INFORMATION FROM THE EPO
LEGAL ADVICE FROM THE EUROPEAN PATENT OFFICE No. 4/80
Period for submitting a separate set of claims for Austria
Note: Since 8 October 1992 the filing of separate claims with the application on the basis of the reservation under Art. 167(2)(a) EPC has only been possible for divisional applications with a filing date before 8 October 1987 in the case of Austria before 8 October 1992 in the case of Spain and Greece (see Notes on EPO Form 1001, Section 38, OJ EPO 1992, 757 et seq.). The principles of the Legal Advice remain the same for such divisional applications.
If different claims for Austria have not already been presented in the European patent application itself, they may be presented after the European search report has been received and before the reply to the first communication from the Examining Division, without the Examining Division's consent. Subsequently, however, they may only be presented with the Examining Division's consent.
1. Austria has made the reservation provided for in Article 167, paragraph 2(a) EPC, that European patents are to be revoked as regards Austria, "in so far as they confer protection on chemical, pharmaceutical or food products, as such". In view of this reservation, European patent applications and European patents in which Austria is designated among other Contracting States and by which protection is sought for chemical, pharmaceutical or food products may include different claims for Austria on the one hand and for the other designated Contracting States on the other hand (see Announcement in OJ EPO 1979, 289).
2. Applicants for European patents wishing to make use of the opportunity to file different claims for Austria have now asked the European Patent Office whether a set of different claims for Austria can be filed even after filing the application.
3. The answer to this question is "yes", for the following reasons:
A separate set of claims presented for Austria is part of the totality of claims contained in a European patent application and is therefore subject to the general provisions applicable to claims (especially Rule 86 EPC).*
Until receipt of the European search report the applicant may not amend the claims (Rule 86, paragraph 1, EPC). After receiving the European search report, the applicant may, of his own volition, file different claims for Austria (Rule 86, paragraph 2, EPC). The applicant retains this right until replying to the first communication from the Examining Division, if he files the different claims for Austria at the same time as giving that reply. After that time, different claims for Austria may not be presented or amended without the consent of the Examining Division (Rule 86, paragraph 3, EPC).
* See also Guidelines for Examination in the European Patent Office, in particular Part C, Chapter VI, 3.1 and 3.2.