Pages 601-605

INFORMATION FROM THE EPO

Extension of European patents to Romania

The agreement with Romania on co-operation in the field of patents1 (Co-operation Agreement) will enter into force on 15 October 1996. From that date therefore it will be possible to extend the protection conferred by European patents to Romania too (the other "extension states" are Slovenia2, Lithuania3, Latvia4 and Albania5).

The rules governing extension in Romania are set out in the Romanian governmental ordinance on the extension (Extension Ordiance)6 of European patents:

1. Extension occurs at the applicant's request. It is deemed requested for any European patent application filed on or after 15 October 1996 (Article 2(1) Extension Ordinance). Extension is not available for applications filed prior to that date, or for any European patents resulting from such applications.

2. Extension is also deemed requested for all international applications filed on or after 15 October 1996 provided that both the EPO and Romania are validly designated (Euro-PCT applications).

3. The extension fee is DEM 200. It must be paid to the EPO (not the Romanian Patent Office) within the time limits prescribed in the EPC for paying the designation fees (Articles 79(2) and 78(2) EPC). After expiry of the basic time limit, the extension fee can still be validly paid under Rule 85a(2) EPC within a period of grace of two months, provided that within that period a surcharge of 50% is also paid (Article 3 Extension Ordinance in conjunction with Article 6(1), (2) and (3) Co-operation Agreement).

The payment period for Euro-PCT applications is 21 or 31 months from the date of filing or the priority date (Rule 104b(1) EPC).

No notification of non-observance of the basic time limit or expiry of the period of grace is issued. Nor is re-establishment of rights possible in respect of payment of the extension fee.

4. Payment of the extension fee is governed mutatis mutandis by the provisions of the EPO Rules relating to Fees (Article 3 Extension Ordinance in conjunction with Article 6(4) Co-operation Agreement). The fee and its equivalents in the currencies of the contracting states will be added to the schedule of EPO fees, costs and prices and published in the EPO Official Journal.

5. If the extension fee is not paid in due time, the request for extension is deemed withdrawn (Article 2(3) Extension Ordinance). By paying the extension fee the applicant is deciding to extend his European patent application to Romania. Applicants who intend to pay the extension fee for Romania are requested to enter Romania (RO) in Section 34 of the Request for grant (EPA/EPO/OEB Form 10017) and mark the corresponding box with a cross. This declaration is merely for information purposes and is intended to assist in recording fee payments.

The same applies mutatis mutandis to Section 11 of Form 12008 for Euro-PCT applications entering the regional phase, where both the EPO and Romania were validly designated.

6. The applicant can withdraw the request for extension at any time by informing the EPO of his wish to do so. The request for extension is also deemed withdrawn if by final decision the European patent application is refused, withdrawn or deemed withdrawn (Article 2(3) Extension Ordinance). Validly paid extension fees are not refunded (Article 3 Extension Ordinance in conjunction with Article 6(4) Co-operation Agreement).

7. If a European patent application extends to Romania, any European divisional application arising from it can also be extended. The extension fee in that case must be paid within the time limits prescribed in Rule 25(2) EPC.

8. Under Article 4 of the Extension Ordinance a European patent application for which extension has been requested is equivalent to a duly filed national application, and after publication confers provisional protection under Articles 2 and 34(1)(a) and (b) of the Romanian Patent Law provided the applicant communicates to the Romanian National Office for Patents and Trade Marks (OSIM) the prescribed translation of the claims in Romanian, and provided this has been published after payment of the prescribed fee.

9. Once the EPO publishes the mention of grant, a European patent extending to Romania has the same effects as a national patent (Article 5(1) Extension Ordinance), provided however that the patent proprietor files a translation of the specification9 of the extended European patent in Romanian and has paid the prescribed publication fee (Article 5(2) Extension Ordinance). If the European patent is maintained with amended claims as a result of an opposition filed with the EPO, the same applies mutatis mutandis to the amended claims of the extended European patent (Article 5(3) Extension Ordinance).

10. The provisions concerning the authentic text of the European application or patent (Article 6 Extension Ordinance) correspond to those of Article 70 EPC.

11. The provision on collision between European and national applications or patents (Article 7 Extension Ordinance) corresponds to Article 139(1) and (2) EPC, and makes clear that for subsequent Romanian applications an earlier European application extending to Romania has the same prior-art effect as a national application. However, it only has such effect if the extension fee has been paid, thereby ensuring that not every European application counts as a prior right.

This also applies mutatis mutandis if an earlier national application is prejudicial to a later European application extending to Romania.

12. Where an extended European patent and a national patent have the same priority, the former takes precedence, in so far as it protects the same invention (Article 8 Extension Ordinance). This is in line with the double-protection provisions of most EPC contracting states.

13. The effects of extending European patents and applications can lapse retroactively. For example, the provisional protection conferred by a published European patent application is lost ab initio if the request for extension subsequently lapses. Similarly, to the extent that the patent granted for the application is revoked in EPO opposition proceedings, the provisional protection and other effects of the patent are again lost ab initio (Articles 4(3) and 5(6) Extension Ordinance).

However, in such cases the European application continues to have the effect of a duly filed national application.

14. Renewal fees for extended European patents are payable to the Romanian Patent Office, under the provisions governing national patents, for the years following that in which mention of grant of the European patent was published (Article 9 Extension Ordinance).

15. In the extension procedure, the EPO will be acting purely on the basis of its obligations under the Co-operation Agreement with Romania. The procedure itself and the legal effects of extension will be governed solely by Romanian law. Only those provisions of the Convention, Implementing Regulations and the EPO Rules relating to Fees will apply which are referred to in the Romanian provisions (Article 10 Extension Ordinance) - which is only the case for the time limits and arrangements for paying the extension fee.

16. Thus the EPC provisions concerning applicants' legal remedies and appeals do not apply in respect of action taken by the EPO under the extension procedure. This is because here the Office will not be acting under the terms of the EPC.