Pages 586-590

INFORMATION FROM THE EPO

Notice dated 1 December 2001 concerning amendments to the Implementing Regulations to the European Patent Convention and the Rules relating to Fees

In its decision of 28 June 2001, the Administrative Council of the European Patent Organisation amended the EPC Implementing Regulations and the Rules relating to Fees1. The amendments enter into force on 2 January 2002.

Rule 107 EPC

1. The addition to the heading - "Requirements for entry into the European phase" - identifies the rule's subject-matter more clearly.

New uniform time limit of 31 months for entry into the European phase before the EPO

2. In the body of the rule, the first paragraph has been amended: the differing time limits which currently apply to a Euro-PCT application entering the European (regional) phase are replaced by a uniform period of thirty-one months from the date of filing, or (if priority has been claimed) from the earliest priority date, within which the applicant must perform the acts listed in the unchanged sub-paragraphs (a) to (h).

3. The new arrangement, which applies from 2 January 2002, means that

• for effective entry into the European phase the applicant now always2 has to observe the 31-month time limit for meeting the prescribed requirements, rather than the present 21 months, and
• the EPO must not examine or process an international application prior to expiration of the new uniform time limit of thirty-one months from the date of filing or, if priority has been claimed, from the earliest priority date (Article 23(1) PCT), regardless of whether it is acting as designated Office (under PCT Chapter I) or as elected Office (under PCT Chapter II).

Transitional arrangements

4. Under the transitional arrangements, the new uniform 31-month time limit applies to all international applications for which, on 2 January 2002, the acts prescribed under Rule 107(1) EPC have not yet been validly performed and the time limit for doing so under Rule 107(1) EPC in its present form has not yet expired.

Early entry into the European phase

5. On the express request of the applicant, the EPO may begin processing an international application before expiry of the old 21-month time limit (Article 23(2) PCT). Once the new arrangements enter into force on 2 January 2002, such a request will be deemed to have been made if the applicant has fully satisfied all the requirements for European phase entry before the old 21-month time limit has expired. If the applicant has not met all these requirements, the EPO will not begin processing the application until the new uniform 31-month time limit has expired.

NB: Continued validity of the 20-month time limit before other designated Offices

6. From 2 January to 1 April 2002, the new uniform time limit of 31 months applies only to entry into the European phase before the EPO. Before all other designated Offices, applicants must continue to observe the short time limit of 20 months3 under Article 22 PCT for entry into the appropriate national (regional) phase at least until 1 April 2002 (see point 7 below), unless they have requested international preliminary examination before expiry of 19 months from the earliest priority date, thereby extending the period for national phase entry to 30 months.

7. In its decision of 4 October 20014, the Assembly of the PCT Union has now also amended Article 22(1) PCT. With effect from 1 April 2002, the time limit for entry into the national (regional) phase has been globally extended from 20 months to 30 months. Designated Offices may however continue to apply the old time limit for a transitional period (until their national laws have been adapted); WIPO's International Bureau will in due time announce which Offices are concerned5.

Form 1200

8. When the amended rule enters into force on 2 January 2002, a new version of Form 1200 will be available6. Applicants are strongly advised to switch to the new form.

Rule 108 EPC

9. Rule 108 EPC previously dealt only with the consequence of non-payment of the national fee. In future it will also cover the consequences of non-fulfilment of other basic requirements for entry into the European phase, which used to be governed by various PCT and EPC provisions. The rule's heading has been modified accordingly.

10. Under the extended Rule 108(1) EPC, the European patent application is now also deemed to be withdrawn if either the request for examination or the translation of the international application is not filed in due time, or if the search fee is not paid in due time, or if no designation fee is paid in due time.

11. The new paragraph 3 is a special provision designed to replace the old Rules 85a, 85b and 69 EPC. In future the EPO will be able to close a Euro-PCT file after sending a single communication if the applicant has no interest in embarking on the European phase.

12. The primary aim of this amendment is to establish a more efficient procedure, which is nevertheless secure for applicants, to cover cases where acts prescribed under Rule 107(1) EPC are not performed in due time. In such cases a communication will be sent to indicate that the application is deemed to be withdrawn (re designation fees see point 14 - 16 below). At the same time the applicant will be notified that the loss of rights will be deemed not to have occurred if the omitted acts are performed and a surcharge is paid within a two-month period of grace from the date of issuing the communication. If these requirements are met in due time, processing of the application will continue in the normal way; otherwise, the communication noting the loss of rights will become final, and the file will be closed.

13. This new procedure for the first time also covers failure to file the translation of the application in due time. The applicant will have an opportunity to file the translation belatedly on payment of a surcharge, as in the case of failure to pay the prescribed fees in due time; he will no longer have to apply for re-establishment of rights, unless he also fails to make use of the late-filing option.

Designation fees

14. Rule 108(2) EPC is unchanged.

15. A communication pursuant to Rule 108(3) EPC will be sent if, on entry into the European phase, the applicant declares that he intends

• either to pay seven times the amount of the designation fee (EPO Form 1200, Section 10.1)
• or to pay designation fees for up to six states as indicated (EPO Form 1200, Section 10.2)

and, within the 31-month period under Rule 107(1) EPC, actually pays fewer designation fees than indicated or pays designation fees for contracting states other than those indicated.

16. Applicants who opt for the declaration in Section 10.2 of Form 1200 will not be sent a communication under Rule 108(3) EPC for contracting states which they do not indicate. This option simplifies subsequent proceedings. Within the period under Rule 107(1) EPC, however, it will be possible to pay designation fees for contracting states not indicated in this declaration but designated in the international application. Rule 85a(2) EPC does not apply.

Extension fees

17. A request for extension of a Euro-PCT application and the European patent granted in respect of it is deemed to be made if the international application designates the EPO for a European patent and one or more extension states for a national patent (see Guidelines for Examination A-III, 13). An extension fee must be paid for each extension state within the time limit for payment of designation fees under Rule 107(1) EPC. If an extension fee is not paid within this time limit or the period of grace referred to in Rule 85a(2) EPC (with a 50% surcharge), the request for extension is deemed to be withdrawn. No communication pursuant to Rule 108(3) EPC is issued.

Consequent amendments

18. The surcharge under Rule 108(3) EPC has been set at the same level as in the case of Rules 85a and 85b EPC. The maximum surcharge of EUR 715 under item 3b of Article 2 RFees in its present form has been cut to EUR 650. This reflects the fact that a maximum of seven designation fees must be paid for applications with a filing date of 1 July 1999 or later. Thus mathematically the maximum total surcharge would be EUR 674.50; the new maximum surcharge is actually a little lower. The same principle was used to calculate the maximum surcharge of EUR 1 750 under the new item 3c, including a fee of EUR 500 for late filing of the translation of the application. The chosen amount is comfortably less than the mathematical sum of the individual surcharges.

19. Rules 85a and 85b EPC, no longer being applicable to Euro-PCT applications (having been replaced by Rule 108(3) EPC as a special provision), have been modified by deletion of the references to Rule 107(1)(c), (d), (e) and (f).

Transitional arrangements

20. Rule 108 EPC and item 3c of Article 2 RFees, each as amended, apply to all international applications for which, on 2 January 2002, the acts prescribed in Rule 107(1)(a) and (c) to (f) EPC have not been performed and the time limit provided for under that rule has not yet expired.