Article 106

EUROPEAN PATENT OFFICE

Information from the EPO

Notice from the European Patent Office dated 10 December 2024 concerning the implementation of the 14th package of EU sanctions against Russia in EPC-related proceedings and the associated amendments to the Implementing Regulations to the EPC

1. Having regard to Article 5s(3) of Council Regulation (EU) No 833/2014 of 31 July 2014 concerning restrictive measures in view of Russia's actions destabilising the situation in Ukraine, as amended by Regulation (EU) 2024/1745, the Administrative Council decided to amend Rules 39, 36 and 160 EPC by decision CA/D 13/24 of 10 December 2024.1

2. New Rule 39(2a) EPC provides that the designation in a European patent application of EPC contracting states which are also EU member states will be deemed to be withdrawn if the applicant or any co-applicant is a person falling within the scope of the specific restrictive measure laid down in Article 5s(3) of Regulation (EU) No 833/2014 as amended. The provision does not apply to nationals of an EPC contracting state or to natural persons having a permanent or temporary residence permit in one of the EPC contracting states, and this exception ensures the equal treatment of nationals and residents of all EPC contracting states.

3. On receipt of a European patent application, the EPO will examine whether it satisfies the requirements for the accordance of a date of filing. If a date of filing can be accorded but the applicant or at least one co-applicant is subject to new Rule 39(2a) EPC, the designation of EU member states will be deemed withdrawn with effect from the date of filing. The designation of contracting states that are not members of the EU will not be affected. New Rule 39(2a) EPC does not release the applicants concerned from the obligation to pay the designation fee in accordance with Rule 39(1) EPC and, if it is not paid on time, the application will be deemed to be withdrawn (Rule 39(2) EPC). Without prejudice to Rule 37(2), second sentence, EPC and notwithstanding new Rule 39(2a) EPC, the designation fee will not be refunded.

4. Where the EPO takes the view that new Rule 39(2a) EPC applies, it will first inform applicants of the impending loss of rights, in line with its established practice in view of the right to be heard under Article 113 EPC. If, after taking into account any comments provided by applicants in response, it still regards new Rule 39(2a) EPC as applicable, it will then issue a communication under Rule 112(1) EPC on the loss of rights, informing applicants of the deemed withdrawal of the designation of the EU member states. Applicants who consider the EPO's finding to be inaccurate will be able, within two months of the communication, to apply for a decision on the matter (Rule 112(2) EPC).

5. In view of new Rule 39(2a) EPC, applicants are reminded that they are required under Rule 41(2)(c) EPC to indicate in the request for grant their address and nationality(ies) and the state(s) in which their residence(s) or principal place of business is located. Failure to provide this information on time is a ground for refusing the European patent application (Article 90(5) and Rules 57(b) and 58 EPC). Euro-PCT applications will likewise be refused if the information about address, nationality(ies) or the state(s) of residence(s) or principal place of business is missing in respect of any applicant at the time of entry into the European phase before the EPO and is not furnished after an invitation to do so from the EPO (Rule 163(4) and (6) EPC).

6. New Rule 36(5) EPC provides that new Rule 39(2a) EPC also applies to divisional applications.

7. For Euro-PCT applications, if an applicant is a person falling within the scope of the specific restrictive measure laid down in Article 5s(3) of Regulation (EU) No 833/2014 as amended, the designation of EPC contracting states which are also EU member states will be deemed to be withdrawn on entry into the European phase, i.e. once the processing by the EPO as designated or elected Office has started (new Rule 160(3)EPC in conjunction with new Rule 39(2a) EPC). The deemed withdrawal will have effect from the date of entry into the European phase.

8. The new provisions entered into force on 16 December 2024 and apply to European patent applications filed on or after 25 June 2024, international patent applications under the PCT entering the European phase before the EPO on or after 25 June 2024 and divisional European patent applications received on or after 25 June 2024. The precautionary stay of proceedings for applications already pending on 25 June 2024 that were filed or co-filed by natural or legal persons falling under the scope of the EU sanctions was lifted on the entry into force of the amendments to the Implementing Regulations, and proceedings for these applications have consequently been resumed.

9. New Rules 39(2a), 36(5) and 160(3) EPC will be automatically repealed, i.e. cease to have effect, on the date on which Article 5s(3) of Regulation (EU) No 833/2014 ceases to have effect.