INFORMATION FROM THE EPO
Notice dated 28 August 1990 concerning the publication of European patent applications whose deemed withdrawal has not yet become definitive
1. Under Rule 48(2) EPC a European patent application is not published if deemed withdrawn before termination of the technical preparations for publication.
The technical preparations for publication of the application are deemed to have been completed at the end of the day that comes ten weeks before expiry of the eighteenth month following the date of filing or, if priority is claimed, following the earliest date of priority (cf. Statement by the President of the EPO of 18 July 1978, OJ EPO 1978, 312).
Rule 48(2) EPC applies only where a loss of rights has become final.
2. Loss of rights occurs if the filing fee, the search fee or all designation fees have not been validly paid, or the designation of the inventor or, where use is made of Article 14(2) EPC, the translation of the European patent application in the language of proceedings has not been filed in due time (Articles 90(3), 91(4) in conjunction with 79(3), 91(5) EPC).
If the EPO notes that such loss of rights has occurred it informs the applicant accordingly (Rule 69(1) EPC). If the applicant considers that the EPO's finding is inaccurate, he may, within two months of notification of the communication, apply for a decision on the matter by the EPO (Rule 69(2) EPC). If no decision is requested, the communication concerning the loss of rights becomes uncontestable. The same applies to a decision which is not appealed (cf. Legal Advice No. 16/85, point 8, OJ EPO 1985, 141).
3. If the communication or decision has become uncontestable before termination of the technical preparations for publication, Rule 48(2) EPC applies.
The application is however published if, upon termination of the technical preparations for publication, a request for a decision under Rule 69(2) EPC has been received but no final decision has yet been taken. This is the case if:
(a) no decision under Rule 69(2) has yet been issued,
(b) the time limit for appealing against a decision under Rule 69(2) EPC has not yet expired, or
(c) an appeal against a decision under Rule 69(2) EPC is still pending.
By requesting a decision under Rule 69(2) EPC or by filing an appeal the applicant indicates that he does not agree with the Office about the loss of rights communicated to him. In such a case the application must be published, the public being entitled to have European patent applications published as soon as possible after expiry of the 18-month period under Article 93(1) EPC. In particular, it is necessary to avoid a situation in which applications whose content could be cited against later applications as prior art under Article 54(3) EPC are published long after expiry of the 18-month period (for example because of an appeal against a decision under Rule 69(2) EPC).
4. In the cases referred to in point 3(a) to (c) above the applicant can avoid publication by withdrawing the application before termination of the technical preparations for publication (cf. Notice of the EPO dated 27 April 1983, OJ EPO 1983, 147).