INFORMATION FROM THE EPO
DECISION amending the Implementing Regulations to the European Patent Convention
THE ADMINISTRATIVE COUNCIL OF THE EUROPEAN PATENT ORGANISATION,
HAVING REGARD to the European Patent Convention (hereinafter referred to as the "Convention"), and in particular Article 33, paragraph 1(b), thereof,
WHEREAS, on the basis of the preparations for the entry into force of the Convention, amendments and additions are required to the Implementing Regulations to the Convention (hereinafter referred to as the "Implementing Regulations"),
HAS DECIDED AS FOLLOWS:
Article 1
The following text shall be substituted for Rule 2, paragraph 6, of the Implementing Regulations:
"Statements by employees of the European Patent Office, by parties to the proceedings and by witnesses and experts, made in one of the official languages of the European Patent Office during oral proceedings shall be entered in the minutes in the language employed. Statements made in any other language shall be entered in the official language into which they are translated. Amendments to the text of the description or claims of a European patent application or European patent shall be entered in the minutes in the language of the proceedings or, where the latter has been changed, in the initial language of the proceedings."
Article 2
The following text shall be substituted for Rule 6, paragraph 1, of the Implementing Regulations:
"The translation referred to in Article 14, paragraph 2, must be filed within three months after the filing of the European patent application, but no later than thirteen months after the date of priority. Nevertheless, if the translation concerns a European divisional application or a new European patent application under Article 61, paragraph 1(b), the translation may be filed at any time within one month of the filing of such application."
Article 3
The following sub-paragraph shall be added to Rule 28, paragraph 3, of the Implementing Regulations:
"Prior to the publication of the application the culture deposited shall be available, under the same conditions, upon the request of any person having the right to inspect the file under the provisions of Article 128, paragraph 2."
Article 4
The following text shall be substituted for Rule 31, paragraph 3, of the Implementing Regulations:
"If the claims fee for any claim is not paid in due time, the claim concerned shall be deemed to be abandoned. Any claims fee duly paid shall be refunded only in the case referred to in Article 77, paragraph 5."
Article 5
The following text shall be substituted for Rule 36, paragraphs 1 and 2, of the Implementing Regulations:
"(1) The provisions of Rules 27, 29 and 32 to 35 shall apply to documents replacing documents making up the European patent application. Rule 35, paragraphs 2 to 14 shall also apply to the translation of the claims referred to in Rule 51, paragraph 4.
(2) All documents other than those referred to in the first sentence of paragraph 1 shall normally be typewritten or printed. There must be a margin of about 2.5 cm on the left-hand side of each page."
Article 6
1. The following new paragraph 2a shall be added to Rule 37 of the Implementing Regulations:
"An additional fee shall be deemed to have been paid at the same time as the renewal fee within the meaning of Article 86, paragraph 2, if it is paid within the period laid down in that provision."
2. The following text shall be substituted for Rule 37, paragraph 3, of the Implementing Regulations:
"Renewal fees for a European divisional application already due pursuant to Article 86, paragraph 1, in combination with Article 76, paragraph 1, second sentence, must be paid within four months of the filing of such application. Paragraph 2 and Article 86, paragraphs 2 and 3, shall apply."
Article 7
The following text shall be substituted for Rule 38, paragraph 4, of the Implementing Regulations:
"Where a translation of the previous application into one of the official languages of the European Patent Office is required, the translation must be filed within twenty-one months after the date of priority."
Article 8
The following text shall be substituted for Rule 41, paragraph 1, first sentence, of the Implementing Regulations:
"If the examination provided for in Article 91, paragraph 1(a) to (d), reveals deficiencies in the European patent application, the Receiving Section shall inform the applicant accordingly and invite him to remedy the deficiencies within such period as it shall specify."
Article 9
The following text shall be substituted for Rule 44, paragraph 5, of the Implementing
"The European search report shall be drawn up in the language of the proceedings or, where the language of the proceedings has been changed, in the initial language of the proceedings."
Article 10
The following text shall be substituted for Rule 46, paragraph 1, of the Implementing Regulations:
"lf the Search Division considers that the European patent application does not comply with the requirement of unity of invention, it shall draw up a partial European search report on those parts of the European patent application which relate to the invention, or the group of inventions within the meaning of Article 82, first mentioned in the claims. It shall inform the applicant that if the European search report is to cover the other inventions, a further search fee must be paid, for each invention involved, within a period to be fixed by the Search Division which must not be shorter than two weeks and must not exceed six weeks. The Search Division shall draw up the European search report for those parts of the European patent application which relate to inventions in respect of which search fees have been paid."
Article 11
The following text shall be substituted for Rule 51, paragraph 4, of the Implementing Regulations:
"Before the Examining Division decides to grant the European patent, it shall inform the applicant of the text in which it intends to grant it, and shall request him to pay within three months the fees for grant and printing and to file a translation of the claims in the two official languages of the European Patent Office other than the language of the proceedings or, where the latter has been changed, other than the initial language of the proceedings. If the applicant has communicated his disapproval of the patent being granted on the basis of this text within that period, the communication of the Examining Division shall be deemed not to have been made, and the examination shall be resumed."
Article 12
The following text shall be substituted for Rule 56, paragraph 2, of the Implementing Regulations:
"If the Opposition Division notes that the notice of opposition does not comply with provisions other than those mentioned in paragraph 1, it shall communicate this to the opponent and shall invite him to remedy the deficiencies noted within such period as it may specify. If the notice of opposition is not corrected in good time the Opposition Division shall reject it as inadmissible."
Article 13
The following text shall be substituted for Rule 58, paragraph 5, of the Implementing Regulations:
"If disapproval of the text communicated by the Opposition Division is expressed, examination of the opposition may be continued; otherwise, the Opposition Division shall, on expiry of the period referred to in paragraph 4, request the proprietor of the patent to pay, within three months, the fee for the printing of a new specification of the European patent and to file a translation of any amended claims in the two official languages of the European Patent Office other than the language of the proceedings or, where the latter has been changed, other than the initial language of the proceedings."
Article 14
The following new Rule 61a shall be inserted in the Implementing Regulations:
Documents in opposition proceedings Part III, Chapter II, of the Implementing Regulations shall apply mutatis mutandis to documents filed in opposition proceedings.
Article 15
The following new Rule 62a shall be inserted in the Implementing Regulations:
New certificate for a European patent Rule 54 shall apply mutatis mutandis to the new specification of the European patent."
Article 16
The following text shall be substituted for Rule 90, paragraph 1(c), in the German version of the Implementing Regulations:
"im Fall des Todes oder der fehlenden Geschäftsfähigkeit des Vertreters des Anmelders oder Patentinhabers."
Article 17
1. The following text shall be substituted for Rule 92, paragraph 1(f), of the Implementing Regulations:
"family name, given names, address and the State in which the residence or principal place of business of the applicant for or proprietor of the European patent is located;"
2. The following text shall be added to Rule 92, paragraph 1(h), of the Implementing Regulations:
"in the case of several representatives only the family name, given names and address of the place of business of the representative first named, followed by the words "and others", shall be entered; however, in the case of an association referred to in Rule 101, paragraph 9, only the name and address of the association shall be entered;"
Article 18
The following text shall be substituted for Rule 94, paragraph 2, of the Implementing Regulations:
"The inspection shall take place on the premises of the European Patent Office and, for such time as the file is with the central industrial property office of a Contracting State pursuant to an agreement concluded under the Protocol on Centralisation, on the premises of the latter office. However, on request, inspection of copies of the files shall take place on the premises of the central industrial property office of the Contracting State in whose territory the person making the request has his residence or principal place of business."
Article 19
The following new Rule 95a shall be inserted in the Implementing Regulations:
Keeping of files
(1) The European Patent Office shall keep files relating to European patent applications and European patents for at least five years from the end of the year in which:
(a) the application is rejected or withdrawn or is deemed to be withdrawn;
(b) the patent is revoked pursuant to opposition proceedings; or
(c) the patent lapses in the last of the designated States.
(2) Without prejudice to paragraph 1, the European Patent Office shall keep files relating to European patent applications which have given rise to divisional applications under Article 76 or new applications under Article 61, paragraph 1(b), for at least the same length of time as the files relating to any one of these last applications. The same shall apply to files relating to any resulting European patents."
Article 20
1. The following text shall be substituted for Rule 101, paragraph 4 of the Implementing Regulations:
"Where the appointment of a representative is communicated to the European Patent Office, the necessary authorisation shall be filed within three months after such communication. If such authorisation is not filed in due time, any procedural steps other than the filing of the European patent application taken by the representative shall be deemed not to have been taken."
2. The following new paragraph 9 shall be added to Rule 101 of the Implementing Regulations:
"(9) The authorisation of an association of representatives shall be deemed to be authorisation of any representative who can establish that he practices within that association."
Article 21
The following text shall be substituted for Rule 102, paragraph 2 of the Implementing Regulations:
"After the expiry of the transitional period provided for in Article 163, paragraph 1, and without prejudice to any disciplinary measures taken under Article 134, paragraph 8(c), the entry of any professional representative may be deleted automatically in the following cases only:
(a) in the event of the death or legal incapacity of the professional representative;
(b) in the event of the professional representative no longer being a national of one of the Contracting States, unless he was entered on the list during the transitional period or was granted exemption by the President of the European Patent Office in accordance with Article 134, paragraph 6;
(c) in the event of the professional representative no longer having his place of business or employment within the territory of one of the Contracting States."
Article 22
The following text shall be substituted for Rule 104 of the Implementing Regulations:
"Rule 104 The European Patent Office as a receiving Office
(1) When the European Patent Office acts as a receiving Office under the Cooperation Treaty, the international application shall be filed in English, French or German. It shall be filed in three copies; the same applies to any of the documents referred to in the check list provided for in Rule 3.3(a)(ii) of the Regulations under the Cooperation Treaty except the receipt for the fees paid or the cheque for the payment of the fees.
(2) If the provisions of paragraph 1, second sentence, are not complied with, the missing copies shall be prepared by the European Patent Office at the expense of the applicant.
(3) If an international application is filed with an authority of a Contracting State for transmittal to the European Patent Office as the receiving Office, the Contracting State must ensure that the application reaches the European Patent Office not later than two weeks before the end of the thirteenth month after filing or, if priority is claimed, after the date of priority."
Article 23
The following new Rule 104a shall be inserted in the Implementing Regulations:
"Rule 104a
The European Patent Office as an International Searching Authority or International Preliminary Examining Authority
(1) In the case of Article 17, paragraph 3(a), of the Cooperation Treaty, an additional fee equal to the amount of the search fee shall be payable for each further invention for which an international search is to be carried out.
(2) In the case of Article 34, paragraph 3(a), of the Cooperation Treaty, an additional fee equal to the amount of the preliminary examination fee shall be payable for each further invention for which the international preliminary examination is to be carried out."
Article 24
The following new Rule 104b shall be inserted in the Implementing Regulations:
"Rule 104b
The European Patent Office as a designated or elected Office
(1) The national fee provided for in Article 158, paragraph 2, the search fee provided for in Article 157, paragraph 2(b), the designation fees provided for in Article 79, paragraph 2, and, where applicable, the claims fee provided for in Rule 31 of this Convention shall be paid within one month after the expiry of the time limit laid down in Article 22, paragraphs 1 and 2, or Article 39, paragraph 1(a), of the Cooperation Treaty, as the case may be.
(2) If the data concerning the inventor prescribed in Rule 17, paragraph 1, of this Convention are missing at the expiry of the time limit laid down in Article 22, paragraphs 1 and 2, or Article 39, paragraph 1(a), of the Cooperation Treaty, these shall be furnished within a period to be fixed by the European Patent Office and which may not be shorter than two weeks and may not exceed six weeks.
(3) If only a part of the international application has been searched by the International Searching Authority because that Authority considered that the application did not comply with the requirement of unity of invention, and the applicant did not within the prescribed time limit pay all additional fees according to Article 17, paragraph 3(a), of the Cooperation Treaty, the Search Division shall consider whether the application complies with the requirement of unity of invention. If the Search Division considers that this is not the case, it shall inform the applicant that a European search report can be obtained in respect of those parts of the international application which have not been searched if a search fee is paid for each invention involved within a period to be fixed by the Search Division and which may not be shorter than two weeks and may not exceed six weeks. The Search Division shall draw up a European search report for those parts of the international application which relate to inventions in respect of which search fees have been paid.
(4) Rule 46, paragraph 2, of this Convention shall apply mutatis mutandis to the communication referred to in paragraph 3.
(5) Where the European Patent Office has drawn up the international preliminary examination report in respect of an international application it shall allow the applicant a reduction in the examination fee. The reduction shall be fixed in the Rules relating to Fees at a percentage of the fee.
Article 25
1. The following text shall be substituted for Rule 106, paragraph 1(a), of the Implementing Regulations:
"in the cases referred to in Rule 102, paragraph 2(a) and (c);"
2. The following new paragraph 2a shall be added to Rule 106 of the Implementing Regulations:
"Deletion of a professional representative pursuant to a disciplinary measure taken under Article 134, paragraph 8(c), shall be effected automatically by the European Patent Office and communicated to the central industrial property office which furnished to the person concerned the certificate provided for in Article 163, paragraph 2."
3. The following text shall be substituted for Rule 106, paragraph 4, of the Implementing Regulations:
"A person whose entry has been deleted shall, on request, be re-entered on the list of professional representatives if he supplies a certificate furnished by the central industrial property office stating that the conditions for the withdrawal of the certificate under paragraph 1 no longer exist, or if the disciplinary measure imposed upon him has ceased to be effective, as the case may be."
Article 26
The President of the European Patent Office shall forward a certified copy of this Decision to all the signatory States to the Convention and to the States which accede thereto.
Article 27
This Decision shall enter into force on 1
February 1978.
DONE at MUNICH, 20 October 1977.
For the Administrative Council
The President
Georges Vianès