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The Past The limitations of the original Convention have become apparent over the years since the EPO opened its doors in 1978. The fact that patent proprietors resorted to opposing their own applications revealed the desirability of some form of centralised post-grant amendment system. Although the Enlarged Board of Appeal decision in G9/93 prohibited such self-oppositions, the lack of a suitable post-grant amendment procedure remained. The absence of an effective means of correcting Board of Appeal decisions tainted by serious procedural defects or criminal acts was apparent from the facts leading to the Enlarged Board of Appeal decision in G1/97. The new EPC 2000 addresses these failings by providing for post-grant limitation and revocation and petitions for review. Experience has also shown the limitations of the mechanisms for re-establishing rights when time limits are missed. Restitution under Article 122 EPC has always been difficult to obtain due to the strict requirement to show that “all due care” was taken. However, applicants were often forced to rely on the stricter restitutio provisions for minor omissions because the simpler further processing procedure was restricted to use in respect of missed time limits set by the office which led to an application being deemed withdrawn. The revised EPC strikes a new balance by making further processing available in respect of almost all time limits during prosecution, while retaining re-establishment of rights under Article 122 EPC as a backstop. Historic problems arising from the lack of attorney-client privilege for correspondence between professional representatives and their clients, as highlighted in Bristol-Myers Squibb v. Rhône Poulenc Rorer (Southern District of New York, 21 April 1999), have also been addressed by providing for such privilege under new Article 134a EPC, as supplemented by new Rule 153 EPC. These measures are aimed at protecting client correspondence from disclosure in U.S. court proceedings. |
