Pages 65-69

INFORMATION FROM THE EPO

Notice dated 11 January 2000 concerning revised Form 1200 and continued use of the old version

In around March 2000, the first international applications filed with PCT receiving Offices from 1 July 1999 onwards will enter the European phase (EPO as designated Office). The EPO has therefore revised its Form 12001 (entry into the European phase before the EPO as designated or elected Office); Sections 10 and 12 now incorporate the ceiling on designation fees (Article 2, No. 3, RFees)2 which entered into force on 1 July 1999.

The revised form and amended Notes are reproduced below.

1. New Form 1200 to be used only for international applications filed from 1 July 1999

New Form 1200 (03.00) is for use only with international applications filed with a PCT receiving Office from 1 July 1999 onwards, because it is only to such applications that the ceiling on designation fees (see point 3.1 below) in the European phase applies. This use restriction is colour-printed at the top of the form.

The first such international applications - ie where international preliminary examination has not been requested and which are therefore subject to the 21-month time limit as from the priority date (Article 22 PCT in conjunction with Rule 107(1) EPC3) - will normally enter the European phase (EPO as designated Office) in around March 2000 (July 1999 + 9 months, the period within which the 21-month time limit can expire if priority is claimed). International applications filed from 1 July 1999, for which no priority has been claimed, or for which international preliminary examination has been requested, will normally tend to enter the European phase much later, ie any time up to February 2002 (July 1999 + 31 months).

2. Old Form 1200 still to be used for international applications filed up to 30 June 1999

For international applications filed up to 30 June 1999 entering the European phase (EPO as designated or elected Office) the old version of Form 1200 (04.99)4 should continue to be used, because the designation-fee arrangements in its Sections 10 and 12 (no ceiling) still apply to them. The last such applications for which international preliminary examination has been requested and no priority has been claimed will enter the European phase in January 2002 (June 1999 + 31 months).

Old Form 1200 (version 04.99) will remain available as usual throughout the transitional period, and will be marked accordingly in the next reprint.

3. Explanation of the changes in new Form 1200

3.1 Amended Sections 10 and 12 (ceiling on designation fees)

Since amendment of Article 2, No. 3, RFees, payment of seven times the designation fee covers all EPC contracting states also for international applications filed from 1 July 1999 onwards, provided they were already designated in the application as filed (Rule 4.1(a)(iv) PCT). Sections 10 and 12 have been adjusted to take this into account. For direct European applications, the Request for Grant form (Form 1001)5 already did so. Because of the time-lag leading up to entry into the European phase (EPO as designated or elected Office), the amendment will only start to affect international applications from March 2000.

On entry into the European phase, the applicant indicates in Section 10 the EPC contracting states for which he intends to pay the designation fees because he really does want his European patent to cover them.

New Section 10.1 (version 03.00) is for applicants who on entry into the European phase wish to pay seven times the amount of the designation fee, in which case they are considered to have paid the fee for all EPC contracting states designated in the international application. Neither in Form 1200 nor upon payment are further details required, because the EPO already knows which EPC contracting states were designated in the international application. There is accordingly no longer any need for a list of all the EPC contracting states (as per Section 10.1 of Form 1200, version 04.99), by means of which applicants were able to indicate for which states they were paying the designation fees. Now a new footnote to Section 10.1 lists the EPC contracting states at the time of printing, for information only.

However, if applicants wish to pay fewer than seven designation fees on entry into the European phase, they should indicate, in the spaces now provided in Section 10.2, the states for which they are paying. As in the past, this indication, in conjunction with the further declaration at the bottom of Section 10.2, will make it easier to ensure that designation fees in such cases are properly entered in the books and to avoid unnecessary communications under Rules 85a (1) and 69(1) EPC where applicants are no longer interested in patent protection for certain states designated in the international application and intentionally do not pay the designation fee6.

Section 12 now contains references to Sections 10.3 and 11 to make it clear how the automatic debiting procedure is to be applied for the payment of designation and extension fees.

3.2 Amended Section 7

Where a translation of the previous application into an EPO official language is required, a declaration may be submitted that the international application as originally filed is a complete translation of the previous application (Rule 38(5) EPC, new version). There is now a box in Section 7 for applicants who find it more convenient to make this declaration at the time of entry into the European phase (Legal Advice No. 19/997).

3.3 New Form 1200 also takes account of the EPC amendments effective from 1 March 20008, and includes minor editorial amendments.

3.4 The Notes to the form have been amended accordingly.