Monitor ab 17 "
Monitor bis 15 "
 
Willkommen, Kontakt > Informationen > EPC
AMMANN PATENT ATTORNEYS: Information

Information about the European Patent Convention (EPC) and by the European Patent Office (EPO)

The following information is not to be construed as legal advice. Though care is invested in compiling these data, no responsibility whatsoever for completeliness or correctness thereof can be taken over.

Regarding jurisdiction of the EPO, particularly the Boards of Appeal and the Enlarged Board of Appeal, please visit the database of decisions maintained by the EPO.

Last update: 1 February 2018.

Date Re* Information
1 April 2018 EP PPH OJ EPO 2018/1:

  • European regional phase of PCT application,where the ISR has been established by Japanese, Korean, Chinese, Russian, Australian, or U.S. patent office: No Reduction of the fee for the Supplementary European Search Report anymore after 31 March 2018. If the reduction was still applied up to 30 September 2018, the EPO will issue a respective Communication imposing a timelimit of 2 months to settle the missing amount.
  • The customary increase of fees takes place on 1 April 2018, with a further incerease of the grant fees on 1 April 2019.
  • Filing fee for European patent application reduced by 30 € and PCT handling fee reduced to 0 if application is filed online and the specification is character coded. "Character coded" will be defined in a (forthcoming) decision of the President of the EPO.
  • Fee of appeal is reduced for privileged entities according to Rule 6(4) EPC and individuals. The status at the date of filing the appeal berief is decisive, no retroactive effect of subsequent events. Filing of appeal brief in another language than English, French, and German is required.

(OJ EPO 2018/1 A3 - A5)

1 March 2018 EP KH

On 23 January 2017, EPO and the Cambodia agreed to allow European patents to be validated in Cambodia. The agreement enters into force on 1 March 2018. The request for validation in Cambodia is considered to be filed for any European patent application filed on 1 March 2018 and afterwards. The same applies to an international (PCT) application with the European Patent Office being designated or elected. Validation in Cambodia of patent applications filed before 1 March 2018 is not available. It is to be taken into account that the Cambodian rules of patentability apply, in particular as to patentable subject matter. E.g. pharmaceutical preparations are currently not patentable in Cambodia. Yet, a mailbox system exists under Art. 70.8 TRIPS: Such patent applications may be filed, but the examination will start only once the transition period has ended.

The fee for validation is fixed to be EUR 180. The applicable timelimit is the same as for examination fee and designation fees (the later of: a) 6 months after publication of the European search report, and b) if applicable, the timelimit for performing the acts necessary to enter the regional phase of a PCT application before the EPO).

(OJ EPO 2018/2 A15 - A16)

11 January 2018 EP PPH

EPO informs about continuing the PPH with patent offices of Canada, Israel, Mexico, and Singapore Generally, in providing the examination result of earlier eexamination in a participating patent office which resulted in a set of claims acceptable for grant of a patent, on the basis of this same set of claims, an acceleration of the examination by EPO may be requested. Furthermore, the examination results of the earlier examination will be duly taken into account. The corresponding request has to be filed before examination by the EPO has begun. Details have to ascertained in the individual PPH agreement published in the EPO OJ. Presently, EPO has agreed to PPH collaboration with patent office of the following countries (cf. Ancillary Regulations 2016 C.2.3):

CA, CN, IL, JP, KR, MX, SG, US

(OJ EPO 2017/12 A107 - A110)

01 December 2017 EP

Online payment of fees by credit will become available on 1 December 2017. Some further details:

  • Online service requires login by userid (email address) and password. Smart card is not required.
  • Payment is deemed validly made if confirmation of transaction is received. If the confirmation is received before expiry of a timelimit, it may serve as a proof that a payment has been made in time, e.g. in case of a failure of the transaction process.
  • The online service provides a chouce of frequently paid fees. Rare fees will need to be manually entered in respective field.
  • Refund to credit card account are not provided for.
  • Presently accepted cards: Visa, Mastercard.

(OJ EPO 2017/09 A72, A73)

01 November 2017 EP

Revised Form 1200 (entry of regional phase of a PCT application before the EPO) is available:

  • Field 6.1: Claims amended under Art. 19 PCT replace by default the originally filed claims. If the original claims shall be prosecuted, a respective request has to be filed.
  • Section 12.1: A check box is available to request early processing of the regional phase.
  • Section 12.2: Waivers are moved to Section 12.2 for reasons of logic.

(OJ EPO 2017/09 A74)

01 October 2017 EP

PPH agreement between EAPO and EPO enteres into force on 1 October 2017. Presently, its duration will end on 30 September 2020 due to its character as a trial phase.

(OJ EPO 2017/09 A77)

01 July 2017 EP

Paragraph added to Rule 28 EPC:

(2) Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process

Ratio behind is a revised interpretation of the EU Guideline 98/44: Biological processes are inherently not reproduceable and therefore not patentable (- else they would be technical).

(OJ EPO 2016 A57)

01 May 2016 EP

The rule that amendments of a European patent application even if filed during Oral Proceedings have to be typewritten, is replaced by an amendment of R. 82 that the opposition division requires to file pages complying with R. 49(8) within the 3 months timelimit to pay the printing fee and to file the translations of the claims. The amended rule enters into force on 1 May 2015. (Decision of the Administrative Council of 14 October 2015 CA/D 9/15)

(OJ EPO 2015/10 A73, A74)

01 NOV 2015 EP

  • New Guidelines for Examination have been published by the EPO and are applied after 31 October 2015 exclusively.
  • The EPO elaborated and published Guidelines for the Search and Preliminary Examination within the EPO as a PCT Office. "Search" includes ISR and SISR. The Guidelines will apply after 31 October 2015.

(OJ EPO 2015/09 A73, A74)

01 NOV 2015 EP MD

European patents can be validated in Moldavia if filed from 1 November 2015 2015 on.

News of the EPO dated 1 November 2015

01 MAR 2015 EP MA

European patents are recognised in Morocco for European patent applications filed from 1 March 2015 on.

News of the EPO dated 19 January 2015

01 Nov 2014 EP R164

Additional Searches for European Regional Phases available again (R. 164 EPC)

From 1 November 2014 on, in cases where either in establishing a supplementary search report or during examination, non-unity of invention is supposed by the Search respectively Examining Division, additional search fees are asked for. In response, the applicant may decide if and for which alleged second and further inventions search fees are paid. As far as the requirement to of non-unity is reversed later on, respective additionally paid search fees are refunded.

Amended Rule 164 will apply to:

  • any regional phase where a supplementary seach report is required, yet not established on 1 November 2014
  • where a supplemetary search is dispensed with (the EPO has acted a ISA or SISA), where a Communication under Article 94(3) EPC and Rule 71(1) and (2) EPC or, as the case may be, Rule 71(3) has not issued by that date.

Details:
For the prosecution of a European patent application, the applicant may choose any subject matter searched by the mandatory (international or European) search, supplementary international search, supplementary European search, or a further search according to the amended R. 164 EPC. If the EPO, be it during establishing a supplementary European search or in the initial phase of examination in case no supplementary European search is conducted (Euro-PCT with EPA as ISA or SISA), finds that claims refer to an invention (i.e. subject matter) not covered by the already established search reports or the search being conducted, the applicant will be invited to pay further search fees in order that such additional subject matter is covered. As a side effect, for EURO-PCT applications without the EPO acting as ISA or SISA, amendments under Rules 161/162 EPC may even aim at subject matter not covered by the established search reports, provoke such an invitation to pay additional search fees, and may be chosen for examination if the respective search fees are paid.

Decision of the Administrative Council of 16 October 2013

OJ EPO 2014/7 (2014) A70

01 APR 2014 EP R38

24 Months Deadline for Filing Divisional is Repealed

From 1 April 2014 on, i.e. for all European patent applications still pending on that date, the 24 months deadline for filing a divisional patent application will no more apply. Merely, it will again be possible to file a divisional patent application as long as the parent patent application of a divisional patent application filed on that date the earliest is pending. However, the original aim to reduce the number of precautionarily filed divisionals may be pursued by levying an additional fee for divisional of which the parent application is a divisional by itself (amended Rule 38 EPC).

News of the EPO dated 18 October 2013
Decision of the Administrative Council of 16 October 2013

01 JUL 2013 RS From 1 July 2013 on, an SPC will be available in Serbia. The request has to be filed:
  • Within 6 months after the grant of a first authorisation to market or within 6 months after grant of the patent (EP: "date of mention of grant") whichever is later.

A pediatric extension is not available.

Information provided by national colleagues.

01 JUL 2013 HR Croatia will be a member of the EU as of 1 July 2013. From that day on, an SPC will be available. The request has to be filed:
  • Within 6 months after the grant of a first authorisation to market or within 6 months after grant of the patent (EP: "date of mention of grant") whichever is later.
  • Transitional provision: Within 6 months after Croatia's accession to the EU if the first authorisation in the EU has already been granted or an authorisation in Croatia has been granted after 1 January 2003.
Other preconditions (existence of patent, ligitimation to request the spc, etc) prevail as usual and stipulated by law.

An extension of 6 months for a pediatric pharmaceutical is available. A respective request has to be filed simultaneously or up to 2 years before expiry of the respective SPC the latest.

Information provided by national colleagues.

01 Nov 2011 EPC FI Finland has acceded the London Agreement. It will applicable in Finland for european patents granted on or after 1 November 2011. :
  • The European patent has to be drafted in English, or an English or Finnish translation of the specification has to be filed with the patent office. A Finnish language translation of the claims is required.
  • The London Agreement applies to all patents granted on or after 1 November 2011, but even not to patents granted earlier if maintained in amended form after that date.

EPOJ 2011/10 (2011) 472.

01 Jan 2011 EPC

Decision of the Administrative Council of 28 October 2009:

Modified Rule 141 "Information on prior art":
If the priority of an earlier patent application is claimed, with filing the European patent application (or on entering the regional phase of a PCT application), any search report established for any such earlier patent application has to be furnished to the EPO. It is a continuing duty, hence the reports have to be filed even if they are received later on. It is not required to translate the reports. As a "search report", any official notification in relation to an earlier patent (application) qualifies by which prior art is revealed. Translations are not required.
For divisional patent application etc, reports already on file with the EPO for the parent patent application need not to be filed again.
Rule 141(3) empowers the EPO to request information about the state of the art in other patent application examination proceedings in relation to patent application pertaining to the same invention. However, such requests shall issue in isolated cases only.

Exemptions

Under Rule 141(2), the President may decide under which conditions the filing of a report is not required because it is available to the Office. Presently, no report has to be filed:

  • Decision of 9 December: For earlier patent applications filed in Japan, the United Kingdom, or the United States of America.
  • Decision of 5 October 2010: If it is one of the following search reports as far as established by the EPO:
    • a European search report
    • an international search report for a PCT application
    • an international type search report
    • search report made on behalf of a national office on a national application in
      • Belgium
      • Cyprus
      • France
      • Greece
      • Italy
      • Luxembourg
      • Malta
      • Netherlands
      • Turkey

New Rule 70b "Information on prior art":

If no reports are filed at the point in time when the Examining Division takes over, the EPO will issue an invitation to file either any such report available or in lieu thereof a statement that no such report is available within 2 months.

Entry into force

The decision is applicable to all patent applications filed on 1 January 2011 the earliest.

More details: EP OJ 2009/12 (2009) 585.

01 Jan 2011 EPC HU The London Agreement came into force in Hungary on 1 January 2011:
  • The European patent has to be drafted in English, or an English or Hungarian translation of the specification has to be filed with the Hungarian patent office. A Hungarian language translation of the claims is required.
  • The London Agreement applies to all patents granted, maintained modified after opposition or appeal, or limited after 31 December 2010.

01 OCT 2010 EPC RS The

Republic of Serbia (RS) will be a member of the EPC with effect from 1 October 2010. The Convention will comprise 38 members thereafter.

01 MAY 2010 EPC AL

Albania (AL) will be a member of the EPC with effect from 1 May 2010.

PCT Newsl. 2010/3 (2010) 2.

01 APR 2010 EPC

Decision of the Administrative Council of 25 March 2009:

  • New Rule 62a:
    • If the EPO find non-compliance of the claims with Rule 43 par. 2 (generally, only one claim per category), it shall ask the applicant which invention, i.e. claims compliant with Rule 43 par. 2, the Search shall be directed to. In the absence of a response, the first claim in each category shall be searched.
    • The Examining Division shall require to limit the claims to the searched invention except it finds that the finding of non-unity is not justified.
  • Rule 63: If the EPO is of the opinion that the claims can not be searched, it shall inform the applicant and invite home to state the subject matter to be searched. If no answer is received or it is not sufficient, the EPO shall either conduct a partial search, or state that a search was impossible to perform.
  • Rule 64, par. 1: In case of non-unity invention, the search will be established on the invention (or group of inventions, Art. 82) first defined in the claims. The applicant will be informed thereof and may pay a further search fee for each additional invention. The timelimit imposed is fixed to be 2 months.
  • Rule 69: Adapted to new Rule 70a.
  • New Rule 70a: Having received the opinion accompanying the European Search Report, the applicant will have the opportunity to comment and to amend the application to remedy deficiencies mentioned in the opinion. The timelimit is identical to that of requesting examination by reference to Rule 70, par. 1. The same opportunity will be given under the conditions of Rule 70 par. 2 within the timelimit by that rule.
    If the applicnt does not respond, the application is deemed to be withdrawn.
  • Rule 135 par. 2: Further processing is also excluded for Rules 62a and 63.
  • Rule 137:
    • Par. 2: With the response to the opinion, the applicant may apply further amendments at his volition.
    • Par. 4: If amendments are not properly identified or their basis in the application is not given, the Examining division may require correction within one month.
    • Par. 5: Amended claims not searched under R. 62a or 63 are not allowed either.
  • Rule 161 (amended): In case of a European regional phase based on a PCT application, if the EPO was the ISA or the IPEA, the applicant will be invited to remedy deficiencies revealed by the Opinion of Patentability within one month. If the applicant does not respond, the application will be deemed withdrawn.

The decision enters into force on 1 April 2010. New R. 62a, Rule 63 as amended, rule 70 a and rule 137 as amended shall apply to European patent applications for which the European Search Report is drawn up after 31 March 2010.
Rule 161 as amended shall apply to European patent applications for which a Communication under current Rule 161 has not been issued before 1 April 2010.

EP OJ 2009/5 (2009) 299-304.)

01 APR 2010 EPC

Decision of the Adminstrative Coucil of 25 March 2009:

  • Rule 36(1) and (2) EPC: A divisional patent application may only be filed:
    • up to 24 months after a first communication of the EPO concerning the earliest application for which a communication has been issued; or
    • within 24 months after a first communication of the Examining Division in relation to the earlier patent application is issued, wherein the communication raises the objection of lack of unity the first time for this patent application.
  • A divisional patent application is to be filed in the language of the earlier one. If this language is not an official language of the EPO, the divisional patent application may still filed in this language, and a translation has to be filed within 2 months after the filing of the divisional.
    A divisional patent application has be filed in Munich, The Hague, or Berlin.
  • Rule 57 a EPC (Duty to file a translation): Reference to amended R 36(2) added.
  • Rule 135(2) EPC: Further Processing with respect to the amended Rule 36 excluded.

The decision enters into force on 1 April 2010. R. 36 as amended is applicable to divisionals filed on and after this date. In case the delay of R. 35 (1) as amended expires prior to 1 April 2010 or up to 6 months afterwards, the timelimit for filing a divisional may be filed within 6 months after 1 April 2010. R. 135 (2) is applicable to this transitional periods.

EP OJ 2009/5 (2009) 296-297.)

01 JUL 2009 EPC SM

San Marino (SM) will be a member of the EPC with effect from 1 July 2009.

PCT Newsl. 2009/6 (2009) 5.

01 May 2009 EPC LT

Lithuania deposited its instrument of accession to the London Agreement on 22 January 2009. As already stipulated by its national law, a translation of the specification is not required, yet a Lithuanian language translation of the claims has to be supplied.
(EP OJ 2009/6 (2009) 398).

01 APR 2009 EPC

Decision of 17 March 2009 of the President of the EPO concerning the inclusion of copies of prior applications of which the priority is claimed: Such copies are included free of charge in the file held by the EPO if the prior patent application is

  • a European patent application,
  • a PCT application with the EPO being the RO,
  • a Japanese patent or utility model application, or
  • a (South) Korean patent or utility model application.

The same applies to PCT applications entering the regional phase before the EPO. The applicant will be informed of the inclusion be the EPO. If the inclusion could not be performed, the EPO will inform the applicant and impose a timelimit to file the copy. The decision enters into force on 1 April 2009.

(Decision: EP OJ 2009/4 (2009) 236-237.)

01 APR 2009 EPC

A revised schedule of official fees enters into force on 1 April 2009. it is applicable to:

  • European patent applications filed on or after 1 April 2009; and
  • PCT applications entering the regional phase before the EPO on or after 1 April 2009.

Further to the schedule of 1 April 2008, it introduces:

  • Claims fees: EUR 500 are due for the 51th and each following claim. ( EP OJ 2008/1 (2008) 10-11)
  • the designation fee is EUR 500 independently of the number of designated member states. The extension fee for each extension state has to be paid additionally. ( EP OJ 2008/1 (2008) 10-11)
  • Length fee as a part of the filing fee: Each page above 35 incurs a fee of EUR 12 each during filing. In compensation, the issue fee is now independent of the number of pages. ( EP OJ 2009/1 (2009) 7

Decision: EP OJ 2008/1 (2008) 10-11;
Schedule: Supplement of EP OJ 2009/2 (2009)
PCT Newsl. 2009/3 (2009) 4-5.

01 JAN 2009 EPC MK

The former Yougoslav Republic of Macedonia will be a member of the EPC with effect from 1 January 2009. Accordingly, extension to this state will no more possible since this date.

(EP OJ 2008/11 (2008) 507).

01 APR 2008 EPC

A new schedule of official fees is applicable to any payment made after 31 March 2008. Apart some minor increases, the following significant changes apply:

  • Claims fees: EUR 200 are due for the 16th and each following claim. Note: It has also been decided to introduce a per claim fee of EUR 500 for the 51th and following claims, valid for any patent application filed on or after 1 April 2009. (EP OJ 2008/1 (2008) 10-11)
  • Annuities significantly increased for all years except year 3.
  • Surcharge for late payment of an annuity is 50 % of the regular fee.

(Decision: EP OJ 2008/1 (2008) 5-9; Schedule: to EP OJ 2008/3 (2008) Supplement).)

Furthermore, the reimbursement rates in case of availability of prior searches and Preliminary Examination results have been adapted. (EP OJ 2008/3 (2008) 126-141, 195-201).

01 JAN 2008 EPC HR

Croatia (HR) has depositend the instrument of ratification of EPC and revision 2000 on 5 october 2007 and will be a member of the EPC with effect from 1 January 2008.

(PCT Newsl. 2007/12 (2007) 1).

01 JAN 2008 EPC NO

Norway will be a member of the EPC with effect from 1 January 2008 - and the EPC will cover the whole EU and EFTA.

(EP OJ 2007/8-9 (2007) 461).

13 DEC 2007 EPC EPO EPC2000

EPC 2000 is in force as of 13 December 2007. As a consequence thereof, the EPO withdrew several reservations made with respect to the PCT.

( Special Edition No. 1 of EP OJ 2007 (2007).

1 SEP 2007 EPC EPO

As of 1 September 2007, the EPO will no more accept requests for standard and special searches. Pending orders will still be executed. Instead, the respective services of the national patent offices may be used.Details

(EP OJ 2007/6 (2007) 406-407).

10 July 2007 EPC ME

Montenegro (ME), after its becoming an independent state, is no more bound by the agreement of extension of European patents to the former Republic of Serbia and Montenegro. However, the European Patent Office is in negotiations with the authorities of Serbia and Montenegro under which conditions patents extended to and designations of the Republic of Serbia and Montenegro may be validated in Montenegro. For the time being, Serbia (RS) is considered the legal successor of the Republic of Serbia and Montenegro.

(PCT Newsl. 2007/6 (2007) 1). (EP OJ 2007/8-9 (2007) 477).

1 July 2007 EPC KR
JP US

Since 1 July, for Korean patent applications and utility models, it is no more required to furnish a priority document if the first filing is a European patent application.

To recall: the same applies, on a reciprocal basis, for the U.S.A. and Japan. However, with regard to first U.S. filings, it is necessary to file particular request with the U.S.P.T.O. in order to comply with statutory confidentiality provisions to be observed by the Office before publication of the U.S. patent application. Else, the EPO may fail to obtain the priority document from the U.S.P.T.O. The EPO will, however, inform the applicant of this fact and set a timelimit to file the priority document.

(Regarding KR: Information of our Korean colleagues). (EP OJ 2007/8-9 (2007) 473-476).

01 APR 2007 EPC

After 1 April 2007, the EPO will no more handle PCT-EASY application as such, but as application filed in paper-form, the EASY data carrier will be disregarded, and a fee reduction will no more be awarded. (Communication of the President of the EPO)

(EP OJ 2007/1 (2007) 58).

01 MAR 2007 EPC MT

Malta (MT) deposited its instrument of accession to the EPC including the revision act 2000 on 1 December 2006 and will become a member state of the EPC with effect from 1 March 2007. Accordingly, Malta will automatically be designated in any European patent application having a filing date of 1 March 2007 the earliest. The same applies for PCT applications designating the EPC (EURO-PCT application). The number of member states of the EPC will then be 32.

(EP OJ 2007/1 (2007) 1-2).

16 JAN 2007 EPC

A copy of a prior application is included in the file of a European patent application (regular/regional phase PCT) without costs if the earlier application is one of the following:

  • European patent application
  • PCT application with European patent office as receiving office (RO)
  • Japanese application (patent; utility model)
  • PCT application with Japanese patent office as RO
  • US application (patent, provisional or non-provisional; "utility model")

The applicant will be informed about inclusion of the copy. If no copy can be obtained by the EPO, the applicant will be informed as well in due time so that he may furnish the required copy pursuant to Rule 38(3) EPC.

Decision of the President of the European Patent Office of 9 January 2007.

(EP OJ 2007/2 (2007) 94/5).

01 May 2006 EPC

Time for the technical preprations of the publication of European patent applications is shortened to 5 weeks as of 1 May 2006. (Decision of the President of the EPO of 25 April 2006)

(EP OJ 2006/6 (2006) 405).

13 DEC 2005 EPC GR

Greece deposited its instrument of ratification of the Revision Act of 29 November 2000 on 13 December 2005. As now 15 members have ratified the Act, it will enter into force two years after this date, hence on 13 December 2007 the latest. More 1 More 2

(EP OJ 2006/2 (2006) 138).

01 JUL 2005 EPC LV

Latvia (LV) deposited its instrument of accession to the EPC on 29 November 2004 and will become a member state of the EPC with effect from 1 July 2005. Accordingly, Latvia will automatically be designated in any European patent application having a filing date of 1 July 2005 the earliest. The same applies for PCT application designating the EPC (EURO-PCT application). Reciprocally, Latvia may be designated as an extension state only in European and EURO-PCT patent applications having a filing date of 30 June 2005 or earlier.

(EP OJ 2005/5 (2005) 299-301).

01 JUL 2005 EPC Decision of the Administrative Council of 9 December 2004:
  • European Search Report

    By amendment of Rule 44a, any European Search report will contain a preliminary statement as to compliance of the respective patent application with the EPC, unless a regular examination report pursuant to Rule 51(2) or a notification of acceptance for grant (R. 51(4)) have already been issued. The latter case arrives e.g. where the request for examination is already completed and the notice of continued interest is waived.

  • Schedule of fees:

    European Search (regular/supplementary) 960 EUR
    International Search (for a PCT application) 1550 EUR
    Examination fee for a European patent application for which a European (Supplementary) Search has been established1280 EUR
    Examination fee for a European patent application for which a European (Supplementary) Search has not been established1430 EUR

The modified schedule is applicable to patent applications filed on or after 1 July 2005. If a deficient search fee is paid within 6 months after that date for a patent application falling under the new regime, the EPO will issue a respective notification so that the lacking amount may still validly be paid.

A personal remark: In introducing the extended international search report, the fee for an international search fee conducted by the EPO has been almost doubled. It appears that the increase is made as a compensation for the additional work of establishing the Written Opinion on patentability. This opinion is equivalent to the Written Opinion issued within the frame of the Preliminary Examination, hence the examination report. Accordingly, I expected that the EPO would sometime appreciate the Written Opinion as an equivalent to the examination report of the Preliminary Examination and grant some reduction of the European examination fee.

However, until now, the examination fee for a European regional phase (Euro-PCT application) has not been reduced. With the present modification of the schedule of fee, European applicants whose international patent applications are mandatorily searched by the EPO, have to pay even more for the examination of the ulterior Euro-PCT application, though the examination work has already partly done. From the frog's perspective, European patent applicants seem to be punished - for what?


(EP OJ 2005/1 (2005) 5-7).
01 APR 2005 EPC Communication of the European Patent Office of 22 December 2004:
  • Communication Rule 51(4)EPC

    The deadline for responding will no more be extensible. However, continued processing will remain available. Applicable to Rule 51(4) Communications issued on or after 1 April 2005.

  • European Patent Certificate

    Beginning with 1 April 2005, the EPO will no more send by default a copy of the patent publication (B-publication) to the owner(s) together with the certificate(s). However, in responding to the Communications pursuant to Rule 51(4) or Rule 58(5), it may be requested to receive, though, a copy of the patent publication. No fee is due for this request. However, furhter copies (certificate plus publication) will require a fee of EUR 30.

    The patent publications (and, BTW, the publication of the patent applications and corrections of the patents) are available on the publications server of the EPO:

    https://publications.european-patent-office.org

    This server is operative since 1 January 2005. It allows download/viewing of the publication of European patents/patent applications. The file formats for download presently are PDF and SGML. It is announced that SGML will be changed to XML in the future.

  • Rule 108 EPC

    In order to reestablish equity between applicants for a Euro-PCT application and a regular European patent application, Rule 108 EPC is modified, so that the designation fees may still be validly paid with surcharge within two months after expiry of the regular delay (31 months: Rule 107 (1) d) even if the applicant has waived the Communication that a designation fee has not been paid, e.g. by checking the field in form 1200 that less than 7 fees are intended to be paid, and by paying the designation fees exactly for the states he has expressly indicated in this form.


(EP OJ 2005/2 (2005) 126-131).
01 APR 2005 EPC
  • Decision of the Administrative Council of 9 December 2004: The timelimit imparted to respond under Rule 51(4) is no more extendible. The timelimit is to be fixed from 2 to 4 months as hitherto. The amended R. 51(4) applies to European patent applications for which a Communication under R. 51(4) has not issued by 1 April 2005 (exclusively!?).
    (EP OJ 2005/1 (2005) 8-9).

  • Decision of the Administrative Council of 9 December 2004: Fee for further processing: EUR 200 EUR; fee for reestablishment of rights: EUR 350. Applicable as of 1. April 2005. In case a fee is paid with the old amount within 6 months after 1 April 2005, the EPO will issue a Communication requiring payment of the difference.
    (EP OJ 2005/1 (2005) 9-10).

  • Decision of the Administrative Council of 9 December 2004:

    • Rule 54: Amendment: Form, content and manner of transmission of the European patent certificate to the patent owner may be prescribed by the President of the EPO.
    • Rule 108: Additional designation fees may validly been paid with surcharge within two months after expiry of the respective regular delay if the applicant has waived the Communication under R.108(3) (notification that one or more designation fees have not been paid).
    • Art. 2 Par. 3c RFees: Fee for late filing of the translation of an international patent application, of the request for examination, for the late payment of the national basic fee, the search fee or the designation fees:
      50 % of the amount due, at least EUR 500, at most EUR 1750.
    In force as of 1 April 2005. Amended Rule 108 EPC and Art.2(3c) Rfees applies to international patent applications for which not all designation fees prescribed under Rule 107(1)d have validly been paid by 1 April 2005, yet the timelimit under this rule has not expired.


    (EP OJ 2005/1 (2005) 11-12).

01 DEC 2004 EPC BA

New extension state as of 1 November 2004: Bosnia and Herzegovina (BA). Extension to this state may be elected for any european patent application filed on or after this date.

(PCT Newsl. 2004/11 (2004) 1).

01 DEC 2004 EPC LT New member State as of 1 December 2004: Lithuania deposited its instrument of accession on 3 September 2004. Hence, it can be designated in any European patent application filed on or after 1 December 2004. The EPC now comprises 30 member states.
(EP OJ 2004/10 (2004) 481).
01 NOV 2004 EPC YU

New extension state as of 1 November 2004: Serbia and Montenegro. Extension to this state may be elected for any european patent application filed on or after this date.

(PCT Newsl. 2004/11 (2004) 1).

01 NOV 2004 EPC IS New member State as of 1 November 2004: Iceland (IS) deposited its instrument of accession on 31 August 2004. Hence, it can be designated in any European patent application filed on or after 1 November 2004. The EPC now comprises 29 member states
(EP OJ 2004/10 (2004) 479).

If the European patent application is drafted in English, only claims and abstract need to be translated into Icelandic for validation of the European patent. (BTW: The same rule applies to national patent applications). (Info from our Icelandic colleagues).

01 APR 2004 EPC HR Croatia (HR) may be designated for extension of a European patent since 1 April 2004.
(EP OJ 2004/3 (2004) 117).
01 MAR 2004 EPC PL New member State as of 1 March 2004: Poland deposited its instrument of accession on 30 December 2003. Hence, it can be designated in any European patent application filed on or after 1 March 2004. The EPC now comprises 28 member states
(EP OJ 2004/1 (2004) 1/2).
04 DEC 2003 EPC Promotion of online filing by reduced filing fee: for an online filed European patent application, the filing fee due amounts to EUR 90.00 only; filing a European patent application conventionally on paper incurs a filing fee of EUR 160.00
(EP OJ 2004/1 (2004) 3/4).
01 MAR 2003 EPC RO New member State as of 1 March 2003: Roumania deposited its instrument of accession on 12 December 2002. Hence, it can be designated in any European patent application filed on or after 1 March 2003.
(EP OJ 2003/1 (2003) 3/4).
01 JAN 2003 EPC Decision of the President of the EPO: Revised provisions and rules for electronic filing of patent applications: patent applications (EP and PCT) and some other, explicitely mentioned documents may be filed electronically. The software gratuitously furnished by the EPO is recommended, use of another software is not excluded provided prior approval by EPO. Native documents may also be filed in addition to the prescribed format as a safeguard against deficiencies generated in converting the native text/graphics/formula processor file format into the format needed for filing. The allowed formats are published on the EPO website.

Other formats are possible if an indication is included where the EPO may acquire software needed to read the files. Acquisition of the software has to be possible without undue burden to EPO.
The filed data have to be free from any malicious contributions (viruses etc.), else the EPO is not obliged to open the files. In consequence, the filing is deemed to be illegible, and illegible filings are deemed not to have been received. Hence, any infection will result in the patent application not being accorded a filing date.
It is prescribed that any document is to packaged and encrypted (PKI software). Electronic signing is provided for.
For details, cf. the EPOLINE website of EPO.
(EP OJ 2002/11 (2002) 543/8).

01 JAN 2003 EPC HU New member State (as of 1 January 2003: Hungary deposited its instrument of accession on 28 October 2002. Hence, it can be designated in any European patent application filed on or after 1 January 2003. (Remark: For any PCT application filed on or after this date, the designation of the EPC automatically includes the designation of Hungary). (EP OJ 2002/11 (2002) 541/2).
01 DEC 2002 EPC PCT SI New member State as of 1 December 2002: Slovenia deposited its instrument of accession on 18 September 2002. Hence, it can be designated in any European patent application filed on or after 1 December 2002. (Remark: For any PCT application filed on or after this date, the designation of the EPC automatically includes the designation of Slovenia).
For PCT applications, the national route has been closed, the designation of Slovenia in a PCT application filed on or after 1 December 2002 will be interpreted as a designation of the European Patent Convention (designating, inter alia, Slovenia) (EP OJ 2002/10 (2002) 463/4).
01 JUL 2002 EPC CZ BG EE SK

New member States (as of 1 July 2002)

Slovakia, Bulgaria, the Czech Republic and Estonia deposited their instruments of accession. Hence, they can be designated in any European patent application filed on or after 1 July 2002. (Remark: For any PCT application filed on or after that dates, the designation of the EPC automatically includes these designations). (PCT News 2002/06 (2002) 1).
1 JUL 2002 EP

Combination of Rules 51(4) and 51(6)

Decision of the Administrative Council of 18 October 2001: The notification pursuant to Rule 51(4) and 51(6) are substantially combined to one notification pursuant to revised Rule 51 (referred to as N51 in the following). Basically, the "new" Communication pursuant Rule N51(4) contains as well the demands for complying with the requirements of the former Rule 51(6). Rule N51(6) provides that the applicant is granted the opportunity to file observations, translations of claims, and to comply with any requirement deemed necessary by the Examining Division if no amendments had been requested before. Rule N51(11) provides that the decision to grant the European patent shall state which text of the patent application constitutes the basis for the grant. Accordingly Rules 36(1), 38(5) are revised, too.(OJ EPO 2001/11 (2001) 488/91)
1 MAR 2002 EP

Restriction of EP as ISA/IPEA for U.S.-based applicants

Notice from the President of EPO of 26 November 2001: For PCT applications filed by a national or resident of the USA with the USPTO or IB, and for PCT applications filed with the IB by more than one applicant, where at least one applicant os a resident or a national of the USA and neither of the applicants is a national or resident of one of the member states of the EPC, the following restrictions apply:
  • EPO as ISA
    The EPO will no more be a competent ISA authority if the application relates to biotechnology or business methods covered by the international patent classes given below and is filed on or after 1 March 2002.

  • EPO as IPEA
    The EPO will no more be a competent IPEA if the application relates to biotechnology, business methods or telecommunication as covered by international patent classes given below, and the demand is filed on or after 1 March 2002. Consequently, this restriction may also apply to PCT applications where the EPO still is the competent ISA.
A change of applicant after filing of the PCT application does no more have any influence on the EPO qualifying as a competent ISA/IPEA.
The concerned classes of the international classification:
  • Biotechnology: C12M, C12N, C12P, C12Q, C07K, G01N 33/50, A61K 39, A61K 48, A01H (corresponding US classes, for information: 424, 435, 436, 514, 530, 536, 800, 930)
  • Business methods: G06F 17/60 (corresp. U.S. class, for information: 705)
  • Telecommunication (only regarding Prelim. Exam.): H04 (US classes, for information: 370, 375, 379, 380, 381, 455)
(OJ EPO 2002/1 (2002) 52 et seq)
3 JAN 2002 EP

Interruption of postal service on the side of the applicant or his representative

Decision of the Administrative Council of 18 October 2001: With effect from 3 January 2002, Rule 85 is complemented by a new paragraph 5: It is now possible to remedy late receipt of a document by the EPO if it can be shown that the postal service has been interrupted by extraordinary circumstances during any of the ten days befory the expiration of the respective timelimit, like war, strike, natural calamity etc. Then, if the concerned documents are received within five days after resumption of regular postal service, they will be deemed to have been filed in time.
(OJ EPO 2001/11 (2001) 490)
03 JAN 2002 EP

Fees (in force since 3 January)

Fees in Euro are rounded, generally downwards. Any payments to the EPO have to be made in EURO, and the EPO will only reimburse amounts in EURO. Accounts have been installed in member states not being a party of the European Currency Union. The new schedule of fees is valid since 3 January 2002. (OJ EPO 2001/11 (2001) 543).
03 JAN 2002 EP PCT

Expedited Preliminary Examination at reduced fee

As of 3 January 2002, The processing of international (PCT) application is expedited by introducing a modified preliminary examination procedure (precondition: international search has been conducted by the EPO as well): The first notification (the "Written Opinion") is exclusively based on the result and the assessment of pertinence of the cited documents of the search examiner. Hence, there will be a mere formal treatment by the EPO, and no examiner's work will be involved. If the applicant does not respond, the Examination Report of the Preliminary Examination will be identical to the Written Opinion (called: "rationalized examination report"), and two third of the preliminary examination fee will be reimbursed (New art. 10d RFO, valid since 3 January 2002 (OJ EPO 2001/11 (2001) 492); effect on examination for Euro-PCT application see below!).

Only if the applicant responds to the Written Opinion with arguments and/or amendments, he is implicitely requesting a "full" Preliminary Examination. Then, an examiner will actually scrutinize the application, the result of the Search Report and, of course, the response of the applicant, and will further conduct the Preliminary Examination. In this case, no reimbursement of the fee for the Preliminary Examination will occur.

As regards a follow-up regional phase before the EPO (Euro-PCT application), the reduction of the examination fee will only apply to the second alternative. If only a "formal" Examination Report of the Preliminary Examination is issued and two third of the fee for the Preliminary Examination have been refunded, the full amount of the examination fee for the European regional phase is due. (OJ EPO 2001/11 (2001) 539-542))

Remark: Suppposedly, in a hypothetical situation, where the EPO has not established the International Search Report, it is supposed that a "full" Preliminary Examination will always be conducted.

2 JAN 2002 EP PCT

Continued processing of Euro-PCT application

New Rule 108 EPC applies explicitely to more requirements (formerly, it related only to the payment of the "national fee"), it provides the issuance of one communication if any requirement mentioned has not been met, and the possibility to remedy to any such notified deficiency by preforming the omitted act and paying a surcharge, therey implicitely applying for further processing. Notably, this applies also to an omission of filing the translation of the PCT application so that the applicant has the opportunity to further prosecute his patent application. Formerly, it was necessary to apply for restitution of rights. (Decision of the Administrative Council of 28 June 2001; OJ EPO 2001/12 (2001) 588).
2 JAN 2002 EP

Always 31 months to file the regional phase

As of 2 January 2002, the timelimit for entering the national phase before the EPO is always 31 months, calculated from the priority date. There is no more a distinction between the situations where the demand for Preliminary Examination is filed or not. (OJ EPO 2001/12 (2001) 564 et seq, includes the new form)
2 JAN 2002 EP EURO-PCT applications: as of 2 January 2002, the new form 1200 (printing date: "01.02") shall be used. The former version (printing date: "03.00") may continued to be used without any detriment. However, the version bearing the printing date "04.99" shall be used no more after January 2002 (it is specifically usable for PCT application filed before 1 July 1999!) (OJ EPO 2001/12 (2001) 564 et seq, includes the new form)
2 JAN 2002 EP Decisions of the Administrative Council of 18 October 2001: Rule 25 is amended to the effect that the applicant may file a divisional application based on any pending prior European patent application. New Rule 25 is in force since 2 January 2002.
23 MAY 2001 PCT ISA Already in 1999, the European Patent Office, the Swedish patent office and the Spanish patent office concluded an agreement concerning a partnership regarding their role as ISA's. Recently, an official notification has been made to WIPO that the Swedish and the Spanish patent office will not only act as an ISA where specifically designated, but also if the EPO is designated in a PCT application in regard of which the Spanish or the Swedish patent office are authorised to act as ISA. In the latter case, the EPO schedules the search task to the respective patent office, and the search is done under the responsibility of the EPO. (PCT Newsl. 2001/5 (2001) 2-3; cf. OJ EPO 1999 (1999) 66 and 431).

2 JAN 2002 EP PCT

The EPO as ISA/IPEA: Modified agreement with WIPO

On 31st October 2001, a modified agreement concerning the activity of the EPO as ISA and IPEA under the PCT has been concluded. In essence, the EPO may restrict its activity for PCT applications if this is necessary for proper treatment of European patent applications. As an alternative, it may also entrust its task to industrial property offices of the member states of hte EPC. The ISA/IPEA work in these national offices has however, to be conducted under the control and responsibility of the EPO. (OJ EPO 2001/12 (2001) 601 et seq).
01 NOV 2000 TR Turkey accedes the EPC on 1 November 2000 and may be designated from now on (OJ EPO 2000/10 (2000) 443)
01 March 2000 EPC On 13 October 1999, the Administrative Council decided to amend the Implementing Rules and the Rules relating to Fees. The amendments enter into force on 1 March 2000. In summary: the payment modes and delays for designation fees for any newly "filed" European patent applications (incl. Euro-PCT applications (EP-regional phases of international patent applications under the PCT), divisional patent applications, and patent applications under art. 61EPC) are adapted to those of native EP applications, e. g. the timelimit is 6 months from the publication of the respective search report (the "international" publication by WIPO replaces the publication by the EPO). The provision that the inventor can waive the right to have his name published, yet not the right (and duty) to be designated, is clarified (Rule 18). Neither priority document nor translation is necessary if these documents are already available in a file of the EPO according to conditions to be established by the President of the EPO. As regards Euro-PCT applications, new Rule 107(2) clearly stipulates that the reduction of the examination fee only applies to subject matter considered in the Preliminary Examination Report. By amendment within one month after receipt of a respective communication, the application can be amended (cf. Art. 28(1) and 41(1) PCT), and the claims fee is calculated according to the number of claims after a such amendment has been applied. The amended version is also decisive for a possible ulterior complementary European Search.

Transitional provisions: The modified rules, and particularly the new modalities of payment, pertain in almost all cases where the respective timelimits under the old rules have not expired and the respective procedural acts have not been performed on 1 March 2000. (EP OJ 1999/11 (1999) 696-700).

03 JAN 2000 - 04 JAN 2000 EPC The EPO is extraordinarily closed on 3 and 4 January 2000 (precautionary measure in view of the beginning of this peculiar year) (EP OJ 1999/11 (1999) 695; EP OJ 1999/10 (1999) 572).

01 JAN 2000 All Happy New YEAR (even this year - - - can you still view me??)
01 JUL 1999 EPC Reductions of fees for European and international (PCT) patent applications filed on or after 01 July 1999: European Search: about 20 % and International Search: about 15 %; at most 7 designation fees for member states payable (i. e. 8th and further designations gratuitous; new regulation not applicable to extension fees!) (EP OJ 1999/01 (1999) 5-8).

02 MAR 1999 EPC Euro gets leading currency of fees of the European Patent Office (EP OJ 1999/01 (1999) 5 et seq.)).

01 APR 1998 EPC PCT CY Cyprus becomes member of the EPC and the PCT; eligible under Chapter II PCT;

*: EPC: European Patent Convention; PCN: Paris Convention; PCT: Patent Cooperation Treaty; MMA/P: Madrid Convention/Protocol; THA: The Hague Agreement; CTM: Community trademark (European Union); otherwise ISO-Country-Codes

Sources:
EP OJ: Official Journal of the European Patent Office,EPO publication
PCT News: PCT Newsletter,WIPO publication No. 115 (E)
ISO country codes: Information on ISO3166

 

CMSimple SE 2010e