Pages 623-624

INFORMATION FROM THE EPO

Notice from the European Patent Office dated 11 November 1991 concerning the designation of Contracting States in European patent applications in connection with the "subsequent choice of a Community patent" option (Article 82 CPC)

1. The Agreement relating to Community patents (ACP)1 was signed on 15 December 1989 by all twelve Member States of the European Communities2, but has not yet entered into force. The principal component of the ACP is the Community Patent Convention (CPC).

2. Under certain circumstances, a Community patent may be obtained subsequently for European patent applications filed before the ACP entered into force. One of the main requirements is that all the Contracting States to the ACP must have been designated in the European patent application.

3. Article 82 CPC stipulates the following requirements for the subsequent choice of a Community patent:

• the ACP must have entered into force
• all the Contracting States to the ACP must have been designated in the European patent application filed before the ACP entered into force
• the time limit for payment of the fees for grant and printing (Article 97(2)(b) and Rule 51(6) EPC) must not have expired
• the applicant must, before expiry of that time limit, have filed with the European Patent Office a written statement that he wishes to obtain a Community patent.

4. To enter into force, the ACP must be ratified by all twelve signatory States (Article 10 ACP). However, an intergovernmental conference of the Member States of the European Communities can decide unanimously that the ACP should initially enter into force for fewer than all twelve signatory States3. The likelihood is that this will happen and that for Ireland at any rate - the only EC Member State which has not yet become party to the EPC - the ACP will not enter into force in the foreseeable future.

5. Assuming that the ACP takes effect for the other eleven (or fewer) EC Member States which are also Contracting States to the EPC, a Community patent could be obtained subsequently for European patent applications filed on or after 1 January 1992 provided they designate all the eleven potential ACP Contracting States, i.e. including Portugal4.

6. Applicants wishing to keep open the option of subsequently choosing a Community patent must therefore designate all eleven EC/EPC Member States (BE, DE, DK, ES, FR, GB, GR, IT, LU, NL, PT) in their European patent applications5 filed on or after 1 January 1992.

No prediction can be made at present, however, as to when and for which States the ACP will enter into force.