Pages 696-700

INFORMATION FROM THE EPO

Notice dated 13 October 1999 concerning amendment of the Implementing Regulations to the European Patent Convention and of the Rules relating to Fees

1. By decision dated 13 October 1999 1, the Administrative Council of the European Patent Organisation has amended the EPC Implementing Regulations and the Rules relating to Fees. The amendments enter into force on 1 March 2000.

This Notice gives details of the amendments and of the transitional provisions applicable.

I. Amendment of the EPC Implementing Regulations

2. The amendments mainly concern the time limit for paying designation fees and the provisions relating to the procedure before the EPO as designated or elected Office under the PCT. In view of the increasing number of international applications entering the European phase, the relevant EPC Rules have been restructured. The new structure follows that of the procedure, and is therefore clearer and simpler. In the interests of clarity and correct citation, the relevant provisions are now numbered consecutively. Part VIII of the Implementing Regulations as amended contains only provisions implementing Part VIII of the EPC, namely Rule 103, whilst Part IX contains Rules 104 to 112 implementing Part X of the EPC. Current Rules 105, 106 and 106a all relate to the transitional period which started when the EPO was first set up. They are now obsolete and have therefore been deleted.

3. The amendment to Rules 15(2) and 25(2) ensures that applicants always have six months - as from the date of publication of the European search report on the new or divisional application - to pay the designation fees. This brings the relevant time limits into line with the one introduced for direct European filings with the amendment of Article 79(2) which entered into force on 1 July 19972.

4. The revised wording of Rule 18 clarifies the fact that the inventor can renounce his right to be mentioned in the published European patent application and the patent specification. He still, however, retains inventor status in the application. Rules 92(1)(g) and 93(c) have been adjusted accordingly.

5. New paragraphs 3 to 6 of Rule 38 clarify the filing of priority documents and translations thereof. In particular, paragraph 4 specifies that no priority document need be filed if a copy already available to the EPO is to be included in the file under the conditions laid down by its President.

6. New Rule 106 defines the national fee provided for in Article 158(2). This definition is necessary in particular for correct identification of the prior art under Article 54(3) and (4), given that under the PCT the term "national fee" is construed to comprise the fees necessary for a valid national (non-PCT) filing. New Rule 106 therefore provides that for Euro-PCT applications the "national fee" consists of the filing fee plus the designation fees.

7. Former Rule 104b (now Rule 107) has been radically amended. It now comprises only the requirements for entry into the European (regional) phase, together with the following new elements:

(a) A new provision (Rule 107(1)(b)) reminding applicants to indicate the documents on which the European phase is to be based.

(b) The time limit for paying designation fees (Rule 107(1)(d)) in respect of international applications entering the European phase under PCT Chapter I now corresponds to the time limit applicable for direct European filings, namely six months from publication of the international search report (taking the place of the European search report and the mention of its publication in the European Patent Bulletin, Article 157(1).

(c) Finally, paragraph 2 makes clear that the reduction in the examination fee applies only in respect of subject-matter covered by the international preliminary examination report.

8. The consequences of non-payment of the national fee (formerly Rule 104c(1) and (2)) are now set out in new Rule 108.

9. New Rule 109 lays down the framework for amending the application after entry into the European phase. The period allowed for amendment is taken from PCT Rules 52.1 and 78.1 (implementing provisions to Articles 28(1) and 41(1) PCT, governing the applicant's right to amend before the designated or elected Office). It is set in motion by a communication from the EPO informing the applicant of this possibility, issued promptly after expiry of the time limit for entry into the European phase.

The amendments thus made then serve as the basis for any supplementary search which has to be performed. They also affect the computation of claims fees (see the comments on Rule 110 below).

The applicant's rights and obligations under Rule 86(2) to (4) remain unaffected.

10. New Rule 110 provides the legal basis for levying claims fees in the European phase and specifies on which basis they are to be computed.

The new structure (computation basis and time limit for payment) is based on the number of claims present on entry into the European phase, but takes into account - to applicants' advantage - the possibility that amendments to the international application may reduce the number of claims, in which case any overpaid claims fees are refunded.

The communication under Rule 110(2) is notified promptly after expiry of the time limit for entry into the European phase. It is issued in all cases, and contains both the information mentioned in Rule 109 and the reminder to pay outstanding claims fees.

11. New Rule 111 comprises paragraphs 2 to 3a of existing Rule 104b concerning formal deficiencies rectifiable at the EPO's invitation. The references have been amended to reflect the new numbering adopted.

The amendment in new paragraph 3 is based on Rule 5.2(b) PCT as in force from 1 July 1998 (see also Supplement No. 2 to OJ EPO 11/1998).

12. New Rule 112 takes over paragraphs 4 and 5 of existing Rule 104b, concerning the procedure in the European phase in cases where an objection of non-unity was raised during the international search. The term "Search Division" has been replaced by "European Patent Office" to cover situations where the non-unity objection is reviewed directly by the examining division, ie where no supplementary search has to be carried out under Article 157(3).

II. Amendment of the Rules relating to Fees

13. The references in Article 2, items 1, 2 and 15 have been amended to reflect the new numbering of the EPC Rules concerned.

III. Transitional provisions

14. The procedural improvements for the applicants, and the longer time limit for paying designation fees in particular, apply to all pending cases in respect of which, on 1 March 2000 (the date on which all the amendments take effect), the relevant procedural acts have not yet been performed and the time limit under the existing provisions have not expired.

15. More specifically, Rules 15(2) and 25(2) as amended apply to all European patent applications in respect of which, on 1 March 2000, the designation fees have not been validly paid and the time limit under existing Rules 15(2) and 25(2) for paying them has not yet expired.

Rule 107(1)(d) applies to all international applications in respect of which, on 1 March 2000, the designation fees have not been validly paid and the time limit under Rule 104b(1)(b)(ii) for paying them has not yet expired.

Finally, Rules 109 and 110 apply to all international applications in respect of which, on 1 March 2000, all the acts provided for in Rule 104b(1) have not been performed and the period for doing so has not yet expired.