INFORMATION FROM THE EPO
Notices of the President of the EPO
Recognition of microbiological experts for the purpose of Rule 28 EPC
By Decision of 28 July 1981, the President of the European Patent Office recognised, in accordance with Rule 28(5)(b) EPC, a first batch of experts in the field of microbiology as experts for the purposes of Rule 28 EPC. The first list of these experts, containing all the relevant information, is published in Part III below pursuant to Rule 28(9) EPC.
The recognition of experts for the purposes of Rule 28 occurs on the basis and in accordance with the "General Conditions set by the President of the European Patent Office for the recognition of experts in accordance with Rule 28(5)(b) of the European Patent Convention (EPC)" and the "Declaration for the purposes of recognition as an expert by the President of the European Patent Office in accordance with Rule 28(5)(b) of the European Patent Convention (EPC)" which has to be supplied by each applicant for recognition. These two texts are given in Parts I and II below.
1. GENERAL CONDITIONS SET BY THE PRESIDENT OF THE EUROPEAN PATENT OFFICE FOR THE RECOGNITION OF EXPERTS IN ACCORDANCE WITH RULE 28, PARAGRAPH 5(b), OF THE EUROPEAN PATENT CONVENTION (EPC)
Preamble
Rule 28 EPC as amended by Decision of the Administrative Council of 30 November 1979 (Official Journal 11-12/1979, p.447), entered into force on 1 June 1980. It lays down special requirements for European patent applications concerning certain inventions in the field of microbiology. If such an invention involves the use of a micro-organism which is not available to the public and which cannot be described in the European patent application in such a manner as to enable the invention to be carried out by a person skilled in the art, the invention is only regarded as being sufficiently disclosed within the meaning of Article 83 EPC if a culture of the micro-organism has been deposited with a depository institution recognised by the European Patent Office (EPO) not later than the date of filing of the application, and if the application gives certain information necessary for characterising and identifying the micro-organism (Rule 28, paragraph 1).
The deposited culture of the micro-organism is available upon request to any person at the latest from the date of publication of the European patent application. Such availability is effected by the issue of a sample to the requester, provided that the latter has undertaken, vis-à-vis the applicant for or proprietor of the patent, not to make the deposited culture or any culture derived therefrom available to any third party and to use them for experimental purposes only, until such time as certain events specified in Rule 28, paragraph 3, take place (grant of the patent or some other outcome of the patent application).
However, until the date on which the technical preparations for publication of the application are deemed to have been completed, the applicant may inform the EPO that, until such time as certain events specified in Rule 28, paragraph 4, take place (grant of the patent or some other outcome of the patent application), the availability of the deposited culture shall be effected only by the issue of a sample to an expert nominated by the requester.
In accordance with Rule 28, paragraph 5, the requester may nominate as an expert any natural person whose nomination has the approval of the applicant or who is recognised as an expert by the President of the EPO. The list of experts recognised for the purpose of Rule 28 shall be published in the Official Journal of the EPO (Rule 28, paragraph 9).
The following conditions and requirements apply with regard to recognition as an expert for the purpose of Rule 28 EPC (hereinafter referred to as "recognised expert").
General prerequisites for recognition as an expert
1. Any natural person may be recognised as an expert for the purpose of Rule 28 EPC, provided that person is able to demonstrate that he has sufficient scientific and practical experience in the field of microbiology in its widest sense to qualify him to deliver, on the basis of taxonomic, practical or other kinds of analyses, experiments or tests, expert opinions regarding micro-organisms deposited for the purpose of Rule 28 EPC, and provided that he possesses or has access to the equipment, appliances and facilities necessary for delivering such opinions.
These prerequisites may apply in respect of one or more kinds of micro-organisms and one or more kinds of analyses, experiments or tests.
2. A person cannot be recognised as an expert unless he provides sufficient guarantee that he possesses the personal independence and impartiality expected of an expert. As a means of asserting his independence and impartiality, the applicant for recognition shall declare to the President of the EPO that to the best of his knowledge and belief there are no reasons which might give rise to justified doubts as to his independence and impartiality as an expert or which might conflict in any other way with his recognition as an expert.
3. A person cannot be recognised as an expert unless he undertakes vis-à-vis the President of the EPO that he is prepared to deliver expert opinions for any person upon request in respect of micro-organisms deposited for the purpose of Rule 28 EPC, under the conditions prescribed by Rule 28 and in particular paragraph 3 thereof, if the micro-organism concerned belongs to one of the kinds of micro-organisms specified by him and notified to the President of the EPO. However, a recognised expert's acceptance or refusal in individual cases of requests for an opinion is governed solely by points 7 to 10 of these Conditions.
4. A person cannot be recognised as an expert unless he undertakes vis-à-vis the President of the EPO to enter into and comply, vis-à-vis any applicant for or proprietor of a patent who for the purpose of Rule 28 EPC has deposited a micro-organism a sample of which is to be or has been supplied to him, in his capacity as a recognised expert, for the purpose of an expert opinion at a request of a third party, with the obligations under Rule 28, paragraph 3(a) and (b), EPC - paragraph 7 of the latter Rule being observed and the requester (person commissioning the opinion) being regarded as a third party within the meaning of Rule 28, paragraph 3, EPC.
5. Any person applying for recognition as an expert shall preferably specify what particular kinds of analyses, experiments or tests - e.g. taxonomic, practical or other - he is prepared or, as the case may be, not prepared to carry out.
6. A person cannot be recognised as an expert unless he declares to the President of the EPC that he has taken note of these Conditions and unless he undertakes to comply with the obligations there under for the duration of his status as recognised expert and, where applicable, after he ceases to hold such status.
Acceptance or refusal by a recognised expert of requests for an expert opinion
7. Subject to an agreement with the requester (person commissioning the opinion) concerning special requirements attaching to his work, including reasonable remuneration thereof, the recognised expert shall deliver the opinion required by the requester (person commissioning the opinion) unless he is obliged under point 8 of these Conditions, or entitled under point 9 thereof to refuse the request.
8. The recognised expert shall be obliged to refuse a request for an expert opinion, if
(i) its subject, on thorough examination, lies outside the range of his expertise;
(ii) he does not possess the equipment, appliances or facilities necessary for carrying out the commission for an opinion (in particular that necessary for performing the required analyses, experiments or tests), or has access to such equipment, appliances or facilities only on conditions incompatible with his undertaking not to make the sample he has received of the deposited culture available to any third party, as prescribed by Rule 28, paragraph 3(a), EPC;
(iii) if there are circumstances which might give rise to justified doubts as to his independence and impartiality, e.g. because of conflict of interests;
(iv) in accepting or performing the commission for an opinion, the recognised expert would infringe, as a result of the agreement desired by the requester (person commissioning the opinion), his obligations under these Conditions or under Rule 28 EPC.
9. The recognised expert shall be entitled to refuse a request for an expert opinion, if
(i) the micro-organism to which the request relates does not belong to one of the kinds of micro-organisms specified by him in accordance with point 3 of these conditions or if the opinion desired by the requester (person commissioning the opinion) requires analyses, experiments or tests which the recognised expert, by virtue of a declaration under point 5 of these Conditions, is not prepared to carry out;
(ii) as a result of personal circumstances, e.g. illness, overwork or lengthy absence, he cannot deliver the opinion or cannot do so within a reasonable period of time.
10. If the recognised expert refuses to accept a request for an opinion, he shall inform the requester (person commissioning the opinion) and the President of the EPO immediately, giving the reasons for refusal.
Performance of commissions for an opinion by the recognised expert
11. The performance of commissions by the recognised expert is governed by the content of the agreements between the recognised expert and the requester (person commissioning the opinion) and by the law applicable to such agreements.
12. The recognised expert shall observe the principles of objectivity and impartiality in performing the commission and making known its results to the requester (person commissioning the opinion).
13. Without prejudice to his undertaking under Rule 28, paragraph 3(a) EPC, the recognised expert shall, when performing the commission, take all necessary measures to prevent the micro-organism samples received and further samples derived therefrom being made available to third parties.
14. The recognised expert shall as far as possible perform the commission and, in particular, the necessary analyses, experiments or tests in person and must not appoint a proxy for the purpose. However, he may, insofar as is necessary, make use of the services of assistants and other persons under his personal direction and supervision. Such persons are not to be regarded as "third parties" within the meaning of Rule 28, paragraph 3(a), EPC and point 13 of these Conditions.
15. Liability on the part of the recognised expert, including liability for persons engaged by him in accordance with point 14 of these Conditions, vis-à-vis persons other than the requester (person commissioning the opinion) and in particular vis-à-vis the applicant for or proprietor of a patent, arising out of a breach of contractual or statutory obligations and the resulting damages, is governed by the law applicable.
Termination of status as recognised expert
16. The status as recognised expert ceases when the recognised expert is deleted from the list of recognised experts. This shall occur:
(i) at any time upon request by the recognised expert;
(ii) ex officio, if the prerequisites for recognition as an expert are not at the time of recognition or cease to be met, or for any other important reason, e.g. if the recognised expert infringes his obligations under Rule 28 EPC or under these Conditions.
Other conditions and requirements
17. There is no automatic legal right to recognition as an expert for the purpose of Rule 28 EPC, even if the applicant meets all the prerequisites for recognition specified in these Conditions.
18. The recognised expert shall in his capacity, and particularly when performing commissions for an opinion, observe the generally recognised rules and principles of professional conduct applicable to his field of expertise.
19. The recognised expert shall inform the President of the EPO of any change in his personal, professional or other circumstances which is of importance to or may have an effect on his recognition or work as recognised expert.
20. The European Patent Office shall supply the recognised expert with any information which he needs in order to perform his work as recognised expert.
21. The President of the EPO shall publish in the Official Journal the list of recognised experts and any changes therein. This list shall give the name and address of each recognised expert, the kinds of micro-organisms specified by him in accordance with point 3 of these Conditions and, where applicable, the particular kinds of analyses, experiments or tests he is not prepared to carry out and which he has specified in accordance with point 5 of these Conditions.
22. These Conditions shall apply for the duration of the status as recognised expert and, where applicable, after this status ceases to exist. The obligation incurred by the recognised expert under Rule 28, paragraph 3 EPC vis-à-vis the applicant for or proprietor of the patent shall remain unaffected.
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