Pages 424-433

INFORMATION FROM THE EPO

Notice dated 24 April 1995 concerning amendment of the Guidelines for Examination in the European Patent Office

By decision of the President of the EPO dated 24 April 1995, after consultation with the Standing Advisory Committee before the EPO (SACEPO), the Guidelines for Examination in the EPO (issue dated December 1994) have been amended pursuant to Article 10(2) EPC, with effect from 1 June 19951.

These amendments are necessitated by the Decision of the Administrative Council of 13 December 1994 amending the Implementing Regulations of the European Patent Convention (OJ EPO 1995, 9).

The following parts of the Guidelines for Examination in the EPO (issue dated December 1994) are amended:

A-III, 6.7, second paragraph, the last sentence now reads:

Rule 38(3), third sentence, together with the Decision of the President of the EPO dated 11 April 1995 (OJ 6/1995, 408) provide for the following exception to the requirement that a priority document be filed: if the previous application is a European patent application or an international application filed with the EPO as receiving Office under the PCT, the EPO shall include free of charge a copy of the previous application in the file of the European patent application.

A-III, 6.8 is replaced by:

6.8 Where a translation of the previous application into one of the official languages of the EPO is required, it must be filed within the time limit set by the EPO, but at the latest within the non-extendable time limit laid down in Rule 51(6). Alternatively a declaration that the European patent application is a complete translation of the previous application may be submitted within those same time limits (see also C-V, 3.2 and 3.3).

A-IV, 1.2.3, second paragraph, before the last sentence is added:

The applicant can also inform the EPO, within the time limit set for filing priority documents in the divisional application proceedings, that he has in the meantime submitted these documents in respect of the parent application.

A-VII, 3.5, first paragraph, the last sentence is deleted.

A-VII, 3.5, the second paragraph is replaced by the following paragraph:

Where the file number or the copy of the previous application has not yet been submitted at the expiry of the period of 21 or 31 months, whichever applies, the EPO shall invite the applicant to furnish the number or copy within such period as it shall specify. Rule 38(3), third sentence, and the Decision of the President of the EPO referred to in III, 6.7, also apply to international applications entering the regional phase before the EPO as designated or elected Office in respect of the filing of the copy of the earlier application.

A-VII, 3.5, has a third paragraph added:

Where a translation of the previous application into one of the official languages of the EPO is required, it must be filed in accordance with Rule 38(4) (see III, 6.8 and 6.9);

A-VIII, 4, now reads:

This point is dealt with in III, 6.8 and 6.9, and C-V, 3.2 and 3.3.

B-III, 4.2, second paragraph, now reads:

(a) amendment of claims so that they embrace matter not covered by the original search (see, however, C-III, 7.10 for claims not searched because of lack of unity and C-III, 7.10a for amendments introducing subject-matter from the description which is not linked by a single general inventive concept to the subject-matter originally searched);

C-II, 4.15, the second and third paragraphs are replaced by:

Physical values must be expressed in the units recognised in international practice, i.e. in the metric system, using SI units and the other units referred to in EC Directive 76/770/EEC of 27 July 1976, see Annex 1 to this Chapter. Any values not meeting this requirement must also be expressed in the units recognised in international practice. Values in the inch/pound system, in general, do not meet the criterion "recognised in international practice".

As Rule 35(12) indicates, for mathematical formulae the symbols in general use must be employed. For chemical formulae, the symbols, atomic weights and molecular formulae in general use must be employed.

In general, use should be made of the technical terms, signs and symbols generally accepted in the field in question.

C-III, after point 7.10 is added point 7.10a:

7.10a For the situation where the applicant submits new claims directed to subject-matter which has not been searched as it was e.g. only contained in the description, reference is made to VI, 5.2 (ii).

C-III, 8.4, the reference mentioned in brackets to Legal Advice 9/81 is deleted.

C-III, 8.4, first paragraph, the last sentence is replaced by:

The filing of separate claims should, however, neither be required nor suggested.

C-V, 3.2, first paragraph, the last sentence now reads:

The certified copy of the priority document must be filed also within 16 months of the priority date (see also A-III, 6.7 and A-VII, 3.5).

C-V, 3.2, the second paragraph is replaced by the following paragraphs:

In accordance with Rule 38(3), third sentence, and the relevant decision of the President of the EPO dated 11 April 1995 (OJ 6/1995, 408), the EPO will include a copy of the previous application in the file of the European patent application without charging a fee, if the previous application is a European patent application or an international application filed with the EPO as receiving Office under the PCT.

Where a translation of the previous application into one of the official languages of the EPO is required, it must be filed within the time limit set by the EPO, but at the latest within the non-extendable time limit laid down in Rule 51(6). Alternatively a declaration that the European patent application is a complete translation of the previous application may be submitted within those same time limits.

In the communication under Rule 51(6) the EPO will request the applicant to file the required translation or declaration. It will do so earlier only if the translation is required for the examination as to whether the priority claimed is effective (see V, 2.1).

C-V, 3.3, is replaced by:

3.3 If the required translation or declaration is not filed within the time limit, the right of priority is lost for the European patent application (see A-III, 6.9 and 6.10). However, for determining the state of the art for the purposes of Art. 54(3) (see V, 2.1 and 3.4) in respect of any other European patent application, it is immaterial whether the translation or declaration has been filed.

C-VI, 5.2, has a third paragraph inserted:

(ii) Changing to unsearched subject-matter: If amended claims are directed to subject-matter which has not been searched (because it only appeared in the description, for example) and which does not combine with the originally claimed and searched invention or group of inventions to form a single general inventive concept, such amendments are not admissible. This applies also when this -unsearched - subject-matter alone is now claimed. The applicant may continue to pursue such subject-matter only in the form of a divisional application, in accordance with Art. 76.

The fourth paragraph is then:

(iii) Agreement of description and claims: ...

C-VI, 15.2, now has a second paragraph:

In that communication the applicant is also requested to file within the above- mentioned time limit either the translation of the application of which priority is claimed or the declaration as provided for in Rule 38(4), if he has not yet done so.

D-III, 5, last paragraph, first sentence, now reads:

The following allegations, for example, do not constitute grounds for opposition: that national rights of earlier date exist which put the patentability of the invention in question (see however IV, 5.3 and VII, 4.5), that the proprietor of the patent is not entitled to the European patent, that ... etc.

D-IV, 5.3, the first paragraph is replaced by:

Any amendments made in opposition proceedings must be occasioned by the grounds for opposition specified in Art. 100. That is to say, amendments can be allowed only if they are required in order to meet a ground for opposition. It is not necessary, however, that the ground for opposition in question was actually invoked by the opponent. For example, in opposition proceedings admissibly opened on grounds of non-patentability, the patent proprietor can also submit amendments to remove added subject-matter. Opposition proceedings cannot be used merely to tidy up and improve the disclosure in the patent specification (see T 127/85, OJ 7/1989, 271). Apart from the above, amendments occasioned by national rights of earlier date are admissible pursuant to Rule 87 (see also the reference in VII, 4.5 to C-III, 8.4).

D-VI, 3.2, the second paragraph is replaced by:

Together with the summons the Opposition Division will draw attention to and explain in an annexed note the points which in its opinion need to be discussed for the purposes of the decision to be taken; where this has already been done sufficiently in a prior communication it is appropriate to refer to that communication. Normally, the annex will also contain the provisional and non-binding opinion of the Opposition Division on the positions adopted by the parties and in particular on amendments filed by the proprietor of the patent. At the same time a date will be fixed up to which written submissions may be made or amendments meeting the requirements of the EPC may be filed. Normally this date will be one month before the date of the oral proceedings. However, an earlier date may be advisable if it is anticipated that a party will reasonably need more time, for example to consider the results of comparative tests filed by the other party. With respect to this date Rule 84 does not apply, i.e. this time limit cannot be extended on request of the parties.

D-VI, 6, now reads:

6. Examination of the opposition during oral proceedings

For details regarding the examination shortly before and during oral proceedings and the conduct thereof, see E-III, 8.

The original point 6 of D-VI and its paragraphs are renumbered as follows:

7. Preparation of the decision

7.1 General remarks

7.2 Preparation of the decision maintaining a European patent in amended form

7.2.1 Procedural requirements

7.2.2 Decision on the documents on the basis of which the patent is to be maintained

7.2.3 Request for printing fee and translations

E-III, 6, has a second paragraph inserted:

The summons will also be accompanied by a note drawing attention to the points which need to be discussed, will normally contain the provisonal and non-binding opinion of the Division and will also fix a date up to which written submissions may be filed or documents which meet the requirements of the EPC may be submitted.

E-III, 8.6, the caption and the first paragraph are replaced by the following paragraphs:

8.6 Facts, evidence or amendments introduced late

With respect to facts and evidence submitted late in the proceedings in general, see E-VI, 2.

Rule 71a(1), being an implementation of Art. 114(2) as a further development on the existing jurisprudence regarding facts or evidence not filed in due time, makes clear that the Division has a discretion to disregard new facts or evidence for the reason that they have not been filed in due time before the oral proceedings, unless they have to be admitted because the subject of the proceedings has changed. An example of such a change would be where, in timely response to the points raised in the note annexed to the summons, the proprietor files amendments which have the result that a new document becomes relevant; in such a case the opponent should be allowed to present this document and must be given a chance to comment on the amendments (Art. 113(1)).

Rule 71a(2) imposes the same obligations on the applicant or patent proprietor when submitting new documents which meet the requirements of the Convention (i.e. new amendments to the description, claims and drawings) as Rule 71a(1) imposes on the parties in submitting new facts and evidence. Here the Division also has the discretion to disregard amendments because they are filed too late before the oral proceedings. However, where the opponent files, before the indicated date, pertinent new material, the patent proprietor must be given a chance to present his comments and submit amendments (Art. 113(1)).

In exercising this discretion, the Division will in the first place consider the relevance of the late filed facts or evidence or the allowability of the late filed amendment, on a prima facie basis. If these facts or evidence are not relevant or if these amendments are clearly not allowable, they will not be admitted. Before admitting these submissions, the Division will next consider procedural expediency, the possibility of abuse of the procedure (e.g. one of the parties is obviously protracting the proceedings) and the question whether the parties can reasonably be expected to familiarise themselves in the time available with the new facts or evidence or the proposed amendments.

As regards procedural expediency: where the late filed facts or evidence are relevant, but their introduction would cause a prolonged adjournment of the proceedings, the Division may decide not to admit these facts or evidence in the proceedings. An example would be where the witness lives abroad and still has to be found or lengthy tests are still necessary. The Division may, however, also postpone the proceedings and in doing so may have to consider the apportionment of costs (Art. 104).

An example of possible abuse of the proceedings would be a proliferation of auxiliary requests, introduced at short notice by the patent proprietor, which are not a reaction to the course of the proceedings. Another example would be an opponent who files an assertion of public prior use, based on activities of the opponent himself, late in the absence of good reasons for the delay (see T 534/89, OJ 7/1994, 464).

E-VI, 2, as first paragraph is inserted:

(for submissions of the parties filed late in respect of the date indicated in the note to the summons to oral proceedings, pursuant to Rule 71a(1), see E-III, 8.6).

New Chapter XIII will be added to Part E:

CHAPTER XIII

REGISTERING TRANSFERS, LICENCES, OTHER RIGHTS, ETC.

1. Transfer of the European patent application

A European patent application may be transferred for one or more of the designated contracting states.

1.1 Without prejudice to Art. 72, the transfer of a European patent application is recorded in the Register of European Patents at the request of an interested party and on production of documents satisfying the EPO that such transfer has taken place. The request is deemed not to have been filed until such time as the prescribed administrative fee has been paid.

1.2 Any kind of written evidence suitable to prove the transfer is admissible. A declaration signed by both parties is sufficient, but also a declaration of transfer signed by the assignor will do, as the assignee will anyway be notified by the EPO of the entry in the Register. Formal documentary proof (originals or certified copies) such as the instrument of transfer or official documents verifying the transfer or extracts thereof, are equally appropriate.

1.3 In case the evidence presented is found to be unsatisfactory, the EPO informs the party requesting the transfer accordingly, and invites it to remedy the stated deficiencies.

1.4 If the request complies with the requirements of Rule 20(1), the transfer is registered with the date on which the request, the required evidence or the fee has been received by the EPO, whichever is the latest.

1.5 On the above date, the transfer becomes effective vis-à-vis the EPO, i.e. from that date the newly registered applicant is entitled to exercise the right to the European patent application in proceedings before the EPO (Art. 60(3)). In case the transfer was for certain designated states only, Art. 118 applies.

1.6 The competent department for adverse decisions regarding the entry of the person concerned in the Register of European Patents is the Legal Division.

2. Transfer of the European patent

The above applies mutatis mutandis to the registration of a transfer of the European patent during the opposition period or during opposition proceedings.

3. Licences and other rights

3.1 A European patent application may give rise to rights in rem, may be licensed and may be the subject of legal means of execution. Rule 20(1) and (2) apply mutatis mutandis to the registration of the grant, establishment or transfer of such rights (see 1.1 to 1.4 and 1.6).

3.2 A licence shall be recorded in the Register of European Patents as an exclusive licence if the applicant and the licensee so require. A licence shall be recorded as a sub-licence where it is granted by a licensee whose licence is recorded in the Register of European Patents.

3.3 Upon request and subject to the payment of the prescribed administrative fee, registered licences and other rights are cancelled on production of documents satisfying the EPO that the right has lapsed, or of a declaration of the proprietor of the right that he consents to the cancellation.

4. Change of name

Changes in the name of the applicant for or proprietor of a European patent shall be entered in the Register on production of supporting evidence (eg copy from the commercial register).