Pages 434-436

INFORMATION FROM THE EPO

Notice dated 24 April 1995 concerning an amendment to the Guidelines for Examination in the European Patent Office (Part A)

By decision of the President of the EPO dated 24 April 1995, after consultation of the Standing Advisory Committe before the EPO (SACEPO), the Guidelines for Examination in the EPO1 (issue dated December 1994), points A-III, 5.4 and A-IV, 4.2, are amended pursuant to Article 10(2) EPC with effect from 1 July 1995.

I. The Enlarged Board of Appeal, in its decision G 2/93 (which is published in OJ EPO 1995, 275), examined the jurisprudence of the boards of appeal and the relevant practice of the Receiving Section in cases where the applicant has not or insufficiently supplied the information referred to in Rule 28(1)(c) EPC. In its decision the Enlarged Board of Appeal made it clear that this information must be complete by the end of the time limits mentioned in Rule 28(2) EPC.

Consequently, the practice of sending a communication setting a further time limit for submitting this information once the time limits pursuant to Rule 28(2) have expired, is now obsolete. The current practice of the Receiving Section of checking, during the examination as to formal requirements under Art. 91 EPC, whether the requirements of Rule 28(1)(c) are fulfilled, is not affected. The applicant will be notified of any deficiencies in the information required under Rule 28(1)(c) EPC but will also be reminded that these requirements must be fulfilled by the end of the time limit specified in Rule 28(2) EPC.

II. Point A-IV, 4.2, of the Guidelines for Examination in the EPO¹ (issue dated December 1994) is amended as follows:

The first sentence of point 4.2 is replaced by:

4.2 When the Receiving Section notices that the information required under Rule 28(1)(c) (indication of the depositary institution and the accession (= file) number of the culture deposit) is not contained in or has not yet been submitted with the application, it should notify the applicant of this fact as this information can only be validly submitted within the time limits specified in Rule 28(2). Also in this case the deposit must be identified in the patent application as filed in such a way that the later submitted accession number can be traced back without ambiguity. This can normally be done by indicating the identification reference given by the depositor within the meaning of Rule 6.1 (iv) of the Budapest Treaty (see decision G 2/93, OJ EPO 1995, 275).

Then follows: "The applicant is also informed ..."

III. A clarification of the Guidelines for Examination, Part A-III, 5.4, appears necessary regarding the practice in respect of requests for further processing under Art. 121 EPC in cases where the designation of the inventor is not filed or filed in deficient form. The designation of inventor can be so deficient that it has to be considered as not filed (eg the signature of the applicant or the name of the inventor is missing) or the deficiencies can be considered minor.

In the case of the designation of inventor not having been filed at all or in such deficient form that it is to be considered as not filed, the time limit to comply with the requirements is the time limit pursuant to Art. 91(5) or the two-month time limit set by the Receiving Section in analogy of Rule 42(2), depending on whether the deficiency was noticed more than two months before the end of the time limit of Art. 91(5) or not. If the requirements are not complied with within this time limit, the application is deemed withdrawn (Art. 91(5); the only means of redress is re-establishment of rights under Art. 122. Further processing is not possible as both are time limits laid down in the Convention. In the case where the designation has minor deficiencies the applicant is given the opportunity to correct them under Art. 91(2) within a time limit determined by the EPO. It is possible to request an extension thereof under Rule 84. If the deficiencies are not corrected in due time, the application is refused (analogous to Art. 91(3)). Both further processing under Art. 121 and re-establishment of rights under Art. 122 are possible.

IV. Point A-III, 5.4 of the Guidelines for Examination in the EPO¹ (issue dated December 1994) is amended as follows:

The first sentence of point 5.4 is replaced by:

5.4 Where a designation is not filed, or where the designation filed contains a major deficiency (e.g. inventor's name or the signature of the applicant is missing) so that it cannot be considered as validly filed, the applicant is informed that the European patent application will be deemed to be withdrawn if the deficiency is not remedied within the period prescribed under Art. 91(5) or within a minimum period of two months as from notification of this communication, whichever period is the longer.

The last sentence of point 5.4 is replaced by:

Re-establishment of rights under Art. 122 is possible on request (see E-VIII, 2). If the designation filed presents only minor deficiencies (eg inventor's address is missing), the applicant is invited to correct these within a time limit set by the EPO pursuant to Art. 91(2). If this is not corrected in due time, the application is refused (analogous to Art. 91(3)). Further processing of the application under Art. 121 or re-establishment of rights under Art. 122 is possible on request. Regarding the designation of inventor in divisional applications, see IV, 1.5.