INFORMATION FROM THE EPO
Notice from the European Patent Office dated 23 October 2003 concerning Euro-PCT applications claiming priority from a first filing in a State party to the WTO/TRIPS Agreement but not to the Paris Convention for the Protection of Industrial Property
In J 9/98 and J 10/98 (OJ EPO 2003, 184), the Legal Board of Appeal referred the question to the Enlarged Board of Appeal of whether the applicant of a European patent application, which was originally filed as a Euro-PCT application, is entitled in view of the TRIPS Agreement to claim priority from a previous first filing in a State which was neither at the filing date of the previous application nor at the filing date of the Euro-PCT application a member of the Paris Convention for the Protection of Industrial Property but was, at the filing date of the previous first filing, a member of the WTO/TRIPS Agreement. The case is pending under reference Nos. G 2/02 and G 3/02.
Under the existing practice of the EPO such priorities do not meet the requirements of Article 87 EPC. Pending a decision of the Enlarged Board of Appeal in this case, the EPO will, when a Euro-PCT application enters the regional phase, check whether the decision of the Enlarged Board of Appeal is relevant for this application. If this is the case, the applicant will receive a communication from the EPO in which he will be invited to declare whether the start of substantive examination should be delayed until after the Enlarged Board of Appeal has taken its decision. If the applicant does not opt for delaying substantive examination, substantive examination will be carried out on the basis of the EPO's existing practice.