Pages 359-379

INFORMATION FROM THE EPO

Notice dated 16 April 1999 concerning the revised Request for Grant form

A revised Request for Grant form1 will be introduced at the end of June 1999.

The revised form and amended Notes are reproduced below.

The use of the revised form is recommended for European applications filed on or after 1 July 1999, although copies of the previous version2 may be used up if applicants so wish.

Explanation of changes

1. Amended Sections 32 and 43 (Ceiling on designation fees)

Article 2 No. 3 RFees has been amended by a decision of the Administrative Council3 dated 10 December 1998. For applications filed from 1 July 1999 onwards the designation fees will be deemed paid for all the contracting states upon payment of seven times the amount of a single designation fee. Sections 32 and 43 of the form have been revised accordingly.

Section 32.1 of the revised form contains, as in the past, a pre-crossed box for designating all the states which are EPC contracting states at the time of filing the application. The list of contracting states at the time of printing is included purely for information in the new footnote to this section.

The new paragraph 2 in Section 32.1 assumes that the applicant intends at the time of filing to pay seven times the amount of the designation fee. In this case the Office does not require applicants, either when filing the application or when paying the designation fees, to make any further indication as to the contracting states designated. The new arrangements have made it possible to dispense with the list of all the contracting states in Section 32.2 of the previous version of the form from which applicants could select the states for which they intended to pay designation fees.

However, if applicants wish to pay fewer than seven designation fees at the time of filing, they should indicate the states for which they intend to pay fees, using the spaces now provided for this purpose in section 32.2. As in the past, this indication, in conjunction with the further declaration at the bottom of Section 32.2, will make it easier to ensure that designation fees paid for fewer than seven states are properly debited and to avoid unnecessary communications under Rules 85a and 69(1) EPC, in cases where applicants are not interested in patent protection for certain states and intentionally do not pay the designation fee.4

Section 43 has been expanded by inserting references to Sections 32.3 and 34 to make it clear how the automatic debiting procedure is to be applied for the payment of designation and extension fees.

2. New Section 25a (Declaration under Rule 38(4) EPC)

Where a translation of the previous application into one of the official languages of the EPO is required, a declaration may be submitted that the European patent application is a complete translation of the previous application (Rule 38(4) EPC). The new Section 25a has been created for applicants who, for reasons of efficiency, wish to submit such a declaration at the time of filing.

3. Amended Section 27 (Biological material, Rule 28(1)(c) EPC)

In Section 27 the requirements regarding any information to be provided under Rule 28(1)(c) EPC have been made more precise. If the file number (accession number) of the culture deposit as assigned by the depositary institution is not indicated in the patent application, the deposit must be identified in the patent application as filed in such a way that the subsequently submitted file number (accession number) can be traced back without ambiguity. This is usually done by indicating the identification reference given to the micro-organism by the depositor within the meaning of Rule 6.1(iv) of the Budapest Treaty (see also Decision of the Enlarged Board of Appeal G 2/93 (OJ EPO 1995, 275)).

4. New Section 30 (expert option, Rule 28(4) EPC)

Under Rule 28(4) EPC the applicant may inform the EPO that the availability of biological material is to be effected by the issue of a sample to an expert nominated by the requester (the "expert option"). The new Section 30 has been created to make it easier to submit such a declaration. The previous Sections 28, 28a, 30, 30a and 30b have been renumbered.

5. Amended Section 47 (Receipt of documents)

Section 47 (Receipt of documents) has been brought into line with respect to applications relating to biological material (Section 26) by amending Part A.1 and adding a new Part A.4. The previous Parts A.4 to A.7 in Section 47 have therefore become Parts A.5 to A.8. If the authorisation under Rule 28(3) EPC (Section 28) or the waiver of the right to an undertaking under Rule 28(3) EPC (Section 29) are enclosed with the applications referred to, these documents should be indicated in Section 48 (Part B.9).

For technical reasons, the forms embedded in this article are only available in the PDF version.