Pages 538-542

INFORMATION FROM THE EPO

Extension of European patents to the former Yugoslav Republic of Macedonia

The agreement with the former Yugoslav Republic of Macedonia on co-operation in the field of patents1 (Co-operation Agreement) enters into force on 1 November 1997, from which date it will therefore be possible to extend the protection conferred by European patents to the former Yugoslav Republic of Macedonia too (the other "extension states" are Slovenia2, Lithuania3, Latvia4, Albania5 and Romania6).

The rules governing extension in the former Yugoslav Republic of Macedonia are set out in the governmental ordinance on the extension of European patents7:

1. Extension occurs at the applicant's request. It is deemed requested for any European patent application filed on or after 1 November 1997 (Article 2(1) Extension Ordinance). Extension to the former Yugoslav Republic of Macedonia 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 1 November 1997 in which both the EPO and the former Yugoslav Republic of Macedonia are validly designated (Euro-PCT applications).

3. The extension fee is DEM 200. For European applications, it must be paid to the EPO (not the Patent Office of the former Yugoslav Republic of Macedonia) within the time limits prescribed in the EPC for paying the designation fee (Article 79(2) EPC). For Euro-PCT applications, the payment period is 21 or 31 months from the date of filing or priority (Rule 104b(1) EPC).

After expiry of the relevant 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). 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). Applicants who intend to pay the extension fee for the former Yugoslav Republic of Macedonia are requested to enter that country (MK) in Section 34 of the request for grant (EPA/EPO/OEB Form 10018) and mark the corresponding box with a cross. This declaration is merely for information purposes, to assist in recording fee payments. The same applies mutatis mutandis to Section 11 of Form 12009 for Euro-PCT applications entering the regional phase, where both the EPO and the former Yugoslav Republic of Macedonia were validly designated.

5. If the extension fee is not paid in due time, the request for extension is deemed withdrawn (Article 2(3) Extension Ordinance).

6. The applicant can withdraw the request for extension at any time by informing the EPO accordingly. The request 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).

7. If a European patent application extends to the former Yugoslav Republic of Macedonia, 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 94 and 95 of the Patent Law of the former Yugoslav Republic of Macedonia, provided the applicant communicates to the invention's user in the former Yugoslav Republic of Macedonia a translation of the claims into the national language.

9. Once the EPO publishes the mention of grant, a European patent extending to the former Yugoslav Republic of Macedonia has the same effects as a national patent (Article 5(1) Extension Ordinance), provided however that within 3 monts of that publication the patent proprietor files a translation of the claims of the extended European patent into the national language and has paid the prescribed publication fee (Article 5(2) Extension Ordinance). If the European patent is maintained with amended claims in opposition proceedings before 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 provisions on collision between European and national applications or patents (Article 7 Extension Ordinance) correspond to Article 139(1) and (2) EPC, and make clear that a validly extended earlier European application has the same prior-art effect for subsequent national applications as a national application. This also applies mutatis mutandis if an earlier national application is prejudicial to a subsequent extended European application.

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, 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 Patent Office of the former Yugoslav Republic of Macedonia, 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. Extension of European patent applications and patents is mentioned in the EPO publications (EPIDOS Information Register, Patent Bulletin, A and B documents)10.

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

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, because here the Office is not acting under the EPC.