK ratifying the Agree-ment26. At the surprise of many, the UK announced thatit intended indeed to ratify the Agreement. In a concomi-tant press release27, then UK Minister of State of Intellec-tual Property, Baroness Neville Rolfe, stressed out that“the UK will continue with preparations for ratificationover the coming months”, in line with the Prime Minister’sgeneral declaration that “for as long as [they] are mem-bers of the EU, the UK will continue to play a full andactive role”. The patent community has broadly welcomedthe UK’s cooperative and pragmatic attitude. It shouldbe underlined, however, that this announcement doesnot preclude the continued participation of the UK afterwithdrawal from the Union, as it was explicitly statedthat “the decision to proceed with ratification should notbe seen as pre-empting the UK’s objectives or position inthe forthcoming negotiations with the UE”. Interestingly,this announcement finally stated that “the UPC itself isnot an EU institution, it is an international patent court”,and that “the judiciary appointed include UK judges”.This concluding note can be seen as precautionary, foravoiding criticism based on the misunderstanding aboutthe Court being a new Union institution. As many others,the President of the European Patent Office has welcomethe UK’s decision to ratify the Agreement28. In the fol-lowing weeks, further progresses were made, as UKsigned on 14 December 2016 the Protocol on privilegesand immunities29, which is required to allow the Court tooperate in London. In addition, the UK IPO formed a ded-icated team. On 11 January 2017, Jo Johnson MP wasnewly appointed as minister responsible for intellectualproperty. On the same day, during the session devotedto “managing intellectual property and technology trans-fer” before the Science and Technology Committee30,the new minister reiterated UK’s intention to ratify theAgreement. At present, it can be expected that the thirdor fourth scenario would prevail, and that in any casethe Court would enter into business in the coming year.However, even though there are good reasons to be opti-mist, there are quite a few difficulties down the road tobe overcome, especially considering that a “hard Brexit”is expected. On 13 March, the parliament has passed thegovernment’s Brexit bill, and the bill should now be exam-ined by the House of Lord. A notification of the Councilshould likely happen therefore in the coming weeks.

Possible Roadmaps

Independently to the scenario prevailing, and eventhough the patent package has still not entered intoforce, the latter already needs to be amended. Skilfulcommentators31 have attempted to provide some realisticsolutions for allowing the continued participation of theUK to the Court after withdrawal. It should be under-scored again that it remains a great uncertainty aboutthe UK participation to the Court on the long-term, asBaroness Neville Rolfe’s announcement is silent about it.It is expected that it will be part of the wider Unionwithdrawal negotiations. Some commentators are evenchallenging UK’s need or will to ratify the Agreement,considering that these negotiations should follow thepath of a “hard Brexit”. Anyhow, the patent communityshould stay optimistic and believe that the following sce-narios would come true. Firstly, the UK and Germanyshould ratify the Agreement, hence allowing its entryinto force on the first day of the fourth month after thelast deposit of the instrument of ratification or accessionpursuant to its article 89, and the immediate commence-ment of the “opt-out” sunrise period. Secondly, legalsolutions should be found for compensating some ofthe deleterious effects of the withdrawal from the Union.Indeed, on the very day of the withdrawal, Europeanregulations – including both regulations n° 1257/2012and 1260/2012 – would cease automatically to be bind-ing to the UK, and to have effects on its territory. A sub-stitution tool would be necessary. A protocol relative tothe extension of the unitary effect of the European patentto UK may therefore be established. This protocol wouldbe considered as a special agreement pursuant to article142 EPC. The regulation n° 1215/201232 – so-called NewBrussels I – would face the same fate, and an alternativesolution should be found, likely in a similar way as theLugano convention33 between the Union, Norway,Switzerland and Iceland. In addition, the continued par-ticipation of the UK may be envisioned in an additionalprotocol to the Agreement. In such protocol, it may beintroduced a new provision enacting that the loss of thequality of Member State of the Union would not preventthat State from remaining a contracting State to theAgreement. This protocol would be considered as a spe-cial agreement pursuant to article 149a EPC. The adop-tion of such protocols should not require negotiationbetween the contracting States and the obtaining of aconsensus between them.26 UJUB, T. Sueur’s electronic mail addressed particularly to Baroness Neville

Rolfe, dated 28 September; MEDEF, M. Guilbaud’s letter addressed to M.P. Leglise-Costa, dated 27 September 2016; EuroChambers & UEAPME,A. Abruzzini & P. Faross’ letter addressed the Council, dated 22 September2016; BusinessEurope, M.J. Beyrer’s letter addressed to P. Ziga, dated 26September 2016; A letter from twenty large corporations addressed toK. Peeters, undated

27 UK Intellectual Property Office and Baroness Neville-Rolfe DBE CMG,press release “UK signals green light to Unified Patent Court Agreement”,28 November 2016

28 EPO, press release “EPO President welcomes UK decision to ratify UPCAgreement”, 29 November 2016

29 European Council, dedicated webpage about the ratification details,including the signatures, of the Protocol on privileges and immunities.

30 Video of the fourth oral evidence session on “managing intellectualproperty and technology transfer on 11 January 2017, available on insti-tutional website www.parliament.uk

31 R. Gordon QC and T. Pascoe (see supra); Prof. Dr. W. Tilmann, article “Apossible way for a non-EU UK to participate in the Unitary Patent andUnified Patent Court?”, The IPKat website, published online on 28 June2016; DeutscherAnwaltVerein, Position Paper “Despite Brexit the prepara-tory work on the UPCA should continue as planned, UK will be able tostay in the Agreement after a legal exit”, released in September 2016

32 Regulation (EU) n° 1215/2012 of the European Parliament and of theCouncil on jurisdiction and the recognition and enforcement of judge-ments in civil and commercial matters, adopted on 12 December 2012

33 Convention on jurisdiction and the recognition and enforcement of judg-ments in civil and commercial matters, signed in Lugano on 30 October2007


Indeed, pursuant to article 86, the Administrative Com-mittee is granted with the power to amend the Agree-ment to bring it into line with an international treatyrelating to patents or Union law. Both articles 142 and149a EPC provide a suitable legal basis. To avoid anydisruption, it would be advisable to have both protocolsadopted and annexed to the withdrawal agreementbetween UK and the Union, so that they would be partof the Union law. In addition, they should enter intoforce on the day of the withdrawal of the UK from theUnion, meaning that the UK would be party to theseprotocols as a contracting non-Member State. With suchlegal framework, it is not foreseen that the Court ofJustice would disapprove it. However, this is mere spec-ulation. Obviously, whatever the solution endorsed forallowing a continued participation of the UK to theCourt, the application and the primacy of the Unionlaw and the authority of the Court of Justice should bepreserved. At present, it is hardly impossible to predictwhether UK would be ready – politically speaking – tobe bound to these principles. As an alternative, if theUK does not continue participating to the Court afterwithdrawal of the Union, an amendment of the Agree-ment would still be necessary, especially for relocatingthe London section of the central division. Italy hasalready shown interest in hosting this section in Milan34.

En route to the UPC

After several decades of aborted projects, and in spiteof the UK’s plans to withdraw from the Union, the prepa-ration work for the establishment of the Unified PatentCourt has started again. The results of the UK’s referen-dum made the patent community fear that it would bethe ultimate pitfall leading to the burial of the “unitarypatent” for good. However, the announcement made atthe Competitiveness Council meeting held on 28 Novem-ber 2016, and reiterated since by the new minister

responsible for intellectual property, shown that there ishope. Since then, as indicated hereinbefore, the UK hasactively engaged into ratifying the Agreement, by signinge.g. the protocol on privileges and immunities, and theUK IPO has set-up a dedicated team. In parallel, Germanyhas initiated again on December 2016 the ratificationprocess, with the German Federal Ministry of Justiceand Consumer Protection submitting to the FederalCouncil a new draft of the legislation to authorise rati-fication of the Agreement. Eventually, the PreparatoryCommittee published mid-January a new agenda – stillspeculative though – stipulating that the provisionalapplication phase may start as soon as May 2017, witha 3-month sunrise period commencing next September,and then the Court becoming operational by nextDecember. In the past weeks, further promising pro-gresses were made. Without being exhaustive: Italydeposited its instrument of ratification on 10 February,before signing UPC Provisional Application Protocol; UKis progressing further the legislation work, e.g. latelywith the publication of an Order relative to the Isle ofMan35; and Germany recently passed the draft legisla-tions necessary for ratifying the Agreement, those billsnow needing to progress through the next steps includ-ing before the Bundesrat and the Federal government.Even in Spain, which has been a fierce opponent to theUPC project for years, the opposition socialist party hasmade a non-legislative motion before the Parliament infavour of Spain signing and ratifying the Agreement,even though it should not lead to any change for thetime being. Eventually, on 15 March 201736, the Prepara-tory Committee will hold its final meeting. It is expected– hoped – that UK and Germany’s will to ratify promptlythe Agreement, and that the latest agenda envisioningthe kick-off of the system, will be confirmed. Hence,the patent community has now good reasons for beingoptimistic, and it can be expected that 2017 would bethe year when the finish line was reached.

34 Ordine dei Consulenti in Proprietà Industriale, Letter requesting the bidfor Milan to replace London as the location of a section of the centraldivision, published on 23 August 2016

35 The Patents (Isle of Man) (Amendment) Order 2017, laid before Parliamenton 22 February 2017

36 After submission of this article

Important Information for all epi Committee Members

Dear Committee Members,

As you will certainly be aware, in Berlin the Councilapproved to postpone the election of the Committeemembers until the Warsaw meeting in November 2017,when the respective elections will be held.

The exception will of course be the Disciplinary Com-mittee and the Internal Auditors, as stipulated in ourFounding Regulation.

Therefore, I would ask all the relevant Committee Chairsto inform the members of their Committees of this extraeffort which we are requesting of them by extendingtheir term of office, but which we hope will result in abetter governance of our Institute.

Kind regards,

João Pereira da CruzSecretary General

Information 01/2017Information from the Secretariat42

Disziplinarrat (epi) Disciplinary Committee (epi) Commission de Discipline (epi)

AL – NIKA MelinaAT – POTH Wolfgang°°BE – DEBLED ThierryBG – PAKIDANSKA Ivanka SlavchevaCH – REUTELER RaymondCY – ROUSOUNIDOU VasilikiCZ – FISCHER MichaelDE – FRÖHLING Werner°DK – FREDERIKSEN, JakobEE – KAHU SirjeES – STIEBE Lars MagnusFI – WESTERHOLM Christian

FR – ROUGEMONT BernardGB – GRAY JohnGR – TSIMIKALIS AthanasiosHR – KORPER ŽEMVA DinaHU – MARKÓ JózsefIE – SMYTH ShaneIS – HARDARSON Gunnar ÖrnLI – ROSENICH Paul*LT – GERASIMOVIČ JelenaLU – KIHN PierreLV – ŠMĪDEBERGA InâraMC – AUGARDE Eric

MK – DAMJANSKI VancoMT – SANSONE Luigi A.NL – HOOIVELD ArjenNO – THORVALDSEN KnutPL – ROGOZIŃSKA AlicjaPT – DIAS MACHADO António J.RO – TULUCA DoinaRS – BOGDANOVIC DejanSE – KARLSTRÖM LennartSI – REDENŠEK VladimiraSK – BAĎUROVÁ KatarínaSM – MARTINI RiccardoTR – YURTSEVEN Tuna**

Disziplinarausschuss (EPA/epi) Disciplinary Board (EPO/epi) Conseil de Discipline (OEB/epi)

epi Mitglieder

BE – CAMPABADAL Gemma

epi Members

DE – MÜLLER WolframFR – QUANTIN Bruno

Membres de l’epi

IS – VILHJALMSSON Arni

Beschwerdekammer inDisziplinarangelegenheiten (EPA/epi)

DisciplinaryBoard of Appeal (EPO/epi)

Chambre de Recours en Matière Disciplinaire (OEB/epi)

epi Mitglieder

DE – LENZ NannoDK – CHRISTIANSEN Ejvind

epi Members

ES – SUGRANES MOLINÉ PedroFR – GENDRAUD PierreGB – HALLYBONE Huw George

Membres de l’epi

GB – JOHNSON TerryNL – VAN WEZENBEEK Lambertus

Ausschuss für epi-Finanzen epi-Finances Committee Commission des Finances de l’epi

BE – QUINTELIER ClaudeCH – BRAUN AndréDE – MAIKOWSKI Michael*

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PL – MALEWSKA EwaRO – TULUCA DoinaSM – TIBURZI Andrea

Geschäftsordnungsausschuss By-Laws Committee Commission du Règlement Intérieur

Ordentliche Mitglieder

FR – MOUTARD Pascal*

Stellvertreter

AT – FORSTHUBER Martin

Full Members

GB – JOHNSON Terry

Substitutes

BE – LEYDER FrancisDE – THESEN Michael

Membres titulaires

IT – GERLI PaoloMC – SCHMALZ Günther

Suppléants

FR – LE VAGUERÈSE Sylvain

Ausschuss für EPA-Finanzen Committee on EPO Finances Commission des Finances de l’OEB


BE – QUINTELIER Claude

Stellvertreter

DE – SZYMANOWSKI Carsten

Full Members

CH – LIEBETANZ Michael**GB – BOFF Jim*

Substitutes

ES – JORDÁ PETERSEN SantiagoIT – LONGONI Alessandra

Membres titulaires

IE – CASEY Lindsay

Suppléants

NL – BARTELDS Erik

*Chair/ **Secretary °Vice-Chair / °°Vice-Secretary

Disziplinarorgane und Ausschü� sseDisciplinary Bodies and Committees · Organes de discipline et Commissions

Information 01/2017 Information from the Secretariat 43

Ausschuss fürEuropäische Patent Praxis

European Patent PracticeCommittee

Commission pour laPratique du Brevet Européen

AL – NIKA VladimirAL – HOXHA DitikaAT – VÖGELE AndreasAT – KOVAC WernerBE – LEYDER Francis*BE – COULON LudivineBG – BENATOV Samuil GabrielBG – SHENTOVA Violeta VarbanovaCH – WILMING MartinCH – MAUÉ Paul-GeorgCY – THEODOULOU Christos A.CZ – JIROTKOVA IvanaCZ – BUCEK RomanDE – VOGELSANG-WENKE HeikeDE – VÖLGER SilkeDK – CARLSSON EvaDK – PEDERSEN Søren SkovgaardEE – TOOME Ju� rgenEE – SARAP MargusES – BERNARDO FranciscoES – ARMIJO NAVARRO-REVERTER

EnriqueFI – HONKASALO Terhi Marjut

Anneli°

FI – WECKMAN ArjaFR – CALLON DE LAMARCK

Jean-RobertFR – LE VAGUERÈSE SylvainGB – MERCER ChrisGB – BOFF JimGR – SAMUELIDES Emmanuel°HR – HADŽIJA TomislavHR – TURKALJ GordanaHU – LENGYEL ZsoltHU – SZENTPÉTERI ZsoltIE – MCCARTHY DenisIE – BOYCE ConorIS – FRIDRIKSSON Einar**IS – MARLIN DanaIT – MACCHETTA FrancescoIT – MODIANO MicaelaLI – GYAJA ChristophLI – KEIL AndreasLT – BANAITIENE VitalijaLT – PAKENIENE AušraLU – LAMPE Sigmar°LU – OCVIRK Philippe**LV – SMIRNOV AlexanderLV – FORTUNA Jevgenijs

MC – HAUTIER NicolasMC – FLEUCHAUS Michael°MK – ILIEVSKI BogoljubMK – KJOSESKA MarijaNL – AALBERS ArntNL – JORRITSMA RuurdNO – REKDAL KristineNO – THORVALDSEN KnutPL – LEWICKA KatarzynaPL – BURY MarekPT – ALVES MOREIRA PedroPT – FERREIRA MAGNO FernandoRO – NICOLAESCU Daniella OlgaRO – TULUCA DoinaRS – PLAVSA UrosSE – CARLSSON FredrikSE – BLIDEFALK JennySI – IVANČIČ BojanSI – HEGNER Anette°SK – MAJLINGOVA� MartaSM – TIBURZI AndreaSM – PERRONACE AndreaTR – KÖKSALDI Sertaç MuratTR – DERIŞ Aydin

Ausschuss fürBerufliche Bildung

ProfessionalEducation Committee

Commission deFormation Professionnelle


AL – DODBIBA EnoAT – SCHWEINZER FritzBE – VAN DEN HAZEL BartBG – KOSSEVA Radislava AndreevaCH – BERNHARDT WolfgangCY – THEODOULOU Christos A.CZ – HARTVICHOVA KaterinaDE – LETZELTER FelixDK – STAHR PiaEE – NELSAS TõnuES – VILALTA JUVANTENY LuisFI – KONKONEN Tomi – Matti

Stellvertreter

AL – KRYEZIN VjollcaAT – MARGOTTI HerwigBE – D’HALLEWEYN NeleBG – BENATOV Samuil GabrielCH – WAGNER KathrinCZ – LANGROVA IrenaDE – AHRENS GabrieleDK – JENSEN Bo HammerES – SÀEZ GRANERO FranciscoJavier

Full Members

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Substitutes

FI – NYKÄNEN TerhiFR – FERNANDEZ FrancisGB – NORRIS TimHU – RAVADITS ImreIE – HARTE SeánIS – HARDARSON Gunnar ÖrnIT – GUERCI AlessandroLI – GYAJA ChristophLT – KLIMAITIENE OtilijaLU – BRUCK Mathias

DK – CHRISTIANSEN Ejvind

Membres titulaires

MC – THACH TumMK – PEPELJUGOSKI ValentinNL – VAN WEZENBEEK LambertusNO – BERG Per G.PL – MALCHEREK PiotrPT – FRANCO IsabelRO – FIERASCU Cosmina CatrinelSE – HOLMBERG MartinSI – FLAK AntonijaSM – PETRAZ Davide LuigiTR – YAVUZCAN Alev

Suppléants

LV – SERGEJEVA ValentinaNL – SMIT FreekNO – RØHMEN EirikPL – PAWŁOWSKI AdamPT – DE SAMPAIO JoséRO – TEODORESCU MihaelaSE – JÖNSSON ChristerSI – ROŠ ZlataSM – PRIMICERI Maria VittoriaTR – ATALAY Bariş

Examination Board Members on behalf of epi



Ausschuss für Standesregeln

Professional Conduct Committee

Commission deConduite Professionnelle


AL – SHOMO VjollcaAT – PEHAM AloisBE – VAN DEN BOECK, Wim**BG – KOSSEVA Radislava

AndreevaCH – RÜEDI RegulaCZ – MUSIL DobroslavDE – GEITZ HolgerDK – RØRBØL LeifEE – OSTRAT JaakES – ELOSEGUI DE LA PEÑA IñigoFI – KUPIAINEN Juhani°°FR – DELORME Nicolas

Stellvertreter

AT – FOX TobiasBE – VANHALST KoenBG – NEYKOV Neyko HristovCH – MAUÉ Paul-GeorgCZ – ZAK VítezslavDE – KASSECKERT RainerFI – SAHLIN JonnaFR – TARAVELLA Brigitte

Full Members

GB – NORRIS TimHR – BIJELIĆ AleksandarHU – LANTOS MihályIE – LUCEY MichaelIS – JÓNSSON ThorlákurIT – CHECCACCI Giorgio*LI – WILDI RolandLT – BANAITIENE VitalijaLU – KIHN HenriLV – SMIRNOV AlexanderMC – HAUTIER NicolasMK – KJOSESKA Marija

Substitutes

GB – POWELL TimHR – DLAČIČ AlbinaIE – O’NEILL BrianIS – FRIDRIKSSON EinarIT – MARIETTI AndreaLT – DRAUGELIENE VirginaLV – FORTUNA LarisaNL – PETERS John

Membres titulaires

MT – CAMILLERI AntoineNL – BOTTEMA HansNO – FLUGE PerPL – HUDY LudwikPT – BESSA MONTEIRO CesarRO – PETREA Dana MariaSE – LINDGREN AndersSI – MARN JureSK – ČECHVALOVÁ DagmarSM – BERGAMINI SilvioTR – ARKAN Selda

Suppléants

NO – SELMER LorentzPL – KREKORA MagdalenaPT – GARCIA João LuisRO – BUCSA GheorgheSE – SJÖGREN-PAULSSON StinaSI – GOLMAJER ZIMA MarjanaSM – MERIGHI Fabio Marcello

Ausschuss für Streitregelung

Litigation Committee

La Commission Procédure Judiciaire


AL – PANIDHA ElaAT – KOVAC WernerBE – VANDERSTEEN PieterBG – GEORGIEVA-TABAKOVA

Milena LubenovaCH – THOMSEN Peter**CY – THEODOULOU

Christos A.CZ – GUTTMANN MichalDE – PFRANG TilmanDK – KANVED NicolaiEE – KOPPEL Mart EnnES – ARIAS SANZ Juan

Stellvertreter

AT – NEMEC HaraldBE – MELLET ValérieBG – PAKIDANSKA Ivanka

SlavchevaCH – DETKEN AndreasCZ – HALAXOVÁ EvaDE – MOHSLER GabrieleDK – CHRISTIANSEN EjvindES – JORDÀ PETERSEN SantiagoFI – VÄISÄNEN Olli JaakkoFR – GENDRAUD Pierre

Full Members

FI – ETUAHO KirsikkaFR – CASALONGA Axel*GB – HEPWORTH John MalcolmHR – VUKINA SanjaHU – TÖRÖK Ferenc°IE – WALSHE TrionaIS – HARDARSON Gunnar ÖrnIT – COLUCCI GiuseppeLI – HARMANN Bernd-GüntherLT – ŽABOLIENE RedaLU – BRUCK MathiasLV – OSMANS VoldemarsMC – SCHMALZ Günther

Substitutes

HR – VUKMIR MladenIE – WHITE JonathanIS – FRIDRIKSSON Einar KarlIT – DE GREGORI AntonellaLI – MARXER AmonLT – KLIMAITIENE OtilijaLU – LECOMTE DidierLV – FORTUNA JevgenijsMC – THACH TumNL – STEENBEEK Leonardus

Johannes

Membres titulaires

MK – DAMJANSKI VancoNL – CLARKSON Paul MagnusNO – SIMONSEN KariPL – BURY LechPT – CRUZ NunoRO – PUSCASU DanRS – ZATEZALO MihajloSE – LINDEROTH MargaretaSI – DRNOVŠEK NinaSK – NEUSCHL VladimírSM – MASCIOPINTO Gian GiuseppeTR – DERIŞ Aydin

Suppléants

NO – THUE LIE HaakonPL – KORBELA AnnaPT – CORTE-REAL CRUZ AntónioRO – VASILESCU RalucaSE – MARTINSSON PeterSI – KUNIĆ TESOVIĆ BarbaraSK – BAĎUROVÁ KatarínaSM – MAROSCIA AntonioTR – CORAL Serra Yardimici



Ausschuss fürBiotechnologische Erfindungen

Committee onBiotechnological Inventions

Commission pour lesInventions en Biotechnologie

AL – SINOJMERI DianaAT – PFÖSTL AndreasBE – DE CLERCQ Ann*BG – STEFANOVA Stanislava

HristovaCH – WÄCHTER DieterCZ – HAK RomanDE – KELLER GüntherDK – SCHOUBOE AnneES – BERNARDO NORIEGA

FranciscoFI – KNUTH-LEHTOLA Sisko

FR – TARAVELLA BrigitteGB – WRIGHT Simon**HR – DRAGUN TihomirHU – PETHÖ ÁrpádIE – HALLY Anna LouiseIS – JÓNSSON ThorlákurIT – CAPASSO OlgaLI – BOGENSBERGER BurkhardLT – GERASIMOVIČ LiudmilaLU – SPEICH StéphaneLV – SERGEJEVA ValentinaMK – ILIEVSKI Bogoljub

MT – SANSONE Luigi A.NL – SWINKELS BartNO – THORESEN LivPL – CHLEBICKA LidiaPT – CANELAS AlbertoRO – POPA CristinaRS – BRKIČ ŽelijkaSE – MATTSSON NiklasSI – BENČINA MojcaSK – MAKELOVÁ KatarínaSM – PRIMICERI Maria VittoriaTR – ILDEŞ ERDEM Ayşe

Harmonisierungsausschuss Harmonisation Committee Commission d’Harmonisation


BE – LEYDER Francis**CH – BRAUN Axel

Stellvertreter

AT – FORSTHUBER MartinGB – JOHNSON Terry

Full Members

DE – STEILING LotharES – DURAN Luis-AlfonsoGB – BROWN John*

Substitutes

FI – KÄRKKÄINEN Veli-MattiFR – CONAN PhilippeIT – SANTI Filippo

Membres titulaires

IE – GAFFNEY Naoise EoinMC – THACH Tum

Suppléants

SE – MARTINSSON PeterTR – MUTLU Aydin

Ausschuss für Patentdokumentation

Patent Documentation Committee

Commission Documentation Brevets


AT – GASSNER Birgitta

Stellvertreter

DE – WINTER Andreas

Full Members

DK – INDAHL Peter*FI – LANGENSKIÖLD Tord

Substitutes

GB – GRAY JohnIT – GUERCI Alessandro

Membres titulaires

IE – O’NEILL Brian

Suppléants

NL – VAN WEZENBEEK Bart

Wahlausschuss Electoral Committee Commission pour les Élections

CH – MÜLLER Markus* GB – BARRETT Peter IS – VILHJÁLMSSON Árni

Redaktionsausschuss Editorial Committee Commission de Rédaction

DE – WIEDEMANN Albert FR – NEVANT MarcGB – JOHNSON Terry*

NL – NOLLEN Maarten


Ausschuss fürOnline-Kommunikation

OnlineCommunications Committee

Commission pour lesCommunications en Ligne

DE – ECKEY LudgerDK – INDAHL PeterFI – VIRKKALA Antero Jukka*

FR – MÉNÈS CatherineGB – DUNLOP HughIE – BROPHY David

Timothy**IT – BOSOTTI Luciano

NL – VAN DER VEER JohannisLeendert

SM – MASCIOPINTO Gian Giuseppe


Ständiger BeratenderAusschuss beim EPA (SACEPO)

Standing Advisory Committeebefore the EPO (SACEPO)

Comité consultatif permanentauprès de l’OEB (SACEPO)

epi-Delegierte

BE – LEYDER FrancisDE – LEISSLER-GERSTL GabrieleDK – HEGNER Annette

epi Delegates

FI – HONKASALO MarjutFI – VIRKKALA AnteroGB – BOFF JimGB – WRIGHT Simon

Délégués de l’epi

IT – BOSOTTI LucianoNL – TANGENA AntoniusRO – TEODORESCU Mihaela

SACEPO –Arbeitsgruppe Regeln

SACEPO –Working Party on Rules

SACEPO –Groupe de Travail Règles

BE – LEYDER Francis GB – MERCER Chris FI – HONKASALO Marjut

SACEPO –Arbeitsgruppe Richtlinien

SACEPO –Working Party on Guidelines

SACEPO –Groupe de Travail Directives

DE – LEISSLER-GERSTL Gabriele DK – HEGNER Anette GR – SAMUELIDES Manolis

SACEPO –Arbeitsgruppe Qualität

SACEPO –Working Party on Quality

SACEPO –Groupe de Travail Qualité

MK – ILIEVSKI Bogoljub

SACEPO – PDI SACEPO – PDI SACEPO – PDI

AT – GASSNER Brigitta DK – INDAHL PeterFI – LANGENSKIÖLD Tord

IE – O’NEILL Brian

SACEPO – EPP SACEPO – EPP SACEPO – EPP

BE – BIRON Yannick FI – VIRKKALA Antero IE – BROPHY David


Interne Rechnungsprüfer

Internal Auditors

Commissaires aux Comptes Internes

Ordentliche Mitglieder Full Members Membres titulaires

Stellvertreter Substitutes Suppléants

CH – KLEY Hansjörg FR – CONAN Philippe

DE – TANNER Andreas IT – GUERCI Alessandro

Nominierungskomitee Nominations Committee Comité de Proposition

BE – QUINTELIER Claude*DE – LEISSLER-GERSTL Gabriele

ES – DURÁN Luis-AlfonsoFR – LE VAGUERÈSE Sylvain**

RO – TEODORESCU MihaelaTR – ARKAN Selda

Zulassungsausschuss für epi Studenten

epi StudentshipAdmissions Committee

Comité d'admission des étudiants de l'epi

CH – FAVRE NicolasDE – LEISSLER-GERSTL GabrieleDE – KASTEL Stefan

GB – MERCER ChrisGR – ROUKOUNAS Dimitrios

IT – MACCHETTA FrancescoIT – PROVVISIONATO Paolo


Präsident / President / PrésidentNL – TANGENA Antonius

Vize-Präsidenten / Vice-Presidents Vice-PrésidentsDE – LEISSLER-GERSTL GabrieleRO – TEODORESCU Mihaela

Generalsekretär / Secretary General Secrétaire GénéralPT – PEREIRA DA CRUZ João

Stellvertretender Generalsekretär Deputy Secretary General Secrétaire Général AdjointFI – HONKASALO Marjut

Schatzmeister / Treasurer / TrésorierCH – THOMSEN Peter

Stellvertretender Schatzmeister Deputy Treasurer / Trésorier AdjointEE – SARAP Margus

AL – NIKA VladimirAT – FORSTHUBER MartinBE – LEYDER FrancisBG – ANDREEVA PETKOVA

NatashaCH – LIEBETANZ MichaelCY – THEODOULOU Christos A.CZ – GUTTMANN MichalDE – MOHSLER GabrieleDK – HØIBERG SusanneES – SÁEZ GRANERO

Francisco FR – BAUVIR JacquesFR – NUSS LaurentGB – WRIGHT Simon GB – MERCER ChrisGR – BAKATSELOU VassilikiHR – BOŠKOVIC� DavorHU – TÖRÖK FerencIE – CASEY LindsayIS – JÓNSSON Thorlákur

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