Pages 301-310

INFORMATION FROM THE EPO

Notice dated 1 April 1999 concerning amendment of the European Patent Convention, the Implementing Regulations, and the Rules relating to Fees^*

1. By its decisions dated 10 December 1998, the Administrative Council of the European Patent Organisation amended the European Patent Convention, its Implementing Regulations and the Rules relating to Fees. The amendments to the Convention and Implementing Regulations entered into force on 1 January 1999, those to the Rules relating to Fees regarding the introduction of the euro on 2 March 1999. The amendments to the Rules relating to Fees concerning reductions in the search and designation fees are due to enter into force on 1 July 1999.

The present Notice gives details of the amendments and fee reductions. For information about the switch to the euro, see OJ EPO 1999, 120.

I. Amendment of the European Patent Convention

2. Article 109(2) now reads as follows:

"(2) If the appeal is not allowed within three months after receipt of the statement of grounds, it shall be remitted to the Board of Appeal without delay, and without comment as to its merit."

3. Previously, the EPO had one month to rectify decisions on ex parte appeals which it considered admissible and well founded. In practice, this deadline was often difficult to meet. Sometimes, decisions were not rectified until after it had expired. In other cases, owing to lack of time, appeals went straight to the boards without any consideration of interlocutory revision.

4. Interlocutory revision after expiry of the Article 109(2) time limit was always controversial, and has now been found admissible only in exceptional cases (T 939/95 of 23.01.1998). Increasing the time limit to three months will make the procedure more practicable and efficient. The new time limit applies to appeals filed as from 1 January 1999.

II. Amendment of the Implementing Regulations

5. The amendments below concern the PHOENIX electronic file system (see OJ EPO 1998, 360), postal notification, and late receipt of documents at the EPO.

6. Rule 32(2)(c) now reads as follows:

"(c) The scale of the drawings and the distinctness of their graphical execution shall be such that reproduction, obtained electronically or photographically, with a linear reduction in size to two-thirds would enable all details to be distinguished without difficulty. If, as an exception, the scale is given on a drawing, it shall be represented graphically."

7. Rule 35(3) now reads as follows:

"(3) The documents making up the European patent application shall be so presented as to admit of electronic as well as of direct reproduction, in particular by scanning, photography, electrostatic processes, photo offset and micro filming, in an unlimited number of copies. All sheets shall be free from cracks, creases and folds. Only one side of the sheet shall be used."

8. The additions made to Rules 32(2) and 35(3) accommodate the technical requirements of electronic document management, and will ensure that European patent application documents comply with PHOENIX quality criteria.

9. Rule 66(2), first sentence, now reads as follows:

"(2) The decision shall be authenticated by the Chairman of the Board of Appeal and by the competent employee of the registry of the Board of Appeal, either by their signature or by any other appropriate means."

10. Rule 76(3) now reads as follows:

"(3) The minutes shall be authenticated by the employee who drew them up and by the employee who conducted the oral proceedings or taking of evidence, either by their signature or by any other appropriate means."

11. In the past, board of appeal decisions and the minutes of oral proceedings had to be signed by the officials in question. In future, these documents will also be computer-generated under PHOENIX, so new Rules 66(2) and 76(3) provide for authentication by electronic means as well. Even under the electronic file system, however, authentication is still required.

12. Rule 78 now reads as follows:

"Rule 78

Notification by post

(1) Decisions incurring a time limit for appeal, summonses and other documents as decided on by the President of the European Patent Office shall be notified by registered letter with advice of delivery. All other notifications by post shall be by registered letter.

(2) Where notification is effected by registered letter, whether or not with advice of delivery, this shall be deemed to be delivered to the addressee on the tenth day following its posting, unless the letter has failed to reach the addressee or has reached him at a later date; in the event of any dispute, it shall be incumbent on the European Patent Office to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be.

(3) Notification by registered letter, whether or not with advice of delivery, shall be deemed to have been effected even if acceptance of the letter has been refused.

(4) To the extent that notification by post is not covered by paragraphs 1 to 3, the law of the State on the territory of which the notification is made shall apply."

13. Under old Rule 78 EPC, only notifications to addressees whose residence or principal place of business was in the territory of an EPC contracting state were sent by registered letter. Postal notifications to other addressees went by ordinary mail, with notification being deemed to have occurred when despatch had taken place - even if the letter was returned to the EPO as undeliverable.

14. Having these two different groups of addressees was felt to be disadvantageous for both applicants and the EPO. Old Rule 78(2) has therefore been deleted. All notifications are now made by registered letter, irrespective of the addressee's residence or principal place of business, and all addressees can rely on Rule 78(2) (former paragraph 3) if a letter goes astray or arrives later than ten days after posting.

15. Rule 95a now reads as follows:

"Rule 95a

Constitution, maintenance and preservation of files

(1) The European Patent Office shall constitute, maintain and preserve files relating to all European patent applications and patents.

(2) The President of the European Patent Office shall determine the form in which the files relating to European patent applications and patents shall be constituted, maintained and preserved.

(3) Documents incorporated in an electronic file shall be considered to be originals.

(4) Files relating to European patent applications and patents shall be preserved for at least five years from the end of the year in which:

(a) the application is refused or withdrawn or is deemed to be withdrawn;

(b) the patent is revoked pursuant to opposition proceedings; or

(c) the patent or the extended term or corresponding protection under Article 63, paragraph 2, lapses in the last of the designated States.

(5) Without prejudice to paragraph 4, files relating to European patent applications which have given rise to divisional applications under Article 76 or new applications under Article 61, paragraph 1(b), shall be preserved for at least the same period as the files relating to any one of these last applications. The same shall apply to files relating to any resulting European patents."

16. The new version of Rule 95a(1) expressly requires the EPO to constitute, maintain and preserve files on European patent applications and patents. As in the past, the details are determined by the President of the EPO (paragraph 2).

17. Under PHOENIX, "originals" in the traditional sense no longer exist, so Rule 95a(3) specifies that documents incorporated in the electronic file are originals. This is of particular practical importance, for instance, when certified copies of originals are required.

18. New paragraph (4)(c) is in response to users who wanted files on patents with extended terms, or relating to corresponding protection under Article 63(2), to be preserved longer.

19. Rule 104(1) now reads as follows:

"(1) When the European Patent Office acts as a receiving Office under the Cooperation Treaty, the international application shall be filed in English, French or German. It shall be filed in three copies; the same applies to any of the documents referred to in the check list provided for in Rule 3.3(a)(ii) of the Regulations under the Cooperation Treaty except the receipt for the fees paid or the cheque for the payment of fees. The President of the European Patent Office may, however, decide that the international application and any related item shall be filed in fewer than three copies."

20. Rule 104(1) has thus been brought into line with Rule 35(2), extending the copy waiver to include international applications.

21. The following new Rule 84a has been added to Chapter IV of Part VII of the Implementing Regulations to the EPC:

"Rule 84a

Late receipt of documents

(1) A document received late at the European Patent Office shall be deemed to have been received in due time if it was posted, or delivered to a recognised delivery service, in due time before the expiry of the time limit in accordance with the conditions laid down by the President of the European Patent Office, unless the document was received later than three months after expiry of the time limit.

(2) Paragraph 1 shall apply mutatis mutandis to the time limits provided for in the Convention where transactions are carried out with the competent authority in accordance with Article 75, paragraph 1(b) or paragraph 2(b)."

22. New Rule 84a will make it easier to safeguard the rights of applicants whose communications arrive late at the EPO. Modelled on Rule 82.1 PCT, it supplements the EPC's existing remedies for missed time limits (re-establishment, further processing) and the extension available under Rule 85(2) in case of general disruption of mail delivery.

23. Under paragraph 1 of the new rule, a time limit is considered to be met if the late-filed item was posted or entrusted to a recognised delivery service (see point 26 below) before it expired. This is not an extension in accordance with Rule 85(2) EPC, but a legal fiction concerning observance of a time limit, as envisaged for fee payments in Article 8(3) RFees.

24. For Rule 84a to apply, the document must be despatched in due time and reach the EPO no later than three months after expiry of the missed time limit. The new rule applies to all time limits to be observed vis-a-vis the EPO or national offices (paragraph 2), including the priority period under Article 87(1) EPC.

25. Unlike Rule 82.1(b) PCT, it does not however apply to documents lost in the post. Nor is Rule 84a applicable to fee payments, for which Article 8(3) RFees is lex specialis.

26. For maximum flexibility, the practical arrangements are a matter for the President of the EPO, who by a decision of 11 December 19981 laid them down as follows:

• A document was posted in due time within the meaning of Rule 84a EPC if entrusted to the postal authorities, DHL, Express Post, Federal Express, TNT or UPS five days before the relevant time limit expired.
• Rule 84a EPC applies only to items sent as registered mail and, if posted outside Europe, by airmail.

27. The above-mentioned minimum five days are calendar days, reflecting PCT rules and current delivery times within Europe. According to Deutsche Post AG, 50% of mail within the European Union reaches the addressee two working days on average from the date of despatch. Five days after despatch, 91% of all mail has arrived.

28. On private delivery services, the President has again followed PCT practice, recognising the same firms across the board for Rule 84a purposes (see point 26 above).

29. However, according to the decision of the President Rule 84a applies only to items sent as registered mail. Despatch dates can then be quickly and easily established, and the Office provided with confirmation of registration if necessary.

30. If recognised delivery services are used (see point 26 above), Rule 84a applies only if despatch was in a form equivalent to registered mail, ie in particular if a receipt for the item was issued.

31. In addition, mail from outside Europe must be sent as airmail, this being the only way to ensure that delivery times will not normally exceed five days. The criterion here is simply that the item goes via airmail; it does not have to be marked as such.

32. For the purposes of Rule 84a, mail will be treated as posted within Europe if the country of despatch belongs to the European Convention of Postal and Telecommunication Administrations (CEPT)2 or is generally regarded as forming part of Europe.

III. Amendment of the Rules relating to Fees (fee reduction)

33. From 1 July 1999, Article 2, items 2 and 3, RFees will read as follows:

34. This further EPO fee reduction, approved by the Administrative Council on a proposal from the President, concerns the fees for the European search (reduced to EUR 690 from EUR 869), the international search (reduced to EUR 945 from EUR 1 124) and designations. In future, designation fees will be regarded as paid for all EPC contracting states if an amount equal to seven times the designation fee is paid.

35. Both measures are substantial reductions. From 1 July 1999, the fees payable for a European filing will be only EUR 817 (down 18% from EUR 996). With designation fees, the savings are even bigger: for a patent covering all 19 contracting states, applicants now have to pay only EUR 532 (down by over 60% from EUR 1 368).

36. This makes Europe-wide patents much more attractive. Payment of just seven designation fees gives applicants the option of a European patent valid in all the EPC contracting states; only after grant do they have to decide in which countries they want to "validate" it.

37. The new fees apply to all European and international patent applications filed as from 1 July 19993.