Pages 126-131

INFORMATION FROM THE EPO

Notice from the European Patent Office dated 22 December 2004 concerning the introduction of electronic publication of European patent applications (A-documents) and European patent specifications (B-documents) as well as changes to Rules 51(4), 54 and 108 EPC

In its decision of 9 December 20041, the Administrative Council of the European Patent Organisation amended the EPC Implementing Regulations and approved amendments to the procedure concerning the publication of European patent documents.

This notice provides details of these amendments and the applicable transitional provisions.

I. Electronic publication

1. Since the deployment of the ESPACE® technology in the 1990's, the number of copies of each patent document printed has fallen constantly and rapidly. The Internet and magneto-optical media are now the main publication means used by patent offices to fulfil their legal obligation to publish.

A publication server has been available since 1 January 2005 on which all European patent applications (EP-A) and European patent specifications (EP-B) published by the Office are offered every week. These documents are fully downloadable in SGML/XML and PDF formats.2

The publication server is accessible via a dedicated portal on the EPO homepage, or directly under

https://publications.european-patent-office.org

This service is free of charge.

It has therefore been decided to discontinue the publication of these documents on paper (see Decision of the President of the EPO dated 22 December 2004 concerning the form of publication of European patent applications, European search reports and European patent specifications3). As from 1 April 2005, applicants will no longer receive a paper copy of the patent application. A copy of the patent specification will only be sent automatically to patent proprietors if the communication under Rule 51(4) EPC was issued before 1 April 2005 (see below). In this context it was necessary to amend Rule 54 EPC.

Subscriptions for paper copies of the complete collection or according to IPC classes ceased to be available at the end of 2004.

2. According to current Rule 54(1) EPC, the EPO issues a certificate for a European patent to the proprietor with the specification of the European patent as an annex. Once paper publication ceases, no further patent specifications will be issued systematically in paper form. Thus, no patent specification will be annexed to the certificate for a European patent.

Under Rule 54 EPC as amended and the Decision of the President of the EPO dated 22 December 2004 concerning the content and form of the certificate for a European patent, and the procedure for issuing it4, the certificate for the European patent will continue to be supplied to the proprietor in paper form. If there is more than one proprietor, a certificate will be issued to each of them. If specially requested, each proprietor will receive the certificate for the European patent together with a copy of the patent specification. This request is free of charge if it is filed within the time limit under Rule 51(4) or under Rule 58(5) or (6) EPC. The proprietor may also request that a duplicate copy of the European patent certificate with the patent specification attached or a certified copy of the patent specification be supplied to him on payment of an administrative fee. Further copies of the European patent specification are available on request from the Vienna sub-office on payment of the prescribed fee.

The new text of the certificate for a European patent gives the number of the European patent and refers to the invention described in the specification and the contracting states designated in it. This is followed by the name and address of the proprietor of the patent. Where there is more than one proprietor, all names are mentioned. The reference to the annexed patent specification has been deleted.

The same applies in respect of the certificate for the European patent in amended form.

3. Rule 54 EPC as amended and the corresponding decisions of the President of the EPO will enter into force on 1 April 2005. The new Rule will apply to all applications and patents in respect of which no communication under Rule 51(4) or 58(5) EPC has been issued at that date.

4. Applicants are hereby informed that the above changes do not affect the time of completion of the technical preparations for publication of the application (Rule 48(1) EPC) or of the patent specification (Rule 53 EPC). Applicants are further informed that, contrary to past procedure, any changes made after completion of the technical preparations (eg transfer of rights, withdrawal of designations) will no longer be noted by hand on the patent specification annexed to the certificate, but will result in the issue of a corrected title page of the specification. This new procedure concerns all patents granted on or after 1 April 2005, irrespective of the date of issue of the Rule 51(4) EPC communication.

II. Amendment of Rule 51(4) EPC

According to Rule 51(4) EPC as amended, the time limit set in the communication under Rule 51(4) EPC will be four months without possibility of extension for all applications.

Currently, the applicant has a period of four months in which to fulfil the requirements mentioned in Rule 51(4) EPC. This period can be extended to six months without the need for reasons. Once these six months have expired, the applicant can further extend the time limit by availing himself of further processing under Article 121 EPC.

While a lengthy period may in certain situations be justified, namely where the applicant or attorney has to deal with objections raised by the examining division and has to find solutions overcoming these objections, possibly necessitating discussions with several parties at different locations, such a lengthy period is not necessary once the Rule 51(4) EPC communication has been issued. Moreover, at this stage third parties, who now know that a patent can be granted, have an interest in learning as soon as possible in which states the patent will be validated, and the EPO has an interest in closing the file.

A shortening of the maximum available time limit is therefore justified, as the tasks mentioned above can also be performed shortly after receipt of the Rule 51(4) EPC communication.

As the time limit will still be a time limit set by the Office, further processing will remain available. Thus, if an applicant has genuine problems meeting the time limit, he could still wait for a loss-of-rights communication and request further processing.

It may in certain cases be necessary to submit a translation of the priority document within the Rule 51(4) EPC time limit. However, applicants should not delay translation of the priority document until this stage of the proceedings. If the translation of the priority document is not received within the Rule 51(4) EPC time limit, applicants will continue to receive a communication under Rule 41(1) EPC.

Rule 51(4) EPC as amended will enter into force on 1 April 2005 and apply to all applications for which no communication under present Rule 51(4) EPC has been issued at that date.

III. Amendment of Rule 108 EPC

The purpose of Rule 108 EPC as amended is to reintroduce for Euro-PCT applications entering the European phase a two-month period for the payment of designation fees with a surcharge corresponding to the period of grace under Rule 85a(2) EPC.

Designation fees for Euro-PCT applications entering the European phase must be paid within the time limit pursuant to Rule 107(1)(d) EPC. This time limit is either thirty-one months from the filing date (or, if priority has been claimed, from the priority date) or six months from the date of publication of the international search report, if the latter period expires later. If a designation fee is not paid or no designation fees at all are paid within this time limit, the designation/application is deemed to be withdrawn and the applicant receives a communication of loss of rights pursuant to Rule 108(3) EPC. If the applicant pays the designation fees and a surcharge within two months of notification of the communication of loss of rights, the loss of rights is deemed not to have occurred (see Rule 108(3) EPC). However, a communication of loss of rights is not issued if the applicant has dispensed with it. This is generally done by means of a statement to this effect (pre-printed on EPO Form 1200 - Entry into the European phase) for cases in which the applicant intends to pay fewer than seven designation fees. Hence, where such a statement has been made, it is not possible for any loss of rights to be remedied because there is no time limit comparable to the grace period of Rule 85a(2) EPC. Moreover, further processing and re-establishment of rights are excluded in respect of the time limit under Rule 107(1)(d) EPC.

The practical consequence of this is that applicants who, having made the statement in EPO Form 1200, pay fewer than seven designation fees prior to expiry of the applicable time limit have no opportunity to add further designations within a grace period. They do however have this opportunity in respect of European applications under Rule 85a(2) EPC.

Equal treatment of European applications and Euro-PCT applications is now ensured by the introduction of a new paragraph 4 in Rule 108 EPC. If the applicant has dispensed with a communication of loss of rights under Rule 108(3) EPC, he will still have a period of two months from expiry of the time limit under Rule 107(1)(d) EPC within which the loss of rights can be remedied by payment of designation fees with a surcharge. This period corresponds to the period of grace under Rule 85a(2) EPC.

Rule 108 EPC as amended will apply to all international applications entering the European phase for which, on 1 April 2005, not all designation fees as prescribed in Rule 107(1)(d) EPC have been validly paid and the time limit provided for under that Rule has not yet expired.