Pages 406-408

INFORMATION FROM THE EPO

Notice from the European Patent Office dated 25 April 2006 concerning the withdrawal of the application to prevent publication¹

1. This Notice replaces the previous Notice dated 14 December 1992 (OJ EPO 1993, 56).

2. Under Rule 48(2) EPC the European patent application will not be published if it is finally refused, withdrawn or deemed to be withdrawn before the termination of the technical preparations for publication2. In the past, the point of completion of the technical preparations for publication of the application was fixed as being the end of the day that comes seven weeks before expiry of the 18th month from the date of filing or the (earliest) date of priority3. Developments in publication technology have now made it possible to shorten this period to five weeks4. If the declaration of withdrawal is filed with the EPO by such date at the latest, the applicant has the right to demand that publication should not take place.

3. The Legal Board of Appeal decided (decision J 5/81, OJ EPO 1982, 155) that the European Patent Office is not obliged to publish an application which is withdrawn after the completion of the technical preparations. The Office therefore endeavours to prevent publication in such cases as well, providing the actual circumstances still so permit. This is checked on a case-by-case basis by the EPO. In practice, it has been shown over the last few years that publication can often be prevented if the declaration of withdrawal is received by the EPO at the latest two weeks before the scheduled date of publication. However, the Office cannot give a firm assurance that this will be possible, nor indeed can it specify any fixed time limits within which withdrawal after completion of the technical preparations will still prevent publication.

The communication from the EPO under Article 67 EPC (EPO Form 1133), which is issued about four weeks before the scheduled date of publication, should be regarded by the applicant as the final notification of the date on which the application is to be published. If the applicant intends to withdraw the application in order to prevent its publication under Article 93 EPC, he must react immediately, since the technical preparations will already have been completed, and beyond this point it will become increasingly difficult to prevent publication. It must be emphasised that the communication under Article 67 EPC is merely a courtesy service provided by the EPO; the Office cannot be held liable for any failure to issue the communication. If the declaration of withdrawal is not received until after the technical preparations have been completed, it may still be possible to prevent publication of the application itself pursuant to Article 93 EPC, but the procedure for publishing the mention thereof in the European Patent Bulletin (Article 129(a), Rule 92(1) EPC) will already have reached a stage where such latter publication can no longer be stopped. The (erroneous) mention will subsequently be revoked by publishing an announcement in Part 1.8(2) of the Patent Bulletin and therefore does not give rise to the possibility, under Article 128(4) EPC, of inspecting the files relating to the application.

4. In this connection it is pointed out that the application may also be withdrawn on condition that it is not published in accordance with Article 93 EPC (see decision J 11/80 of the Legal Board of Appeal, reasons for the decision, point 4, OJ EPO 1981, 141). If the EPO finds that the publication of the application can no longer be stopped, it informs the applicant accordingly and tells him that the declaration of withdrawal is no longer valid and that the procedure will continue. If the applicant no longer wishes to pursue the application, he must withdraw it again unconditionally.

5. The applicant can contribute in the following ways towards ensuring that a declaration of withdrawal intended to prevent publication is immediately recognised as such, so that the EPO can take the necessary steps without delay.

5.1 The declaration of withdrawal should be submitted separately and not combined with other declarations addressed to the Office.

5.2 The intention of preventing the forthcoming publication should be clearly indicated in the submission.

5.3 The declaration of withdrawal may be filed by fax. Written confirmation is, as a rule, no longer required (see Article 4 of the Decision of the President of the EPO dated 6 December 2004 on the use of facsimile for filing patent applications and other documents, OJ EPO 2005, 41, and point 4.1 of the Notice from the EPO dated 6 December 2004, OJ EPO 2005, 45).