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ADMINISTRATIVE COUNCIL

Decisions of the Administrative Council

Decision of the Administrative Council of 7 December 1990 amending the Implementing Regulations to the European Patent Convention and the Rules relating to Fees

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, paragraphs 1 (b) and 2(d), thereof, On a proposal from the President of the European Patent Office, Having regard to the opinion of the Budget and Finance Committee,

HAS DECIDED AS FOLLOWS:

Article 1

The Implementing Regulations to the Convention shall be amended as follows:

1. Rule 1 shall be amended as follows:

1.1 Paragraphs 1 and 2 shall read as follows:

"(1) In written proceedings before the European Patent Office any party may use any official language of the European Patent Office. The translation referred to in Article 14, paragraph 4, may be filed in any official language of the European Patent Office.

(2) Amendments to a European patent application or European patent must be filed in the language of the proceedings."

1.2 The existing paragraph 2 shall become paragraph 3.

2. Rule 3 shall be deleted

3. Rule 4 shall read as follows:

"European divisional applications or, in the case referred to in Article 14, paragraph 2, the translations thereof, must be filed in the language of the proceedings for the earlier European patent application."

4. In Rule 18, the second sentence of paragraphs 1 and 2 shall be deleted.

5. In Rule 19, the second sentence of paragraph 2 shall be deleted

6. In Rule 25, paragraph 2 shall be deleted. The existing paragraph 3 shall become paragraph 2.

7. In Rule 27, sub-paragraph a of paragraph 1 shall be deleted. The existing sub-paragraphs b to g shall be renumbered sub-paragraphs a to f.

8. Rule 30 shall read as follows:

"Rule 30

Unity of invention

(1) Where a group of inventions is claimed in one and the same European patent application, the requirement of unity of invention referred to in Article 82 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features The expression "special technical features" shall mean those technical features which define a contribution which each of the claimed inventions considered as a whole makes over the prior art

(2) The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim."

9. Rule 31 shall read as follows:

"(1) Any European patent application comprising more than ten claims at the time of filing shall, in respect of each claim over and above that number, incur payment of a claims fee. The claims fee shall be payable within one month after the filing of the application. If the claims fees have not been paid in due time they may still be validly paid within a period of grace of one month of notification of a communication pointing out the failure to observe the time limit.

(2) If a claims fee is not paid within the period referred to in paragraph 1, 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."

10. Rule 37, paragraph 3, shall read as follows

"(3) Renewal fees already due in respect of an earlier application up to the date on which a European divisional application is filed must also be paid for the divisional application and fall due when the latter is filed. These fees and any renewal fee falling due within a period of four months from the filing of the divisional application may be paid without an additional fee within that period. If payment is not made in due time, the renewal fees may still be validly paid within six months of the due date, provided that the additional fee under Article 86, paragraph 2, is paid at the same time."

11. Rule 38, paragraph 3, shall read as follows:

"(3) The copy of the previous application required for claiming priority shall be filed before the end of the sixteenth month after the date of priority. The copy must be certified as an exact copy of the previous application by the authority which received the previous application and shall be accompanied by a certificate issued by that authority stating the date of filing of the previous application. If the previous application is a European patent application or an international application filed with the European Patent Office as receiving Office within the meaning of the Cooperation Treaty, the European Patent Office shall include a copy of the previous application in the file of the European patent application without requiring a fee."

12. Rule 44, paragraph 5, shall read as follows:

"(5) The European search report shall be drawn up in the language of the proceedings."

13. Rule 50, paragraph 1, shall read as follows:

"(1) The European Patent Office shall communicate to the applicant the date on which the European Patent Bulletin mentions the publication of the European search report and shall draw his attention in this communication to the provisions of Article 94, paragraphs 2 and 3."

14. Rule 51, paragraph 6, shall read as follows:

"(6) If it is established that the applicant approves the text in which the Examining Division, taking account of any proposed amendments (Rule 86, paragraph 3), intends to grant the European patent, it shall invite him to pay, within a non-extendable period to be set by it which may not be less than two months or more than three months, the fees for grant and printing and shall also invite him to file within the same period a translation of the claims in the two official languages of the European Patent Office other than the language of the proceedings."

15. Rule 58, paragraph 5, shall read as follows:

"(5) 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."

16. Rule 59 shall read as follows:

"Documents referred to by a party to opposition proceedings shall be filed together with the notice of opposition or the written submissions in two copies. If such documents are neither enclosed nor filed in due time upon invitation by the European Patent Office, it may decide not to take into account any arguments based on them."

17. Rule 77, paragraph 2, shall read as follows:

"(2) Notification shall be made

(a) by post in accordance with Rule 78;

(b) by delivery on the premises of the European Patent Office in accordance with Rule 79;

(c) by public notice in accordance with Rule 80, or

(d) by such technical means of communication as determined by the President of the European Patent Office and under the conditions laid down by him governing their use."

18. Rule 80, paragraph 1, shall read as follows:

"(1) If the address of the addressee cannot be established, or if notification in accordance with Rule 78, paragraph 1, has proved to be impossible even after a second attempt by the European Patent Office, notification shall be effected by public notice "

19. Rule 85, paragraph 2, shall read as follows:

"(2) If a time limit expires on a day on which there is a general interruption or subsequent dislocation in the delivery of mail in a Contracting State or between a Contracting State and the European Patent Office, the time limit shall extend to the first day following the end of the period of interruption or dislocation for parties resident in the State concerned or who have appointed representatives with a place of business in that State The first sentence shall apply, mutatis mutandis, to the period referred to in Article 77, paragraph 5. In the case where the State concerned is the State in which the European Patent Office is located, this provision shall apply to all parties. The duration of the abovementioned period shall be as stated by the President of the European Patent Office."

20. Rule 85a, paragraph 1, shall read as follows:

"(1) If the filing fee, the search fee, a designation fee, or the national basic fee have not been paid within the time limits provided for in Article 78, paragraph 2, Article 79, paragraph 2, Rule 15, paragraph 2, Rule 25, paragraph 2, or Rule 104b, paragraph 1(b) and (c), they may still be validly paid within a period of grace of one month of notification of a communication pointing out the failure to observe the time limit, provided that within this period a surcharge is paid."

21. Rule 85b shall read as follows:

"If the request for examination has not been filed within the time limit provided for in Article 94, paragraph 2, or Rule 104b, paragraph 1(d), it may still be validly filed within a period of grace of one month of notification of a communication pointing out the failure to observe the time limit, provided that within this period a surcharge is paid."

22. Rule 94 shall be amended as follows:

22.1 Paragraph 1 shall read as follows:

"(1) Inspection of the files of European patent applications and of European patents shall either be of the original document, or of copies thereof, or of technical means of storage if the files are stored in this way. The means of inspection shall be determined by the President of the European Patent Office. Inspection of files shall be subject to the payment of an administrative fee."

22.2 The second sentence of paragraph 2 shall read as follows:

"However, on request, inspection 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."

23. Rule 104b shall be amended as follows:

23.1 Paragraphs 1 and 2 shall read as follows:

"(1) In the case of an international application as referred to in Article 150, paragraph 3, of this Convention the applicant shall perform the following acts within a period of twenty-one months, where Article 22, paragraphs 1 and 2, of the Cooperation Treaty apply, or thirty-one months where Article 39, paragraph 1(a), of the Cooperation Treaty applies, from the date of filing of the application or, if priority has been claimed, from the priority date:

(a) supply, where applicable, the translation of the international application required under Article 158, paragraph 2, of this Convention;

(b) pay the national fee provided for in Article 158, paragraph 2, of this Convention, comprising

(i) a national basic fee equal to the filing fee provided for in Article 78, paragraph 2,

(ii) the designation fees provided for in Article 79, paragraph 2, and

(iii) where applicable, the claims fees provided for in Rule 31;

(c) pay the search fee provided for in Article 157, paragraph 2(b), of this Convention, where a supplementary European search report has to be drawn up;

(d) file the request for examination in accordance with Article 94 of this Convention if the time limit specified in Article 94, paragraph 2, has expired earlier;

(e) pay the renewal fee in respect of the third year in accordance with Article 86, paragraph 1, of this Convention, if the fee has fallen due earlier in accordance with Rule 37, paragraph 1;

(f) file, where applicable, the certificate of exhibition referred to in Article 55, paragraph 2, and Rule 23 of this Convention.

(2) If the data concerning the inventor prescribed in Rule 17, paragraph 1, of this Convention, have not yet been submitted at the expiry of the period of twenty-one or thirty-one months, whichever applies, referred to in paragraph 1, the European Patent Office shall invite the applicant to furnish the data within such period as it shall specify."

23.2 The following new paragraph 3 shall be added:

"(3) Where the priority of an earlier application is claimed and the file number, copy or translation provided for in Article 88, paragraph 1, and Rule 38, paragraphs 1 to 4, of this Convention, have not yet been submitted at the expiry of the period of twenty-one or thirty-one months, whichever applies, referred to in paragraph 1, the European Patent Office shall invite the applicant to furnish the number, copy or translation of the earlier application within such period as it shall specify."

23.3 The existing paragraphs 3, 4 and 5 shall become paragraphs 4, 5 and 6, the reference to paragraph 3 in the existing paragraph 4 being changed to a reference to paragraph 4.

24. The following new Rule 104c shall be inserted:

"Rule 104c

Consequence of non-payment

(1) Unless both the national basic fee and also at least one designation fee provided for in Rule 104b, paragraph 1 (b), are paid in due time, the European patent application shall be deemed to be withdrawn.

(2) Subject to paragraph 1, the designation of any Contracting State in respect of which the designation fee provided for in Rule 104b, paragraph 1(b), has not been paid in due time shall be deemed to be withdrawn.

(3) Where a claims fee as provided for in Rule 104b, paragraph 1(b), has not been paid in due time, the claim concerned shall be deemed to be abandoned."

Article 2

The Rules relating to Fees shall be amended as follows:

1. In Article 2, item 2, the reference to Rule 104b, paragraph 3, shall be changed to a reference to Rule 104b, paragraph 4.

2. Article 2, item 3b, shall read as follows:

3. Article 2, item 19, shall be deleted. The existing items 20 and 21 shall be renumbered items 19 and 20

4. In Article 12, paragraph 2, the reference to Rule 104b, paragraph 5, shall be changed to a reference to Rule 104b, paragraph 6.

Article 3

The following transitional provisions shall apply:

1. Rule 104b, paragraph 1 (a), of the Implementing Regulations to the Convention as amended by this decision shall apply to all cases in which the establishment of loss of rights has not yet become final on the date of the entry into force of this decision.

2. Subject to the second sentence, this decision shall apply to all the time limits concerned which have not yet expired on the date of its entry into force. Rule 104b, paragraph 1, of the Implementing Regulations to the Convention in its existing wording shall apply to those cases where on the date of the entry into force of this decision the time limit prescribed therein has begun to run but has not yet expired and the existing wording of the provision results in a later date of expiry of the time limit than the new version.

3. Rule 30 of the Implementing Regulations to the Convention as amended by this decision shall apply to those European patent applications which are filed on or after the date of entry into force of the present decision

Article 4

The President of the European Patent Office shall forward a certified copy of this decision to all signatory States to the Convention and to the States which accede thereto.

Article 5

This decision shall enter into force on 1 June 1991.

Done at Munich, 7 December 1990.

For the Administrative Council

The Chairman

JEAN-CLAUDE COMBALDIEU