The Tegernsee process

1. epi Harmonisation Committee’sPosition Paper relating to Tegernsee studiesFilippo Santi Member of the Harmonisation Committeeepi-AIPLA meetingMunich, 15 March 2013

2. The Tegernsee process • The Tegernsee group Composed by heads of Offices and representatives from Denmark, France, Germany, Japan, UK, the USA and the EPO (first met upon the invitation of EPO President at Tegernsee on 5 - 6 July 2011) • The Tegernsee Expert Group A group of technical and legal experts entrusted with a fact finding and information gathering to provide a contribution to a wider discussion involving all relevant parties and consulting stakeholders as appropriate

3. The Tegernsee process • The four studies of the Experts The Tegernsee Experts Group was entrusted with the carrying out of four studies, consisting of fact-finding work mainly of a technical nature, focusing on: • grace period, • 18-month publication, • treatment of conflicting applications, • prior user rights. The studies were published on the EPO website (http://www.epo.org/news-issues/news/2012/20121108a.html)

4. The Tegernsee process • The User Consultation Broad stakeholder consultation was implemented in January-March 2013, involving both user hearings and written responses to questionnaires. The experts will report on the outcome of the consultations at the next meeting of the Tegernsee Heads, which will take place in late spring 2013

5. The epi HC position paper • The epi Harmonisation Commitee position paper epi was invited to participate to a hearing of European Users organised by the EPO to discuss the issues raised in the questionnaire The epi Harmonisation committee met in January, to assess the position of epi with regard to the Tegernsee report and the questionnaire, also in the light of a previous position paper adopted in May 2006 on part of the same matter

6. The epi HC position paper • Grace period epi HC remains opposed to any kind of grace period but could consider a grace period as a safety net as part of a harmonised system comprising a true first-to-file system with the following features: • a duration of 6 months preceding the priority date; • a formal declaration should be mandatory; • third party rights should be mandatory; • wrongful publication of an application by a patent office should be included.

7. The epi HC position paper • 18 months publication epi HC is of the opinion that publication should take place at 18 months worldwide Unpublished applications create legal uncertainty

8. The epi HC position paper • 18 months publication (considerations) Patent offices should be encouraged to provide search reports as early as possible so that applicants can make informed decisions on whether to withdraw before publication and whether to file other applications. However, publication should not be delayed because a search report is not available. epi is of the opinion that provisional protection should be provided

9. The epi HC position paper • Treatment of conflicting applications – Assessment of the content epi HC is in favour of the whole contents approach because this approach preserves the ability of the first filer to use, and if desired patent, matter disclosed but not claimed in an application, in the face of a later application claiming such matter

10. The epi HC position paper • Treatment of conflicting applications – Anti-self-collision epi HC is against anti-self-collision provisions on the basis that such provisions inherently discriminate in an unfair manner by assessing different applications on different art depending upon the identity of the applicant

11. The epi HC position paper • Treatment of conflicting applications – Assessment and effect of conflicting applications epi HC is in favour of the European Patent Office approach to assessing conflicting applications (novelty only) because this results in a clear and unambiguous determination that does not assess the later application on the basis of obviousness over a document the inventor could not know of

12. The epi HC position paper • Treatment of conflicting applications – Whichapplications are conflictingapplications? According to EPC2000 a European patent application automatically has effect for all states [transitional provisions excepted – before EPC2000, the earlier application was not a conflicting applicationfor any country designated in the later application and not in the earlier application] National patents and utility models in EPC member states are not prior art so far as the EPO is concerned, but on a national level with respect to national validations

13. The epi HC position paper • Treatment of conflicting applications – Which applications are conflicting applications? Earlier-filed, later published, PCT applications are only considered conflicting applications if the EPO filing fee has been paid and, if not originally written in English, French or German, a translation has been filed epi HC is of the opinion that conflicting PCT applications should form part of the secret prior art, entering the state of the art at the date of publication under Art 21 PCT, with the same effect as a European application

14. The epi HC position paper • Prior user rights (preliminary considerations) Prior user rights are rarely used because the requirements and level of proof required differ everywhere and are restrictive The European system is not a good model because a prior user right in one EU State does not appear to provide any prior user rights in any other EU State, which leads to legal uncertainty

15. The epi HC position paper • Prior user rights epi HC does not, therefore, feel that now is the time for worldwide harmonisation of prior user rights , but consideration of what could be harmonized in the EU would be useful epi HC strongly recommends that the aspects of the territorial effect of prior user rights in the EU are explored, particularly bearing in mind that Art 28 of the draft Agreement on a Unified Patent Court appears to restrict prior user rights to the national country

16. Institut der beim Europäischen Patentamt zugelassenen VertreterInstitute of Professional Representatives before the European Patent OfficeInstitut des mandataires agréés près l'Office européen des brevets Thank you for your attention! Filippo Santi