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INFORMATION FROM THE EPO

Notice from the European Patent Office dated 20 September 2007 on implementation of the transitional provisions of the EPC 2000 applicable during the transition from the EPC 1973 to the EPC 2000

The revised version of the European Patent Convention ("EPC 2000") will enter into force on 13 December 2007 at the latest.1 The following gives a brief summary of those transitional provisions that will be particularly important in practice (see OJ EPO 2007, Special Edition No. 1, 196 ff) and describes how they will be implemented by the EPO.

1. Provided that this is expressly requested on filing, a European patent application filed no more than one month before the date of entry into force of the EPC 2000 and meeting the requirements of Article 80 in conjunction with Rule 40 EPC 2000 will be accorded the date of entry into force of the EPC 2000 as the date of filing.

The same will apply to divisional applications (provided, of course, that the parent application is still pending on the date of entry into force of the EPC 2000). The date on which a divisional application is filed will be decisive in establishing whether it is subject to the filing and formal requirements under the EPC 2000 or those under the old law; the filing or priority date of the parent application is irrelevant in this connection.

2. Priority from a previous application filed in a member of the WTO may also be claimed for a European or Euro-PCT application with a filing date on or after the date of entry into force of the EPC 2000.

3. Prior rights for European patent applications filed on or after the date of entry into force of the EPC 2000 are all earlier European patent applications, within the meaning of Article 54(3) EPC 2000, and international patent applications meeting the requirements laid down in Article 153(3) or (4) and Rule 165 EPC 2000. In the case of applications filed on or after the entry into force of the EPC 2000, it is no longer relevant whether the same contracting states are designated in the conflicting earlier application.

The provisions currently laid down in Article 54(3) and (4) in conjunction with Rule 23a EPC 1973 will continue to apply to European patent applications filed and patents granted before the entry into force of the EPC 2000.

The decisive factor in establishing whether the old or new provisions apply is the filing date of the application or patent to be examined, not the date of priority.

4. In the case of failure to comply with a time limit and loss of rights, the Office will already begin to apply the remedies provided for in the EPC 2000 during the transitional phase, if they are more favourable to the applicant than the EPC 1973 provisions and if this is possible under the transitional provisions of the Revision Act.

In accordance with that principle, in those cases in which the EPC 2000 provides for further processing of the application under Article 121 and Rule 135 EPC 2000 in the event of failure to comply with a time limit, the EPO will send a modified communication concerning the loss of rights even before the EPC 2000 enters into force, if the two-month period for a request for further processing expires on or after the date of entry into force of the EPC 2000. This means that the remedy of further processing under the EPC 2000 will be available for all applications pending on the date of entry into force of the EPC 2000 (see Article 1(5) of the Decision of the Administrative Council of 28 June 2001 on transitional provisions, OJ EPO 2007, Special Edition No. 1, 197).

5. Under Rule 53(3) EPC 2000, a translation of the priority document will be required only if the earlier application is not drafted in one of the EPO's official languages and the validity of the priority claim is relevant to the assessment of the invention's patentability.

Where the applicant has been asked to file a translation of the priority document before the entry into force of the EPC 2000, a distinction will be made between two cases during the transitional phase:

(a) A request under Rule 38(5) EPC 1973 will be issued where the translation of the priority document is required for the substantive examination of an application. If the applicant has received such a request, a translation of the priority document must be filed even if the prescribed period expires after entry into force of the EPC 2000. The same will apply where the applicant has failed to comply with such a request under Rule 38(5) EPC 1973 and a communication under Rule 41(1) EPC 1973 has been issued as a result.

(b) Where, however, the translation of the priority document has been requested in connection with a communication under Rule 51(4) EPC 1973 or a subsequent communication under Rule 41(1) EPC 1973 and the prescribed period expires after the entry into force of the EPC 2000, there will no longer be a need to furnish the translation.

6. The possibility of pursuing non-unitary applications on entry of international applications into the European phase will be limited under Rule 164 EPC 2000. Once the EPC 2000 has entered into force, the EPO will cease to send communications under Rule 112 EPC 1973.

7. It is planned to withdraw all reservations relating to PCT provisions when the EPC 2000 enters into force.

8. From the date of entry into force of the EPC 2000, applications for limitation or revocation of a European patent under Articles 105a to 105c and Rules 90 to 96 EPC 2000 may be filed even for patents already granted under the EPC 1973.

9. Petitions for review of a board of appeal decision under Article 112a and Rules 104 to 110 EPC 2000 may be filed in respect of decisions taken by the boards of appeal after the entry into force of the EPC 2000.

More detailed information on the transitional phase can be found in "Implementation of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000", which is available (in English only) at http://www.epo.org/patents/law/legal-texts/InformationEPO/archiveinfo/20070912.html.