Kluwer Patent Blog

In decision G2/08, available on the EPO website, the Enlarged Board of Appeal provides a problem in relation to the Swiss type claims. It announces the abolition of the use of these claims in point 7.1.4 of the Reasons:

“In order to ensure legal certainty and to protect legitimate interests of applicants, the abolition of this possibility by the interpretation of the new law given by the Enlarged Board in this decision shall therefore have no retroactive effect, and an appropriate time limit of three months after publication of the present decision in the Official Journal of the EPO is set in order for future applications to comply with this new situation.”

The problem is: what is the first day on which the abolition takes effect and an application may not use anymore Swiss type claims? The problem is twofold. The first aspect is where the date of publication is mentioned and the second one is how to calculate the three-month period starting from this date of publication.

1. The date of abolition is based on the date of publication of the decision G2/08 in the Official Journal. However, no date of publication is printed in the paper versions of the Official Journal issued up to now.
The avid reader of the EPO website will have noticed that the Official Journals as of the January issue of 2010 have a date of publication. See e.g. the web page for 2010 .
This would appear to solve the question of the date of publication. However, this date cannot be used for legal purposes, because the EPO does not guarantee the accuracy of the data; see ‘Terms of use’ of the website, in particular points 4.1 and 4.4. A link to the terms of use is provided in the footer of the above website.

“4.1. Unless otherwise stated, the Information is of a general nature only and not intended to address the specific circumstances of any particular case, individual or entity. The EPO cannot guarantee that the Information is always comprehensive, complete, accurate and up-to-date. Consequently, the EPO accepts no responsibility for any loss or damage that may arise from reliance on the Information.”

“4.4. Official documents published or intended for publication in paper form (such as the European Patent Convention and its protocols, decisions of the Administrative Council and the Official Journal of the European Patent Office) are made available for users’ convenience only. It cannot be guaranteed that they accurately replicate the originals.”

What can be taken as the accurate and reliable date of publication of the Official Journal of the EPO in which decision G2/08 will be published?

2. The second aspect relates to the calculation of the three-month period. The decision does not clarify the following points relating to the time limit:
– whether Rule 131(4) EPC should be used to calculate the time limit of three months from the date of publication,
– whether the period is extended under Rule 134 EPC in view of non-working days, and
– whether the first day on which an application may not use Swiss-type claims anymore is the date of expiry of the three-month period or the next day.

For example, if the October issue of the Official Journal that contains the decision is published on 29 October, does the time limit of three months fall on 29 January (Saturday) or on 31 January (Monday), and, assuming it is 29 January, is the prohibition on Swiss-type claims effective for applications ‘filed on or after 29 January’ or ‘filed after 29 January’?

It is unlikely that the Enlarged Board of Appeal will provide an interpretation of its own decision. We hope the EPO will provide legal certainty for the public in due course.

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