Pages 447-473

INFORMATION FROM THE EPO

Notice from the European Patent Office dated 21 July 2006 concerning revision of Form 1200 (Entry into the European phase)

The EPO has revised its Form 12001 (Entry into the European phase). The revised form and amended Notes are reproduced below.

Applicants are advised to use the new (05.06) form in future for international applications entering the European phase. They may however continue to use the old (12.03) version without prejudice to their rights.

Updated Form 1200 incorporates the changes as regards EPC contracting and extension states which have taken place since 2004, and a redesigned layout brings out the individual sections more clearly and makes the form easier to complete. There are no plans for a Word version in addition to the editable one in PDF format.

The changes made in the updated form are explained below.

1. Substantive amendments

1.1 Section 1 – Applicant

An extra box enables applicants to indicate if details of further applicants have been given on an additional sheet.

Reason: Under Rule 26.2bis(b) PCT, objections are no longer always raised in the international phase if there are multiple applicants and information about address, nationality and residence/place of business is missing. The designated Office can however require that this information be provided (Rule 51bis.1(a)(vii) PCT).

1.2 Section 2 – Representative's address

The reference to "telex" has been deleted, as the EPO no longer uses this form of communication (OJ EPO 2004, 374).

1.3 Section 3 – Authorisation

"Individual authorisation" has been replaced by "Authorisation", in line with the terminology used in the EPC and EPO Forms 1001, 1003 and 1004.

1.4 Section 4 – Request for examination

A new sub-section 4.2 for the request for examination (possibly in an admissible non-EPO language) has been added:

4.2 Waiver of the applicant's right to an invitation under Article 96(1) EPC (re maintaining the request for examination). This is in line with Section 5a of the updated request for grant (EPO Form 1001, 07.05).

1.5 Section 6 – Documents intended for proceedings before the EPO

6.2 Deletion of instruction "(Such annexes must always be filed)".

1.6 Section 9 – Nucleotide and amino acid sequences

The first paragraph (sub-section 9.1) now also refers to Rule 27a EPC, on which the relevant decision of the EPO President dated 2 October 1998 is based.

1.7 Section 10 – Designation fees

The box next to the second paragraph in sub-section 10.2 (designation of fewer than seven countries) makes it clear that this is a separate declaration. By crossing this box the applicant waives a communication under Rule 108(3) EPC for the contracting states not indicated under 10.2.

(a) If he makes such a waiver, Rule 108(4) EPC applies, ie designation fees may still be validly paid within two months of expiry of the time limit under Rule 107(1)(d) EPC, provided that within this period a surcharge is paid.

(b) If he does not make such a waiver, a loss of rights is notified to him in respect of those contracting states for which no designation fees were paid within the time limit under Rule 107(1)(d) EPC. He then has two months as from that notification to complete the omitted act and pay a surcharge (Rule 108(3) EPC, second sentence).

Footnotes 1 and 2 update the list of contracting states.

1.8 Section 11 – Extension of the European patent

It is now expressly stated that extension requests are deemed withdrawn if the fee is not paid in time.

Footnote 3 now also indicates when each extension agreement entered into force and (where the extension state has since become a contracting state to the EPC) expired. The agreements only cover applications filed during the periods specified.

2. Layout and editorial amendments

2.1 Frames have been inserted for a receipt stamp and the address for correspondence.

2.2 Text frames now cover all three languages, giving applicants more room when completing the form.

2.3 Sections 4, 7 and 9 now include sub-sections numbered as per the Notes on Form 1200.

2.4 As in Form 1001, there is now space at the bottom of each page for the representative's (or applicant's) reference.

2.5 The footnotes for the contracting and extension states (see Sections 10 and 11) are now presented together as endnotes.

3. Notes on Form 1200

The revised Notes reflect the above amendments.

The embedded forms within this article are for technical reasons only available in the PDF version of this article.