A Guide to the European Patent Convention 2000 (2014)

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A Guide to the

EPC 2000 A Practitioner ’s Guide to the Law

Nicholas Fox 2014 Edition

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A Guide to the

EPC 2000 A Pr a c t i t i on e r ’ s G u i d e t o t h e L aw

2014 Edition

Nicholas Fox M.A.(Cantab.), M.Sc., LL.M. Solicitor European Patent Attorney Chartered Patent Attorney

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All rights reserved.

The text of the European Patent Convention, Implementing Regulations, Protocol on Recognition and the Rules Relating to Fees appearing in this book are all reproduced courtesy of the European Patent Office.

The background map in the cover design is adapted from a map of Europe appearing in the CIA World Factbook.

No part of this publication may be reproduced or transmitted in any form or by any means, or stored in any retrieval system of any nature without prior written permission, except for permitted fair dealing under the Copyright, Designs and Patents Act 1988, or in accordance with the terms of a licence issued by the Copyright Licensing Agency in respect of photocopying and/or reprographic reproduction. Application for permission for other use of copyright material, including permission to reproduce extracts in other published works, shall be made to the Chartered Institute of Patent Attorneys. Full acknowledgement of author, publisher and source must be given. © 2007-2014 Nicholas Fox The moral rights of the author have been asserted.

Published and placed on sale by: The Chartered Institute of Patent Attorneys 95 Chancery Lane London WC2A 1DT United Kingdom Tel: +44 207 405 9450 Fax: +44 207 430 0471 Website: www.cipa.org.uk Printed and bound by Berforts Information Press Ltd; www.berforts.co.uk ISBN 978-0-903932-59-2

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Preface to the 2014 Edition Unusually, the EPC was modified twice in 2014.

The first set of amendments came into effect at the beginning of April. These changes primarily related to the EPO fee structures. The EPO amended its previous practice of providing all applicants domiciled or resident in contracting states with official languages other than English, French and German a 20% fee reduction if documents were filed in a non-EPO official language. Instead, with effect from 1 April 2014, the discount has been increased to 30% but is now only available to natural persons, small and medium-sized enterprises, and non-profit organisations, universities or public research organisations. In addition, the reduction also now only applies to the filing and examination fees paid by eligible applicants.

The rule change greatly increases the complexity of determining whether or not a fee discount is available. What constitutes a small or medium-size enterprise requires an applicant to refer to EU law, which defines such an enterprise as one that employs fewer than 250 persons, has an annual turnover not exceeding €50m and/or an annual balance sheet total not exceeding €43m and for which no more than 25% of the capital is held directly or indirectly by another company that also fulfils the same criteria. Although the EPO has provided some guidance, the boundaries of what constitutes a non-profit organisation, university or public research organisation are not entirely clear and uncertainties for these types of applicants will still exist.

In practice, the rule change significantly restricts the scope of the fee discounts available for applicants domiciled or resident in contracting states with official languages other than English, French and German. Larger companies based in those countries will now have to pay higher fees and all applicants in those countries will have to pay higher fees to oppose the grant of third party patents or to file an appeal. When filing or paying examination fees on behalf of small or medium-size enterprises, patent attorneys will have to know about a client’s balance sheet and the number of its employees as well as the current state of its corporate ownership.

The other notable change that came into effect at the beginning of April was the abandonment of the requirement that divisional applications must be filed within two years of the first official letter being issued by the Examining Division. Instead, the EPO has reverted to its pre-2010 practice of allowing divisional applications to be filed at any time whilst a parent application is pending and has introduced an extra fee for filing second and subsequent generation divisional applications. For a second generation divisional application (i.e. a divisional of a divisional), the filing fee is increased by €210, for a third generation divisional application, the filing fee is increased by €420, for a fourth generation divisional, the filing fee is increased by €630, and the filing fee is increased by €630 for any division of the fifth or subsequent generation.

The two-year divisional deadline, when it was introduced in 2010, caused an unnecessary flood of divisional patent applications. Shortly after its introduction the rules needed further amendment to clarify which official letters from the EPO would act to trigger the two-year deadline. It is not always possible to know in advance whether divisional applications are required and the existence of the deadline caused significant problems where an applicant sought to amend its claims later on during prosecution to an area that an examiner considered to be unsearched subject-matter. The change to divisional practice is to be welcomed.

The changes that come into effect at the beginning of November concern the supplementary searches of Euro-PCT applications. The rules are being amended to bring iii

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the EPO’s approach to supplementary searches more into line with the EPO’s approach to searching direct filed applications.

If the EPO considers that the claims which are to serve as the basis for the supplementary European search relate to more than one invention, initially the EPO will draw up a partial supplementary search report in respect of the first invention or group of inventions in the claims and issue a partial search report together with an official letter setting a deadline for further search fees to be paid. Further searches are then conducted only to the extent that the further fees are paid.

If a PCT application is searched by the Austrian, Nordic, Finnish, Swedish or Spanish Patent Offices in the international phase, normally the EPO dispenses with a supplementary European search report. However, if the Examining Division considers the application documents that are to serve as the basis for examination claim an invention that was not searched in the International Phase, the Examining Division will now issue an official letter setting a deadline for paying search fees in respect of any such claims that are to be searched. In such cases, the normal EPO approach to applications containing multiple independent claims in the same claim category or where the claims are considered unsearchable by the EPO will apply and the EPO will only conduct a supplementary search to the extent fees are paid and searchable subject matter is identified by an applicant.

Two decisions of the Enlarged Board of Appeal have been issued since the last edition of this book. In G1/11, the Board of Appeal ruled on a technical issue deciding that a Technical Board of Appeal rather than a Legal Board of Appeal has responsibility to determine an appeal against a decision of the Examining Division refusing to refund search fees paid under Rule 64 (2) EPC. In G1/12 the Enlarged Board ruled that it was permissible to correct the name of an appellant appearing in a Notice of Appeal where the wrong name had been entered in error.

The laws and fees in this edition are correct as of 1 November 2014.

Nicholas Fox, St Swithin’s Day 2014

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Preface to the First Edition The EPC 2000 is the first major revision of the European Patent Convention in over 30 years. Its reforms are wide-ranging and significant. They draw on elements of the past and present in remaking the European patent system for the future.

The past has provided much of the impetus for change. The limitations of the original Convention have become apparent over the years since the EPO opened its doors in 1978.

The fact that patent proprietors resorted to opposing their own applications revealed the desirability of some form of centralised post-grant amendment system. Although the Enlarged Board of Appeal decision in G9/93 prohibited such self-oppositions, the lack of a suitable post-grant amendment procedure remained. Moreover, the absence of an effective means of correcting Board of Appeal decisions tainted by serious procedural defects or criminal acts was apparent from the facts leading to the Enlarged Board of Appeal decision in G1/97. The new EPC 2000 addresses these failings by providing for post-grant limitation and revocation (see new Articles 105a-c EPC) and petitions for review (see new Article 112a EPC).

Experience has also shown the limitations of the mechanisms for re-establishing rights when time limits are missed. Restitution under Article 122 EPC has always been difficult to obtain due to the strict requirement to show that “all due care” was taken. However, applicants were often forced to rely on the stricter restitutio provisions for minor omissions because the simpler further processing procedure was restricted to use in respect of missed time limits set by the Office which led to an application being deemed withdrawn.

The revised EPC strikes a new balance by making further processing available in respect of almost all time limits during prosecution, while retaining re-establishment of rights under Article 122 EPC as a backstop.

Historic problems arising from the lack of attorney-client privilege for correspondence between professional representatives and their clients, as highlighted in Bristol-Myers Squibb v Rhône Poulenc Rorer (Southern District of New York, 21 April 1999), have been addressed by providing for such privilege under new Article 134a EPC, as supplemented by new Rule 153 EPC. These measures are aimed at protecting client correspondence from disclosure in U.S. court proceedings.

Recent trends have also made changes necessary in order to bring the Convention into line with modern international patent law and treaties. The amended definition of patentable inventions in Article 52 EPC, which now refers to inventions “in all fields of technology,” harmonises this aspect of the EPC with the definition in the first sentence of Article 27 (1) of the TRIPS agreement. Similarly, the definition of priority right in Article 87 EPC has been amended so that priority can be based on filings in WTO countries as well as on filings in countries party to the Paris Convention, as provided by Article 2 of TRIPS. Of equal importance are the amendments to Articles 14 and 80 EPC and Rules 40 and 56 EPC, which align the EPC with corresponding provisions in the Patent Law Treaty 2000. When the EPC 2000 comes into force, these amendments will enable applicants to file European patent applications in any language and obtain a filing date by merely providing a reference to an earlier application. In addition, if parts of an application are missing on filing, an applicant can make good the omissions and retain the original filing date by showing that the omitted parts appeared in an earlier application from which priority is claimed.

The Convention has also been revised with an eye to the future. Most notably, under amended Article 33 (1)(b) EPC, the Administrative Council may make changes to the v

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Convention in order to align it with international treaties and Community legislation. In addition, Article 87 (5) EPC now simplifies the procedure for recognising new sources of priority rights through the issue of a Presidential Communication. New Article 149a EPC provides for future agreements between the Contracting States and for the EPO’s involvement in them, such as the formation of a common entity for delivering opinions on European and harmonised national patent law. New Article 4a EPC creates a basis for future intergovernmental conferences of the Contracting States leading to agreements beyond the scope of the EPC, along the lines of the ad hoc intergovernmental conferences in 1999 and 2000 which gave rise to the London Agreement on Translations and the European Patent Litigation Agreement. All these changes introduce much-needed adaptability into the EPC. Probably the most noticeable change, however, is the transfer of many of the more detailed provisions of European patent law into the Implementing Regulations. This will make future revision of the EPC far easier since the Implementing Regulations can be amended by the Administrative Council without the need for a full diplomatic conference followed by national ratification. As a practical matter, however, this means that practitioners will need to refer to the Implementing Regulations much more frequently than in the past.

It is to address this need that this book has brought together the text of the EPC articles and the relevant rules, allowing the provisions to be read at once in their proper context without the need to thumb through separate pieces of legislation. The book also extensively cross-references other relevant articles and rules in the EPC and related legislation, enabling practitioners to take their enquiries further where necessary.

The transfer of so many provisions into the Implementing Regulations has resulted in the complete re-numbering of the rules. Undoubtedly, practitioners will soon become accustomed to communications setting out a proposed text for grant under new Rule 71 (3) rather than old Rule 51 (4) or to notifications of loss of rights under new Rule 112 (1) as opposed to old Rule 69 (1). For the foreseeable future, however, it will remain essential to be able to identify corresponding provisions under the old and the new law, particularly when referring to case law decided before the coming into force of the EPC 2000. This book attempts to facilitate this by noting the corresponding provisions under the old law whenever the text of a new rule is printed.

The commentary in this guide is limited to short discussions on how the various provisions of the new EPC interact, together with brief remarks on relevant decisions of the Enlarged Board of Appeal. Rather than providing detailed discussion of case law and practice, the commentary refers to relevant sections of the Case Law of the Boards of Appeal of the European Patent Office (Fifth Edition, 2006), and the new Guidelines for Examination in the European Patent Office (2007), issued by the EPO to accompany the new EPC. The limited references to national law are based on National Law Relating to the EPC (13th Edition), published by the EPO. For more detailed treatment of these topics, readers should refer to practitioners’ works such as the Chartered Institute’s own European Patents Handbook, published by Sweet & Maxwell.

I would like to thank Dave Bradley, the chairman of CIPA’s Textbooks and Publications Committee, for his enthusiastic encouragement in taking this book forward and Iain Ross of the Chartered Institute for all his assistance in the typesetting. Most especially, however, I would like to thank my wife, Angela, for all her assistance in checking and editing the book and her unending support throughout the entire project. Any errors are of course entirely my own.

Nicholas Fox, Midsummer’s Day 2007 vi

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A Guide to the EPC 2000 CONTENTS European Patent Convention 2000 (EPC 2000) Preamble . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 PART I GENERAL AND INSTITUTIONAL PROVISIONS Chapter I General provisions Article 1 Article 2 Article 3 Article 4 Article 4a

European law for the grant of patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 European patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 Territorial effect . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 European Patent Organisation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 Conference of ministers of the Contracting States . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 Chapter II The European Patent Organisation

Article 5 Article 6 Article 7 Article 8 Article 9

Legal status . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 Headquarters . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 Sub-offices of the European Patent Office . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 Privileges and immunities . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 Liability . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 Chapter III The European Patent Office

Article 10 Article 11 Article 12 Article 13 Article 14 Rule 3 Rule 4 Rule 5 Rule 6 Rule 7 Article 15 Rule 9

Management . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 Appointment of senior employees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4 Duties of office . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5 Disputes between the Organisation and the employees of the European Patent Office . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5 Languages of the European Patent Office, European patent applications and other documents . . . . . . . . . . . . . . . . . . . . . . . . . . 5 Language in written proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6 Language in oral proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7 Certification of translations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7 Filing of translations and reduction of fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8 Legal authenticity of the translation of the European patent application . . . . . . . . 8 Departments entrusted with the procedure . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12 Administrative structure of the European Patent Office . . . . . . . . . . . . . . . . . . . . . . 12

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Table of Contents Rule 11 Article 16 Rule 10 Article 17 Rule 8 Article 18 Article 19 Article 20 Article 21 Rule 12 Article 22 Rule 13 Article 23 Article 24 Article 25

Allocation of duties to the departments of first instance . . . . . . . . . . . . . . . . . . . . . 12 Receiving Section . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12 Responsibility of the Receiving Section and the Examining Division . . . . . . . . . . 13 Search Divisions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13 Patent classification . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13 Examining Divisions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13 Opposition Divisions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14 Legal Division . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15 Boards of Appeal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15 Presidium of the Boards of Appeal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15 Enlarged Board of Appeal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17 Business distribution scheme for the Enlarged Board of Appeal and adoption of its Rules of Procedure . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17 Independence of the members of the Boards . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18 Exclusion and objection . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18 Technical opinion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19 Chapter IV The Administrative Council

Article 26 Article 27 Article 28 Article 29 Article 30 Article 31 Article 32 Article 33 Article 34 Article 35 Article 36

Membership . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19 Chairmanship . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19 Board . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20 Meetings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20 Attendance of observers . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20 Languages of the Administrative Council . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20 Staff, premises and equipment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21 Competence of the Administrative Council in certain cases . . . . . . . . . . . . . . . . . . 21 Voting rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22 Voting rules . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22 Weighting of votes . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23 Chapter V Financial provisions

Article 37 Article 38 Article 39 Article 40 Article 41 Article 42 Article 43 Article 44 Article 45 Article 46 Article 47 Article 48

Budgetary funding . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23 The Organisation’s own resources . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23 Payments by the Contracting States in respect of renewal fees for European patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24 Level of fees and payments – Special financial contributions . . . . . . . . . . . . . . . . . 24 Advances . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25 Budget . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25 Authorisation for expenditure . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25 Appropriations for unforeseeable expenditure . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25 Accounting period . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26 Preparation and adoption of the budget . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26 Provisional budget . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26 Budget implementation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26 viii

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Table of Contents Article 49 Article 50 Article 51

Auditing of accounts . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27 Financial Regulations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27 Fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27

PART II SUBSTANTIVE PATENT LAW Chapter I Patentability Article 52 Article 53 Rule 26 Rule 27 Rule 28 Rule 29 Article 54 Rule 165 Article 55 Rule 25 Article 56 Article 57

Patentable inventions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28 Exceptions to patentability . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29 General and definitions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29 Patentable biotechnological inventions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30 Exceptions to patentability . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30 The human body and its elements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30 Novelty . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32 The Euro-PCT application as conflicting application under Article 54, paragraph 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32 Non-prejudicial disclosures . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 34 Certificate of exhibition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 34 Inventive step . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 35 Industrial application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 36 Chapter II

Persons entitled to apply for and obtain a European patent – Mention of the inventor Article 58 Article 59 Article 60 Article 61 Rule 14 Rule 15 Rule 16 Rule 17 Rule 18 Article 62

Entitlement to file a European patent application . . . . . . . . . . . . . . . . . . . . . . . . . . . 36 Multiple applicants . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 36 Right to a European patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 37 European patent applications filed by non-entitled persons . . . . . . . . . . . . . . . . . . 38 Stay of proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 38 Limitation on withdrawals . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 39 Procedure under Article 61, paragraph 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 39 Filing of a new European patent application by the entitled person . . . . . . . . . . . 39 Partial transfer of the right to the European patent . . . . . . . . . . . . . . . . . . . . . . . . . . 40 Right of the inventor to be mentioned . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 42 Chapter III Effects of the European patent and the European patent application

Article 63 Article 64 Article 65 Article 66

Term of the European patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 43 Rights conferred by a European patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 43 Translation of the European patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 43 Equivalence of European filing with national filing . . . . . . . . . . . . . . . . . . . . . . . . . 45 ix

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Table of Contents Article 67 Article 68 Article 69 Article 70

Rights conferred by a European patent application after publication . . . . . . . . . . 45 Effect of revocation or limitation of the European patent . . . . . . . . . . . . . . . . . . . . . 45 Extent of protection . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 46 Authentic text of a European patent application or European patent . . . . . . . . . . 47 Chapter IV The European patent application as an object of property

Article 71 Article 72 Rule 22 Rule 85 Article 73 Rule 23 Rule 24 Article 74

Transfer and constitution of rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 47 Assignment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 47 Registration of transfers . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 48 Transfer of the European patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 48 Contractual licensing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 48 Registration of licences and other rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 48 Special entries for licence registrations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 49 Law applicable . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 49

PART III THE EUROPEAN PATENT APPLICATION Chapter I Filing and requirements of the European patent application Article 75 Rule 35 Article 76 Rule 36 Article 77 Rule 37 Article 78 Rule 38 Rule 41 Rule 42 Rule 46 Rule 48 Rule 49 Article 79 Rule 39 Article 80 Rule 40 Article 81 Rule 19 Rule 20 Rule 21 Rule 60 Article 82

Filing of a European patent application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50 General provisions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50 European divisional applications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 51 European divisional applications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 52 Forwarding of European patent applications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 54 Forwarding of European patent applications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 54 Requirements of a European patent application . . . . . . . . . . . . . . . . . . . . . . . . . . . . 56 Filing fee and search fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 56 Request for grant . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 56 Content of the description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 57 Form of the drawings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 58 Prohibited matter . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 59 General provisions governing the presentation of the application documents . . . 59 Designation of Contracting States . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 62 Designation fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 63 Date of filing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 64 Date of filing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 64 Designation of the inventor . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 66 Designation of the inventor . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 66 Publication of the mention of the inventor . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 66 Rectification of the designation of an inventor . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 67 Subsequent designation of the inventor . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 67 Unity of invention . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 68 x

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Table of Contents Rule 44 Article 83 Rule 30 Rule 31 Rule 32 Rule 33 Rule 34 Article 84 Rule 43 Rule 45 Article 85 Rule 47 Rule 66 Article 86 Rule 51

Unity of invention . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 69 Disclosure of the invention . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 70 Requirements of European patent applications relating to nucleotide and amino acid sequences . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 70 Deposit of biological material . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 70 Expert solution . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 71 Availability of biological material . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 72 New deposit of biological material . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 73 Claims . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 74 Form and content of claims . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 75 Claims incurring fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 76 Abstract . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 77 Form and content of the abstract . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 78 Definitive content of the abstract . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 78 Renewal fees for the European patent application . . . . . . . . . . . . . . . . . . . . . . . . . . 79 Payment of renewal fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 79 Chapter II Priority

Article 87 Article 88 Rule 52 Rule 53 Rule 54 Article 89

Priority right . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 82 Claiming priority . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 83 Declaration of priority . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 84 Priority documents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 84 Issuing priority documents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 85 Effect of priority right . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 86

PART IV PROCEDURE UP TO GRANT Article 90 Rule 55 Rule 56 Rule 57 Rule 58 Rule 59 Article 91 Article 92 Rule 61 Rule 62 Rule 62a Rule 63 Rule 64 Rule 65 Article 93 Rule 67

Examination on filing and examination as to formal requirements . . . . . . . . . . . . 87 Examination on filing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 87 Missing parts of the description or missing drawings . . . . . . . . . . . . . . . . . . . . . . . 87 Examination as to formal requirements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 88 Correction of deficiencies in the application documents . . . . . . . . . . . . . . . . . . . . . 89 Deficiencies in claiming priority . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 89 Examination as to formal requirements (deleted) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 92 Drawing up of the European search report . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 92 Content of the European search report . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 92 Extended European search report . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 93 Applications containing a plurality of independent claims . . . . . . . . . . . . . . . . . . . 93 Incomplete search . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 93 European search report where the invention lacks unity . . . . . . . . . . . . . . . . . . . . . 94 Transmittal of the European search report . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 94 Publication of the European patent application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 95 Technical preparations for publication . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 95

xi

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Table of Contents Rule 68 Rule 69 Article 94 Rule 1 Rule 2 Rule 50 Rule 70 Rule 70a Rule 71 Rule 71a Article 95 Article 96 Article 97 Rule 72 Article 98 Rule 73 Rule 74

Form of the publication of European patent applications and European search reports . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96 Information about publication . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96 Examination of the European patent application . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97 Written proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 98 Filing of and formal requirements for documents . . . . . . . . . . . . . . . . . . . . . . . . . . . 98 Documents filed subsequently . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 98 Request for examination . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 98 Response to the extended European search report . . . . . . . . . . . . . . . . . . . . . . . . . . 99 Examination procedure . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99 Conclusion of the grant procedure . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 100 Extension of the period within which requests for examination may be filed (deleted) . . 103 Examination of the European patent application (deleted) . . . . . . . . . . . . . . . . . . . . . . . 103 Grant or refusal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 103 Grant of the European patent to different applicants . . . . . . . . . . . . . . . . . . . . . . . 104 Publication of the specification of the European patent . . . . . . . . . . . . . . . . . . . . . 104 Content and form of the specification . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 104 Certificate for a European patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 104 PART V OPPOSITION AND LIMITATION PROCEDURE

Article 99 Rule 75 Rule 76 Article 100 Article 101 Rule 77 Rule 78 Rule 79 Rule 80 Rule 81 Rule 83 Rule 84 Rule 86 Article 102 Article 103 Rule 82 Rule 87 Article 104 Rule 88 Article 105 Rule 89 Article 105a Rule 90 Rule 93

Opposition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 105 Surrender or lapse of the patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 105 Form and content of the opposition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 105 Grounds for opposition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 107 Examination of the opposition – Revocation or maintenance of the European patent . . . . . . . . . . . . . . . . . . . . . . . 108 Rejection of the opposition as inadmissible . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 109 Procedure where the proprietor of the patent is not entitled . . . . . . . . . . . . . . . . . 109 Preparation of the examination of the opposition . . . . . . . . . . . . . . . . . . . . . . . . . . 109 Amendment of the European patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 110 Examination of opposition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 110 Request for documents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 110 Continuation of the opposition proceedings by the European Patent Office of its own motion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 110 Documents in opposition proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 111 Revocation or maintenance of the European patent (deleted) . . . . . . . . . . . . . . . . . . . . . 112 Publication of a new specification of the European patent . . . . . . . . . . . . . . . . . . . 112 Maintenance of the European patent in amended form . . . . . . . . . . . . . . . . . . . . . 112 Content and form of the new specification of the European patent . . . . . . . . . . . 113 Costs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 114 Costs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 114 Intervention of the assumed infringer . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 114 Intervention of the assumed infringer . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 115 Request for limitation or revocation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 116 Subject of proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 116 Precedence of opposition proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 116 xii

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Table of Contents Article 105b Rule 91 Rule 92 Rule 94 Rule 95 Article 105c Rule 96

Limitation or revocation of the European patent . . . . . . . . . . . . . . . . . . . . . . . . . . . 117 Responsibility for proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 118 Requirements of the request . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 118 Rejection of the request as inadmissible . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 118 Decision on the request . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 119 Publication of the amended specification of the European patent . . . . . . . . . . . . 121 Content and form of the amended European patent specification . . . . . . . . . . . . 121

PART VI APPEALS PROCEDURE Article 106 Rule 97 Rule 98 Article 107 Article 108 Rule 99 Article 109 Article 110 Rule 100 Rule 101 Article 111 Rule 102 Rule 103 Article 112 Article 112a Rule 104 Rule 105 Rule 106 Rule 107 Rule 108 Rule 109 Rule 110

Decisions subject to appeal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 122 Appeal against apportionment and fixing of costs . . . . . . . . . . . . . . . . . . . . . . . . . 122 Surrender or lapse of the patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 122 Persons entitled to appeal and to be parties to appeal proceedings . . . . . . . . . . . 123 Time limit and form . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 123 Content of the notice of appeal and the statement of grounds . . . . . . . . . . . . . . . 123 Interlocutory revision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 125 Examination of appeals . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 125 Examination of appeals . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 126 Rejection of the appeal as inadmissible . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 126 Decision in respect of appeals . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 127 Form of decision of the Board of Appeal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 128 Reimbursement of the appeal fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 128 Decision or opinion of the Enlarged Board of Appeal . . . . . . . . . . . . . . . . . . . . . . . 129 Petition for review by the Enlarged Board of Appeal . . . . . . . . . . . . . . . . . . . . . . . 130 Further fundamental procedural defects . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 131 Criminal acts . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 131 Obligation to raise objections . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 131 Contents of the petition for review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 131 Examination of the petition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 131 Procedure in dealing with petitions for review . . . . . . . . . . . . . . . . . . . . . . . . . . . . 132 Reimbursement of the fee for petitions for review . . . . . . . . . . . . . . . . . . . . . . . . . 132

PART VII COMMON PROVISIONS Chapter I Common provisions governing procedure Article 113 Rule 111 Rule 112 Rule 113 Article 114

Right to be heard and basis of decisions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 135 Form of decisions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 135 Noting of loss of rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 135 Signature, name, seal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 136 Examination by the European Patent Office of its own motion . . . . . . . . . . . . . . . 136 xiii

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Table of Contents Article 115 Rule 114 Article 116 Rule 115 Rule 116 Rule 124 Article 117 Rule 117 Rule 118 Rule 119 Rule 120 Rule 121 Rule 122 Rule 123 Article 118 Article 119 Rule 125 Rule 126 Rule 127 Rule 128 Rule 129 Rule 130 Article 120 Rule 131 Rule 132 Rule 133 Rule 134 Article 121 Rule 135 Article 122 Rule 136 Article 123 Rule 137 Rule 138 Rule 139 Rule 140 Article 124 Rule 70b Rule 141 Article 125 Rule 142 Article 126

Observations by third parties . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 137 Observations by third parties . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 137 Oral proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 138 Summons to oral proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 138 Preparation of oral proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 138 Minutes of oral proceedings and of taking of evidence . . . . . . . . . . . . . . . . . . . . . 139 Means and taking of evidence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 139 Decision on taking of evidence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 140 Summons to give evidence before the European Patent Office . . . . . . . . . . . . . . . 140 Examination of evidence before the European Patent Office . . . . . . . . . . . . . . . . . 140 Hearing by a competent national court . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 141 Commissioning of experts . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 141 Costs of taking of evidence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 141 Conservation of evidence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 142 Unity of the European patent application or European patent . . . . . . . . . . . . . . . 143 Notification . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 143 General provisions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 143 Notification by post . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 144 Notification by technical means of communication . . . . . . . . . . . . . . . . . . . . . . . . . 144 Notification by delivery by hand . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 144 Public notification . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 144 Notification to representatives . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 145 Time limits . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 145 Calculation of periods . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 145 Periods specified by the European Patent Office . . . . . . . . . . . . . . . . . . . . . . . . . . . 146 Late receipt of documents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 146 Extension of periods . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 146 Further processing of the European patent application . . . . . . . . . . . . . . . . . . . . . 148 Further processing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 148 Re-establishment of rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 150 Re-establishment of rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 151 Amendments . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 152 Amendment of the European patent application . . . . . . . . . . . . . . . . . . . . . . . . . . . 153 Different claims, description and drawings for different States . . . . . . . . . . . . . . 153 Correction of errors in documents filed with the European Patent Office . . . . . . 153 Correction of errors in decisions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 154 Information on prior art . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 155 Request for a copy of search results . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .156 Information on prior art . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 156 Reference to general principles . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 157 Interruption of proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 157 Termination of financial obligations (deleted) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 158 Chapter II Information to the public or to official authorities

Article 127 Rule 143

European Patent Register . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 159 Entries in the European patent Register . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 159 xiv

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Table of Contents Article 128 Rule 144 Rule 145 Rule 146 Rule 147 Article 129 Article 130 Rule 148 Article 131 Rule 149 Rule 150 Article 132

Inspection of files . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 160 Parts of the file excluded from inspection . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 161 Procedures for the inspection of files . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 161 Communication of information contained in the files . . . . . . . . . . . . . . . . . . . . . . . 161 Constitution, maintenance and preservation of files . . . . . . . . . . . . . . . . . . . . . . . . 162 Periodical publications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 163 Exchange of information . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 163 Communications between the European Patent Office and the authorities of the Contracting States . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 164 Administrative and legal co-operation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 164 Inspection of files by or via courts or authorities of the Contracting States . . . . . 164 Procedure for letters rogatory . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 165 Exchange of publications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 166 Chapter III Representation

Article 133 Rule 151 Rule 152 Article 134 Rule 154 Article 134a Rule 153

General principles of representation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 166 Appointment of a common representative . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 166 Authorisations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 167 Representation before the European Patent Office . . . . . . . . . . . . . . . . . . . . . . . . . 168 Amendment of the list of professional representatives . . . . . . . . . . . . . . . . . . . . . . 169 Institute of Professional Representatives before the European Patent Office . . . 170 Attorney evidentiary privilege . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 171

PART VIII IMPACT ON NATIONAL LAW Chapter I Conversion into a national patent application Article 135 Rule 155 Rule 156 Article 136 Article 137

Request for conversion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 172 Filing and transmission of the request for conversion . . . . . . . . . . . . . . . . . . . . . . 172 Information to the public in the event of conversion . . . . . . . . . . . . . . . . . . . . . . . 173 Submission and transmission of the request (deleted) . . . . . . . . . . . . . . . . . . . . . . . . . . . 174 Formal requirements for conversion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 174 Chapter II Revocation and prior rights

Article 138 Article 139

Revocation of European patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 174 Prior rights and rights arising on the same date . . . . . . . . . . . . . . . . . . . . . . . . . . . 175

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Table of Contents Chapter III Miscellaneous effects Article 140 Article 141

National utility models and utility certificates . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 175 Renewal fees for European patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 175

PART IX SPECIAL AGREEMENTS Article 142 Article 143 Article 144 Article 145 Article 146 Article 147 Article 148 Article 149 Article 149a

Unitary patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 176 Special departments of the European Patent Office . . . . . . . . . . . . . . . . . . . . . . . . . 176 Representation before special departments . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 176 Select committee of the Administrative Council . . . . . . . . . . . . . . . . . . . . . . . . . . . 176 Cover for expenditure for carrying out special tasks . . . . . . . . . . . . . . . . . . . . . . . 176 Payments in respect of renewal fees for unitary patents . . . . . . . . . . . . . . . . . . . . . 177 The European patent application as an object of property . . . . . . . . . . . . . . . . . . . 177 Joint designation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 177 Other agreements between the Contracting States . . . . . . . . . . . . . . . . . . . . . . . . . 177

PART X INTERNATIONAL APPLICATIONS UNDER THE PATENT CO-OPERATION TREATY – EURO-PCT APPLICATIONS Article 150 Article 151 Rule 157 Article 152 Rule 158 Article 153 Rule 159 Rule 160 Rule 161 Rule 162 Rule 163 Rule 164 Article 154 Article 155 Article 156 Article 157 Article 158

Application of the Patent Cooperation Treaty . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 179 The European Patent Office as a receiving Office . . . . . . . . . . . . . . . . . . . . . . . . . . 179 The European Patent Office as a receiving Office . . . . . . . . . . . . . . . . . . . . . . . . . . 179 The European Patent Office as an International Searching Authority or International Preliminary Examining Authority . . . . . . . . . . . . . . . . . . . . . . . . . 180 The European Patent Office as an International Searching Authority or International Preliminary Examining Authority . . . . . . . . . . . . . . . . . . . . . . . . . 180 The European Patent Office as designated Office or elected Office . . . . . . . . . . . 181 The European Patent Office as a designated or elected Office – Requirements for entry into the European phase . . . . . . . . . . . . . . . . . . . . . . . . . 182 Consequences of non-fulfilment of certain requirements . . . . . . . . . . . . . . . . . . . . 183 Amendment of the application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 183 Claims incurring fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 183 Examination of certain formal requirements by the European Patent Office . . . 184 Unity of invention and further searches . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 185 The European Patent Office as an International Searching Authority (deleted) . . . . . . 190 The European Patent Office as an International Preliminary Examining Authority (deleted) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 190 The European Patent Office as an elected Office (deleted) . . . . . . . . . . . . . . . . . . . . . . . 190 International search report (deleted) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 190 Publication of the international application and its supply to the European Patent Office (deleted) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 190 xvi

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Table of Contents PART XI TRANSITIONAL PROVISIONS (deleted)

PART XII FINAL PROVISIONS Article 164 Article 165 Article 166 Article 167 Article 168 Article 169 Article 170 Article 171 Article 172 Article 173 Article 174 Article 175 Article 176 Article 177 Article 178

Implementing Regulations and Protocols . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 190 Signature – Ratification . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 190 Accession . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 191 Reservations (deleted) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 191 Territorial field of application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 191 Entry into force . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 191 Initial contribution . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 192 Duration of the Convention . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 192 Revision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 192 Disputes between Contracting States . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 192 Denunciation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 193 Preservation of acquired rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 193 Financial rights and obligations of former Contracting States . . . . . . . . . . . . . . . . 193 Languages of the Convention . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 193 Transmission and notifications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 194

Protocol on Recognition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 195 Rules Relating to Fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 197 London Agreement on Translations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 203 Decisions of the Enlarged Board of Appeal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 207 EPC Member States . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 226 Index of Implementing Regulations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 227 Concordance of Provisions of EPC 2000 and EPC 1973 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 234 Key Word Index . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 242

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Part I: General and Institutional Provisions

Articles 1-3

European Patent Convention 2000 (EPC 2000) as adopted by decision of the Administrative Council of 28 June 2001 PREAMBLE The Contracting States, DESIRING to strengthen co-operation between the States of Europe in respect of the protection of inventions, DESIRING that such protection may be obtained in those States by a single procedure for the grant of patents and by the establishment of certain standard rules governing patents so granted, DESIRING, for this purpose, to conclude a Convention which establishes a European Patent Organisation and which constitutes a special agreement within the meaning of Article 19 of the Convention for the Protection of Industrial Property, signed in Paris on 20 March 1883 and last revised on 14 July 1967, and a regional patent treaty within the meaning of Article 45, paragraph 1, of the Patent Co-operation Treaty of 19 June 1970, HAVE AGREED on the following provisions:

PART I GENERAL AND INSTITUTIONAL PROVISIONS Chapter I General provisions Article 1 European law for the grant of patents A system of law, common to the Contracting States, for the grant of patents for invention is established by this Convention.

Article 2 European patent (1) Patents granted under this Convention shall be called European patents.

(2) The European patent shall, in each of the Contracting States for which it is granted, have the effect of and be subject to the same conditions as a national patent granted by that State, unless this Convention provides otherwise.

Article 3 Territorial effect The grant of a European patent may be requested for one or more of the Contracting States.

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Articles 4-5

A Guide to the EPC 2000 Article 4 European Patent Organisation

(1) A European Patent Organisation, hereinafter referred to as the Organisation, is established by this Convention. It shall have administrative and financial autonomy.

(2) The organs of the Organisation shall be: (a) the European Patent Office; (b) the Administrative Council.

(3) The task of the Organisation shall be to grant European patents. This shall be carried out by the European Patent Office supervised by the Administrative Council.

Article 4a Conference of ministers of the Contracting States A conference of ministers of the Contracting States responsible for patent matters shall meet at least every five years to discuss issues pertaining to the Organisation and to the European patent system.

Comment: Article 4a EPC provides a legal basis for regular intergovernmental conferences of the Contracting States. Such conferences are not themselves organs of the European Patent Organisation and their establishment does not affect the existing powers of the European Patent Office (EPO) or the Administrative Council established under Article 4 (2) EPC. Decisions at a conference are not legally binding on the EPO. Rather, the function of any conference is purely political. Mandates issued by a conference are intended to set objectives for the EPO that can be met using pre-existing powers. Additionally, a conference provides a forum in which Contracting States can co-operate in matters that extend beyond the scope of the EPC, such as the London Agreement on Translations and the European Patent Litigation Agreement, which were established following ad hoc intergovernmental conferences held in 1999 and 2000 respectively.

Chapter II The European Patent Organisation Article 5 Legal status (1) The Organisation shall have legal personality.

(2) In each of the Contracting States, the Organisation shall enjoy the most extensive legal capacity accorded to legal persons under the national law of that State; it may in particular acquire or dispose of movable and immovable property and may be a party to legal proceedings.

(3) The President of the European Patent Office shall represent the Organisation.

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Part I: General and Institutional Provisions

Articles 6-10

Article 6 Headquarters (1) The Organisation shall have its headquarters in Munich.

(2) The European Patent Office shall be located in Munich. It shall have a branch at The Hague.

Article 7 Sub-offices of the European Patent Office By decision of the Administrative Council, sub-offices of the European Patent Office may be created, if need be, for the purpose of information and liaison, in the Contracting States and with intergovernmental organisations in the field of industrial property, subject to the approval of the Contracting State or organisation concerned.

Article 8 Privileges and immunities The Protocol on Privileges and Immunities annexed to this Convention shall define the conditions under which the Organisation, the members of the Administrative Council, the employees of the European Patent Office, and such other persons specified in that Protocol as take part in the work of the Organisation, shall enjoy, in each Contracting State, the privileges and immunities necessary for the performance of their duties.

Article 9 Liability (1) The contractual liability of the Organisation shall be governed by the law applicable to the contract in question.

(2) The non-contractual liability of the Organisation in respect of any damage caused by it or by the employees of the European Patent Office in the performance of their duties shall be governed by the law of the Federal Republic of Germany. Where the damage is caused by the branch at The Hague or a sub-office or employees attached thereto, the law of the Contracting State in which such branch or sub-office is located shall apply.

(3) The personal liability of the employees of the European Patent Office towards the Organisation shall be governed by their Service Regulations or conditions of employment.

(4) The courts with jurisdiction to settle disputes under paragraphs 1 and 2 shall be: (a) for disputes under paragraph 1, the courts of the Federal Republic of Germany, unless the contract concluded between the parties designates a court of another State; (b) for disputes under paragraph 2, the courts of the Federal Republic of Germany, or of the State in which the branch or sub-office is located.

Chapter III The European Patent Office Article 10 Management (1) The European Patent Office shall be managed by the President, who shall be responsible for its activities to the Administrative Council.

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Articles 10-11

A Guide to the EPC 2000 (2) To this end, the President shall have in particular the following functions and powers: (a) he shall take all necessary steps to ensure the functioning of the European Patent Office, including the adoption of internal administrative instructions and information to the public; (b) unless this Convention provides otherwise, he shall prescribe which acts are to be performed at the European Patent Office in Munich and its branch at The Hague respectively; (c) he may submit to the Administrative Council any proposal for amending this Convention, for general regulations, or for decisions which come within the competence of the Administrative Council; (d) he shall prepare and implement the budget and any amending or supplementary budget; (e) he shall submit a management report to the Administrative Council each year; (f) he shall exercise supervisory authority over the staff;

Article 11 – Appointment of senior EPO employees by Administrative Council

(g) subject to Article 11, he shall appoint the employees and decide on their promotion; (h) he shall exercise disciplinary authority over the employees other than those referred to in Article 11, and may propose disciplinary action to the Administrative Council with regard to employees referred to in Article 11, paragraphs 2 and 3; (i) he may delegate his functions and powers.

(3) The President shall be assisted by a number of Vice-Presidents. If the President is absent or indisposed, one of the Vice-Presidents shall take his place in accordance with the procedure laid down by the Administrative Council.

Article 11 Appointment of senior employees (1) The President of the European Patent Office shall be appointed by the Administrative Council.

(2) The Vice-Presidents shall be appointed by the Administrative Council after the President of the European Patent Office has been consulted.

(3) The members, including the Chairmen, of the Boards of Appeal and of the Enlarged Board of Appeal shall be appointed by the Administrative Council on a proposal from the President of the European Patent Office. They may be reappointed by the Administrative Council after the President of the European Patent Office has been consulted.

(4) The Administrative Council shall exercise disciplinary authority over the employees referred to in paragraphs 1 to 3.

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Part I: General and Institutional Provisions

Articles 11-14

(5) The Administrative Council, after consulting the President of the EPO, may also appoint as members of the Enlarged Board of Appeal legally qualified members of the national courts or quasijudicial authorities of the Contracting States, who may continue their judicial activities at the national level. They shall be appointed for a term of three years and may be re-appointed.

Comment: When the EPO was established, Article 160 (2) EPC provided for the appointment of external members to all Boards of Appeal, but save in the case of external appointments to the Enlarged Board of Appeal this power was little used once the EPO had established technical and legal expertise in-house.

Article 11 (5) EPC provides a continuing legal basis for the appointment of external legally qualified members to the Enlarged Board of Appeal. However, external appointments to the ordinary Boards of Appeal are no longer possible.

Article 12 Duties of office Employees of the European Patent Office shall be bound, even after the termination of their employment, neither to disclose nor to make use of information which by its nature is a professional secret.

Article 13 Disputes between the Organisation and the employees of the European Patent Office (1) Employees and former employees of the European Patent Office or their successors in title may apply to the Administrative Tribunal of the International Labour Organization in the case of disputes with the European Patent Organisation, in accordance with the Statute of the Tribunal and within the limits and subject to the conditions laid down in the Service Regulations for permanent employees or the Pension Scheme Regulations or arising from the conditions of employment of other employees.

(2) An appeal shall only be admissible if the person concerned has exhausted such other means of appeal as are available to him under the Service Regulations, the Pension Scheme Regulations or the conditions of employment.

Article 14 Languages of the European Patent Office, European patent applications and other documents (1) The official languages of the European Patent Office shall be English, Certification of translations – French and German.

Rule 5 (2) A European patent application shall be filed in one of the official Translation of new application relanguages or, if filed in any other language, translated into one of the quired within 2 months of filing official languages in accordance with the Implementing Regulations. date – Rule 6 (1)

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Article 14 Filing and examination fees reduced by 30% for natural persons, SME or Universities who are nationals or residents of or persons with a principal place of business in Contracting States with official languages other than English, French or German who file in such a language – Article 14 (4), Rule 6 (3), RRF Article 14 (1)

A Guide to the EPC 2000 Throughout the proceedings before the European Patent Office, such translation may be brought into conformity with the application as filed. If a required translation is not filed in due time, the application shall be deemed to be withdrawn.

(3) The official language of the European Patent Office in which the European patent application is filed or into which it is translated shall be used as the language of the proceedings in all proceedings before the European Patent Office, unless the Implementing Translation of new application assumed Regulations provide otherwise. not to add matter – Rule 7

Divisional applications must be in language of parent – Rule 36 (2) Formal requirements for translations – Rule 49 Filing of translation checked by Receiving Section – Article 90 (3) and Rule 57 (a) If translation missing, applicant invited to file it within 2 months – Rule 58 Notification of loss of rights without decision – Rule 112 Further processing not available – Rule 135 (2)

(4) Natural or legal persons having their residence or principal place of business within a Contracting State having a language other than English, French or German as an official language, and nationals of that State who are resident abroad, may file documents which have to be filed within a time limit in an official language of that State.

They shall, however, file a translation in an official language of the European Patent Office in accordance with the Implementing Regulations. If any document, other than those documents making up the European patent application, is not filed in the prescribed language, or if any required translation is not filed in due time, the document shall be deemed not to have been filed.

(5) European patent applications shall be published in the language Can convert to national applications in of the proceedings. some countries if European application (6) Specifications of European patents shall be published in the deemed withdrawn due to failure to file language of the proceedings and shall include a translation of the translation in time – Article 135 (1)(b) claims in the other two official languages of the European Patent Office.

Translations of documents other than new applications are due within 1 (7) The following shall be published in the three official languages of month or, if document is notice of op- the European Patent Office: position, notice of appeal, grounds of (a) the European Patent Bulletin; appeal, or petition for review, within the (b) the Official Journal of the European Patent Office. usual term for filing document, if later – Rule 6 (2) (8) Entries in the European Patent Register shall be made in the three Evidence may be filed in any language, official languages of the European Patent Office. In cases of doubt, but EPO can require translation into the entry in the language of the proceedings shall be authentic.

English, French or German – Rule 3 (3) Languages in oral proceedings – Rule 4

Previously Rule 1

Related Rules Rule 3 Language in written proceedings

(1) In written proceedings before the European Patent Office, any Article 14 (4) – Prosecution party may use any official language of the European Patent Office. documents filed in non-EPO languages The translation referred to in Article 14, paragraph 4, may be filed in any official language of the European Patent Office.

(2) Amendments to a European patent application or European patent shall be filed in the language of the proceedings.

Rule 3 (3) also applies to observations by third parties – Rule 114 (1)

(3) Documentary evidence and, in particular, publications may be filed in any language. The European Patent Office may, however,

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Part I: General and Institutional Provisions require that a translation in one of its official languages be filed, within a period to be specified. If a required translation is not filed in due time, the European Patent Office may disregard the document in question.

Article 14

Time periods set by EPO must be at least 2 months and may be extended on request – Rule 132 (2) Notification of loss of rights without decision – Rule 112 Further processing available – Article 121

Rule 4 Language in oral proceedings

Previously Rule 2

(1) Any party to oral proceedings before the European Patent Office may use an official language of the European Patent Office other than the language of the proceedings, if such party gives notice to the European Patent Office at least one month before the date of such oral proceedings 1-month time limit does not apply to oral proceedings following petition for or provides for interpretation into the language of the proceedings. Any review – Rule 109 (1) party may use an official language of a Contracting State, if he provides for interpretation into the language of the proceedings. The European Patent Office may permit derogations from these provisions.

(2) In the course of oral proceedings, employees of the European Patent Office may use an official language of the European Patent Office other than the language of the proceedings.

(3) Where evidence is taken, any party, witness or expert to be heard who is unable to express himself adequately in an official language of the European Patent Office or of a Contracting State may use another language. Where evidence is taken upon request of a party, parties, witnesses or experts expressing themselves in a language other than an official language of the European Patent Office shall be heard only if that party provides for interpretation into the language of the proceedings. The European Patent Office may, however, permit interpretation into one of its other official languages.

(4) If the parties and the European Patent Office agree, any language may be used.

(5) The European Patent Office shall, if necessary, provide at its own expense interpretation into the language of the proceedings, or, where appropriate, into its other official languages, unless such interpretation is the responsibility of one of the parties.

(6) Statements by employees of the European Patent Office, parties, witnesses or experts, made in an official language of the European Patent Office, shall be entered in the minutes in that language.

Statements made in any other language shall be entered in the official language into which they are translated. Amendments to a European patent application or European patent shall be entered in the minutes in the language of the proceedings.

Rule 5 Certification of translations

Rule numbering unchanged Time periods set by EPO must be at

Where the translation of a document is required, the European Patent least 2 months and may be Office may require that a certificate that the translation corresponds extended on request – Rule 132 (2) 7

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Article 14

A Guide to the EPC 2000

Notification of loss of rights without to the original text be filed within a period to be specified. If the decision – Rule 112 certificate is not filed in due time, such document shall be deemed Further processing available – Article 121 not to have been filed, unless otherwise provided.

Rule numbering unchanged

Rule 6 Filing of translations and reduction of fees

Article 14 (2) – Translation into English, (1) A translation under Article 14, paragraph 2, shall be filed within French or German of European patent two months of filing the European patent application. application filed in non-EPO language 2-month period for filing translation of (2) A translation under Article 14, paragraph 4, shall be filed within new application cannot be extended using one month of filing the document. This shall also apply to requests further processing – Rule 135 (2) under Article 105a. Where the document is a notice of opposition or Article 14 (4) – Prosecution documents in appeal, or a statement of grounds of appeal, or a petition for review, non-EPO languages the translation may be filed within the period for filing such a Article 105a – Request for limitation or notice or statement or petition, if that period expires later. revocation

(3) Where a person referred to in Article 14, paragraph 4, files a

Article 14 (4) – Nationals and residents of or persons with principal places of European patent application or a request for examination in a business in Contracting States with official language admitted in that provision, the filing fee or examination languages other than English, French or fee shall be reduced in accordance with the Rules relating to Fees.

German

(4) The reduction referred to in paragraph 3 shall be available for:

Fees reduced by 30% – RRF Article 14 (a) small and medium-sized enterprises; (1)

(b) natural persons; or (c) non-profit organisations, universities or public research organisations.

(5) For the purposes of paragraph 4(a), Commission recommendation 2003/361/EC of 6 May 2003 concerning the definition of micro, small and medium-sized enterprises as published in the Official Journal of the European Union L 124, p. 36 of 20 May 2003 shall apply.

(6) An applicant wishing to benefit from the fee reduction referred to in paragraph 3 shall declare himself to be an entity or a natural person within the meaning of paragraph 4. In case of reasonable doubt as to the veracity of such declaration, the Office may require evidence.

(7) In case of multiple applicants, each applicant shall be an entity or a natural person within the meaning of paragraph 4.

Rule numbering unchanged

Rule 7 Legal authenticity of the translation of the European patent application

Article 14 (2) – Translation into English, French or German of European patent Unless evidence is provided to the contrary, the European Patent Office shall assume, for the purpose of determining whether the application filed in non-EPO language Rule 40 (3) – Translation of previously filed application into English, French or German where European patent application filed by reference to earlier application in non-EPO language

subject-matter of the European patent application or European patent extends beyond the content of the application as filed, that the translation filed under Article 14, paragraph 2, or Rule 40, paragraph 3, is in conformity with the original text of the application.

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Part I: General and Institutional Provisions

Article 14

Other Relevant Rules Rule 36 European divisional applications Rule 40 Date of filing Rule 49 General provisions governing the presentation of the application documents Rule 57 Examination as to formal requirements Rule 58 Correction of deficiencies in the application documents Rule 109 Procedure in dealing with petitions for review Rule 112 Noting of loss of rights Rule 114 Observations by third parties Rule 132 Periods specified by the EPO Rule 135 Further processing

See Article 76, page 52 See Article 80, page 64 See Article 78, page 59 See Article 90, page 88 See Article 90, page 89 See Article 112a, page 132 See Article 113, page 135 See Article 115, page 137 See Article 120, page 146 See Article 121, page 148

Comment: Article 14 EPC together with the accompanying rules in the Implementing Regulations set out the language requirements for European patent applications.

European patent applications may be filed in any language. If a language other than English, French or German is used, however, a translation into one of those languages is due within two months of filing (Article 14 (2) and Rule 6 (1) EPC). Compliance is checked by the Receiving Section (Article 90 (3) EPC and Rule 57 (a) EPC). If a translation has not been filed in due time, the EPO will invite the applicant to file one within two months (Rule 58 EPC). This deadline is not extendible and further processing is not available (Rule 135 (2) EPC). If the required translation is not filed within the two-month term set by the EPO, the application is deemed withdrawn (Article 14 (2) EPC, last sentence). A translation is assumed to be accurate unless evidence to the contrary is provided (Rule 7 EPC).

If an application is deemed withdrawn because no translation is filed, the national laws of Bulgaria, Croatia, Cyprus, Estonia, Finland, Greece, Hungary, Italy, Lithuania, Malta, Macedonia, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Switzerland permit conversion into national patent applications under Article 135 (1)(b) EPC. In the case of Switzerland, conversion is expressly limited to applications filed in Italian (see National Law Relating to the EPC, 14th edition, June 2009 for more details).

Rule 40 EPC enables an applicant to obtain a European filing date merely by providing a reference to an earlier patent application. To do so, the applicant must identify the earlier application number, filing date and national office where the earlier application was filed. Unless an electronic copy of the earlier application is available to the EPO under conditions determined by the EPO President (see commentary on Article 80 EPC), a certified copy must be provided within two months of the filing date, together with a translation into English, French or German if the original application was not in one of those languages. The failure to file a timely translation is treated in exactly the same way as the failure to translate a European patent application filed in a non-EPO language: the EPO sets a non-extendible two-month term for correcting the

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Article 14

A Guide to the EPC 2000

omission (Rule 58 EPC), and failure to comply in due time results in the application being deemed withdrawn. Further processing is not available.

Divisional applications must be filed in the language of the parent application (Rule 36 (2) EPC).

Subsequent written proceedings must take place in English, French or German, and any amendments to a European patent application must be made in the language of proceedings (Rule 3 (1) and (2) EPC). Documentary evidence can be filed in any language, but the EPO may request a translation into English, French or German and is permitted to disregard such evidence if a requested translation is not filed (Rule 3 (3) EPC).

Article 14 (4) EPC sets out special privileges for nationals, residents of, and persons having their principal place of business in EPC Contracting States with official languages other than English, French or German. Such persons may file any document at the EPO in any official language of the State of which they are nationals or in which they are resident or have their principal place of business. However, a translation into English, French or German must follow within a set term. In the case of a new patent application, that term is two months from the date of filing (Rule 6 (1) EPC). For all other documents, the term is either one month from the date on which the initial document was filed, or, in case of a notice of opposition or appeal, grounds of appeal or a petition for review, the normal term for filing that document, if later (Rule 6 (2) EPC). In all cases where an applicant takes advantage of this language privilege, associated fees are reduced by 30% (Rule 6 (3) EPC and Article 14 (1) of the Rules Relating to Fees).

Filing and examination fees payable by eligible applicants whose residence or principal place of business is in an EPC contracting state which has an official language other than English, French or German and nationals of such states who are resident abroad who file European patent applications or requests for examination in an official language of the relevant state other than English, French or German are reduced by 30%.(Rule 6(3) EPC and Article 14(1) of the Rules Relating to Fees).

In order to be eligible for the fee reductions, in addition to being a resident, a national, or having their principal place of business in an EPC contracting state with an official language other than English, French or German and filing in an official language of the relevant state other than English, French or German, an applicant must be: i) An enterprise which employs fewer than 250 persons, has an annual turnover not exceeding EUR 50 million and/or an annual balance sheet total not exceeding EUR 43 million and for which no more than 25% of the capital is held directly or indirectly by another company which also fulfils the same criteria; ii) A natural person; iii) A non-profit organisation not allowed by their legal form or statutes to be a source of income, profit or other financial gain to their owners, or – if allowed to make a profit – there is a legal or statutory obligation to reinvest the profits made in the interest of the organisation; iv) A university, or an institution of higher education and research or a comparable

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Part I: General and Institutional Provisions

Articles 14

entity such as a secondary or higher education establishment; or v) A public research organisation organised under public law with the primary goal of conducting fundamental research, industrial research or experimental development and of disseminating the results by way of teaching, publication or technology transfer which is obliged to reinvest any profits arising in carrying out such activities.

(Article 14(4) EPC and Rules 6(4)&(5) EPC and Notice from the EPO dated 10 January 2014).

In order to obtain the fee reduction, a relevant first act must be undertaken in the nonEPO official language (see G6/91). For example, to obtain a reduction in the examination fee, the request for examination must have been filed in a non-EPO official language.

EPC Contracting States with official languages other than English, French or German are as follows: Albania – Albanian

Iceland – Icelandic

Poland – Polish

Belgium – Dutch (as well as French and German)

Ireland – Irish (as well as English)

Portugal – Portuguese

Bulgaria – Bulgarian

Italy –- Italian

San Marino – Italian

Croatia – Croatian

Latvia – Latvian

Serbia – Serbian

Cyprus – Greek

Lithuania – Lithuanian

Slovakia – Slovakian

Czech Republic – Czech

Luxembourg – Luxembourgish (as well as French and German)

Slovenia – Slovenian

Denmark – Danish Estonia – Estonian Finland – Finnish, Swedish Greece – Greek Hungary – Hungarian

Netherlands – Dutch Norway – Norwegian Malta – Maltese (as well as English)

Romania – Romanian

Spain – Spanish Sweden – Swedish Switzerland – Italian (as well as French and German) Turkey – Turkish

Rule 4 EPC regulates the use of languages in oral proceedings. In principle any official language of the EPO or of any Contracting State may be used, and any other language may be used if both the EPO and the parties agree (Rule 4 (4) EPC). If an EPO official language other than the language of proceedings is used, the EPO will provide translation into the language of proceedings at no charge, provided it has at least one month’s notice.

If inadequate notice is given or if translation into a language other than English, French or German is required, the party requesting the translation must bear the costs (Rule 4 (1) EPC). Witnesses may use any language with translations being made as appropriate (Rule 4 (3) EPC).

Case law relating to the EPO language regime may be found in the Case Law of the Boards of Appeal of the European Patent Office, section III – F, pages 579-585. The language provisions of the EPC are also discussed in the Guidelines for Examination in the European Patent Office, Part A, Chapter VII. Languages in oral proceedings are discussed in the Guidelines for Examination in the European Patent Office, Part E, Chapter IV.

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Article 15-16

A Guide to the EPC 2000 Article 15 Departments entrusted with the procedure

Structure of EPO – Rule 9

To carry out the procedures laid down in this Convention, the following

Allocation of duties to EPO shall be set up within the European Patent Office: (a) a Receiving Section; departments of first instance – Rule 11 (b) Search Divisions; Allocation of duties to Boards of Appeal – Rule 12

(c) Examining Divisions; (d) Opposition Divisions; (e) a Legal Division; (f) Boards of Appeal; (g) an Enlarged Board of Appeal.

Related Rules Previously Rule 12

Rule 9 Administrative structure of the European Patent Office

(1) The European Patent Office shall be divided administratively into Article 15 – EPO departments Directorates-General, to which the departments specified in Article 15, and divisions with procedural and the services set up to deal with legal matters and the internal responsibilities administration of the Office, shall be assigned.

(2) Each Directorate-General shall be directed by a Vice-President. The assignment of a Vice-President to a Directorate-General shall be decided by the Administrative Council, after the President of the European Patent Office has been consulted.

Previously Rule 9

Rule 11 Allocation of duties to the departments of first instance (1) Technically qualified examiners acting as members of Search, Examining or Opposition Divisions shall be assigned to Directorates. The President of the European Patent Office shall allocate duties to these Directorates by reference to the international classification.

(2) The President of the European Patent Office may allocate further duties to the Receiving Section, the Search, Examining and Opposition Divisions, and the Legal Division, in addition to the responsibilities vested in them under the Convention.

(3) The President of the European Patent Office may entrust to employees who are not technically or legally qualified examiners the execution of duties falling to the Search, Examining or Opposition Divisions and involving no technical or legal difficulties.

Other Relevant Rules Rule 12 Presidium of the Boards of Appeal

See Article 21, page 15

Division of responsibility between Receiving Section and Examining Article 16 Division – Rule 10 Receiving Section Allocation of duties to EPO The Receiving Section shall be responsible for the examination on filing and departments of first instance – the examination as to formal requirements of European patent applications.

Rule 11

12

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Part I: General and Institutional Provisions

Articles 16-18

Related Rule Rule 10 Responsibility of the Receiving Section and the Examining Division

Previously elements of Articles 16 and 18 (1)

(1) The Receiving Section shall be responsible for the examination on filing and the examination as to formal requirements of a European patent application up to the time when the Examining Division becomes responsible for the examination of the European patent application under Article 94 (1) – Application examined following filing Article 94, paragraph 1. of request for examination of

(2) Subject to paragraphs 3 and 4, the Examining Division shall be responsible and payment for the examination of a European patent application under Article 94, examination fee paragraph 1, from the time when a request for examination is filed.

(3) If a request for examination is filed before the European search report has been transmitted to the applicant, the Examining Division shall, subject to paragraph 4, be responsible from the time when the European Patent Office receives the indication under Rule 70, paragraph 2.

Rule 70 (2) – Indication of (4) If a request for examination is filed before the European search report has applicant’s proceed been transmitted to the applicant, and if the applicant has waived the right under Rule 70, paragraph 2, the Examining Division shall be responsible from the time when the search report is transmitted to the applicant.

intent

to

Other Relevant Rules Rule 11 Rule 70

Allocation of duties to the departments See Article 15, page 12 of first instance Request for examination See Article 94, page 98

Article 17 Search Divisions The Search Divisions shall be responsible for drawing up European search Allocation of duties to EPO reports. departments of first instance – Rule 11

Related Rule Rule 8 Patent classification

Rule numbering unchanged

The European Patent Office shall use the classification referred to in Article 1 of the Strasbourg Agreement concerning the International Patent Classification of 24 March 1971, hereinafter referred to as the international classification.

Other Relevant Rules Rule 11

Allocation of duties to the departments See Article 15, page 11 of first instance

Article 18 Examining Divisions (1) The Examining Divisions shall be responsible for the examination of European patent applications.

Division of responsibility between Receiving Section and Examining Divisions – Rule 10 Allocation of duties to EPO first

(2) An Examining Division shall consist of three technically qualified departments of examiners. However, before a decision is taken on a European patent instance – Rule 11 13

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Article 18-19

A Guide to the EPC 2000

application, its examination shall, as a general rule, be entrusted to one member of the Examining Division. Oral proceedings shall be before the Examining Division itself. If the Examining Division considers that the nature of the decision so requires, it shall be enlarged by the addition of Examining Divisions also a legally qualified examiner. In the event of parity of votes, the vote of the responsible for reviewing refusal to allocate international Chairman of the Examining Division shall be decisive.

Examining Divisions also responsible for considering requests for limitation or revocation – Rule 91

filing date for Euro-PCT Other Relevant Rules applications – Rule 159 (2)

Rule 10

Responsibility of the Receiving Section and the Examining Division Rule 11 Allocation of duties to the departments of first instance Rule 91 Responsibility for proceedings Rule 159 The EPO as a designated or elected Office – Requirements for entry into the European phase

See Article 16, page 13 See Article 15, page 12 See Article 105b, page 118 See Article 153, page 182

Comment: Under Rule 10 EPC, an Examining Division becomes responsible for examining an application either when a request for examination is filed or, if the request is filed prior to transmission of the search report to the applicant, when the applicant indicates its intent to proceed under Rule 70 (2) EPC. Rules 91 and 159 (2) EPC provide that, in addition to being responsible for the substantive examination of European patent applications, the Examining Divisions are also responsible for considering requests for post-grant limitation and revocation and also for reviewing a Receiving Office’s refusal to allocate a filing date to a PCT application.

Article 19 Opposition Divisions Allocation of duties to EPO departments of first instance – Rule 11

(1) The Opposition Divisions shall be responsible for the examination of oppositions against any European patent.

(2) An Opposition Division shall consist of three technically qualified examiners, at least two of whom shall not have taken part in the proceedings for grant of the patent to which the opposition relates. An examiner who has taken part in the proceedings for the grant of the European patent may not be the Chairman. Before a decision is taken on the opposition, the Opposition Division may entrust the examination of the opposition to one of its members. Oral proceedings shall be before the Opposition Division itself. If the Opposition Division considers that the nature of the decision so requires, it shall be enlarged by the addition of a legally qualified examiner who shall not have taken part in the proceedings for grant of the patent. In the event of parity of votes, the vote of the Chairman of the Opposition Division shall be decisive.

Other Relevant Rules Rule 11 Allocation of duties to the departments of first instance 14

See Article 15, page 12

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Part I: General and Institutional Provisions

Articles 20-21

Article 20 Legal Division (1) The Legal Division shall be responsible for decisions in respect of Allocation of duties to EPO entries in the Register of European Patents and in respect of registration departments of first instance – Rule 11 on, and deletion from, the list of professional representatives.

(2) Decisions of the Legal Division shall be taken by one legally qualified member.

Other Relevant Rules Rule 11 Allocation of duties to the departments of first instance

See Article 15, page 12

Article 21 Boards of Appeal (1) The Boards of Appeal shall be responsible for the examination of Presidium of the Boards of appeals from decisions of the Receiving Section, the Examining Divisions Appeal – Rule 12 and Opposition Divisions, and the Legal Division.

(2) For appeals from decisions of the Receiving Section or the Legal Division, a Board of Appeal shall consist of three legally qualified members.

(3) For appeals from a decision of an Examining Division, a Board of Appeal shall consist of: (a) two technically qualified members and one legally qualified member, when the decision concerns the refusal of a European patent application or the grant, limitation or revocation of a European patent, and was taken by an Examining Division consisting of less than four members; (b) three technically and two legally qualified members, when the decision was taken by an Examining Division consisting of four members, or when the Board of Appeal considers that the nature of the appeal so requires; (c) three legally qualified members in all other cases.

(4) For appeals from a decision of an Opposition Division, a Board of Appeal shall consist of: (a) two technically qualified members and one legally qualified member, when the decision was taken by an Opposition Division consisting of three members; (b) three technically and two legally qualified members, when the decision was taken by an Opposition Division consisting of four members, or when the Board of Appeal considers that the nature of the appeal so requires.

Related Rule Rule 12 Presidium of the Boards of Appeal (1) The autonomous authority within the organisational unit comprising

15

Previously Rule 10

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Article 21

A Guide to the EPC 2000

the Boards of Appeal (the “Presidium of the Boards of Appeal”) shall consist of the Vice-President in charge of the Boards of Appeal, who shall act as chairman, and twelve members of the Boards of Appeal, six being Chairmen and six being other members.

(2) All members of the Presidium shall be elected by the Chairmen and members of the Boards of Appeal for two working years. If the full composition of the Presidium cannot be reached, the vacancies shall be filled by designating the most senior Chairmen and members.

(3) The Presidium shall adopt the Rules of Procedure of the Boards of Appeal and the Rules of Procedure for the election and designation of its members. The Presidium shall further advise the Vice-President in charge of the Boards of Appeal with regard to matters concerning the functioning of the Boards of Appeal in general.

(4) Before the beginning of each working year, the Presidium, extended to include all Chairmen, shall allocate duties to the Boards of Appeal. In the same composition, it shall decide on conflicts regarding the allocation of duties between two or more Boards of Appeal. The extended Presidium shall designate the regular and alternate members of the various Boards of Appeal. Any member of a Board of Appeal may be designated as a member of more than one Board of Appeal. These measures may, where necessary, be amended during the course of the working year in question.

(5) The Presidium may only take a decision if at least five of its members are present; these must include the Vice-President in charge of the Boards of Appeal or his deputy, and the Chairmen of two Boards of Appeal.

Where the tasks mentioned in paragraph 4 are concerned, nine members must be present, including the Vice-President in charge of the Boards of Appeal or his deputy, and the Chairmen of three Boards of Appeal.

Decisions shall be taken by a majority vote; in the event of parity of votes, Article 134a (1)(c) – the Chairman or his deputy shall have the casting vote. Abstentions shall Disciplinary powers over not be considered as votes. professional representatives

(6) The Administrative Council may allocate duties under Article 134a, paragraph 1 (c), to the Boards of Appeal.

Comment: In G2/90, the Enlarged Board of Appeal held that Legal Boards of Appeal are restricted to considering decisions of Examining Divisions with fewer than four members, which do not directly relate to the refusal or grant of a European patent application.

In G8/95, the Enlarged Board ruled that an appeal against the EPO’s refusal to correct an error in a decision following a request under Rule 140 EPC must be referred to a Technical Board of Appeal.

The Enlarged Board in G1/11 ruled that A Technical Board of Appeal rather than a Legal Board of Appeal has responsibility to determine an appeal against a 16

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Part I: General and Institutional Provisions

Articles 21-22

decision of the Examining Division refusing the refund search fees paid under Rule 64 (2) EPC. Article 22 Enlarged Board of Appeal (1) The Enlarged Board of Appeal shall be responsible for: (a) deciding on points of law referred to it by Boards of Appeal under Article 112; (b) giving opinions on points of law referred to it by the President of the European Patent Office under Article 112; (c) deciding on petitions for review of decisions of the Boards of Appeal under Article 112a.

(2) In proceedings under paragraph 1 (a) and (b), the Enlarged Board of Appeal shall consist of five legally and two technically qualified members. In proceedings under paragraph 1 (c), the Enlarged Board of Appeal shall consist of three or five members as laid down in the Implementing Regulations. In all proceedings, a legally qualified member shall be the Chairman.

Members and procedure of Enlarged Board of Appeal – Rule 13 Article 112 – Decision or opinion of Enlarged Board of Appeal necessary to ensure uniform application of law Article 112a – Review of Board of Appeal decisions by Enlarged Board of Appeal Composition of Enlarged Board of Appeal when examining petitions for review – Rule 109 (2)

Related Rule Rule 13 Business distribution scheme for the Enlarged Board of Appeal and adoption of its Rules of Procedure (1) Before the beginning of each working year, the members of the Enlarged Board of Appeal appointed under Article 11, paragraph 3, shall designate the regular and alternate members of the Enlarged Board of Appeal in proceedings under Article 22, paragraph 1 (a) and (b), and the regular and alternate members in proceedings under Article 22, paragraph 1 (c).

Previously Rule 11

Article 11 (3) – Appointment of members of Boards of Appeal and Enlarged Board of Appeal Article 22 (1)(a) – Decisions on points of law referred by Boards of Appeal

(2) The members of the Enlarged Board of Appeal appointed under Article 11, paragraph 3, shall adopt the Rules of Procedure of the Article 22 (1)(b) – Opinions on Enlarged Board of Appeal. points of law referred by EPO (3) Decisions on matters mentioned in paragraphs 1 and 2 may only be President taken if at least five members are present, including the Chairman of the Article 22 (1)(c) – Petitions for Enlarged Board of Appeal or his deputy; in the event of parity of votes, review the Chairman or his deputy shall have the casting vote. Abstentions shall not be considered as votes.

Other Relevant Rules Rule 109 Procedure in dealing with petitions for review

See Article 112a, page 132

Comment:.

Whereas seven-member Enlarged Boards of Appeal decide points of law referred

by Boards of Appeal or the EPO President, petitions for review are initially considered by a three-member panel consisting of two legally qualified members 17

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Article 22-24

A Guide to the EPC 2000

and one technically qualified member (Article 22 (2) EPC and Rule 109 (2)(a) EPC).

This three-member panel has the power to reject clearly inadmissible or unfounded petitions on the basis of a unanimous vote. If a petition is admitted by the three-member panel, the petition is then considered in detail by a five-member panel consisting of four legally qualified members and one technically qualified member (Rule 109 (2)(b) EPC).

See commentary on Article 112a below for more details on petitions for review.

Article 23 Independence of the members of the Boards (1) The members of the Enlarged Board of Appeal and of the Boards of Appeal shall be appointed for a term of five years and may not be removed from office during this term, except if there are serious grounds for such removal and if the Administrative Council, on a proposal from the Enlarged Board of Appeal, takes a decision to this effect.

Notwithstanding sentence 1, the term of office of members of the Boards shall end if they resign or are retired in accordance with the Service Regulations for permanent employees of the European Patent Office.

(2) The members of the Boards may not be members of the Receiving Section, Examining Divisions, Opposition Divisions or Legal Division.

(3) In their decisions the members of the Boards shall not be bound by any instructions and shall comply only with the provisions of this Convention.

(4) The Rules of Procedure of the Boards of Appeal and the Enlarged Board of Appeal shall be adopted in accordance with the Implementing Regulations. They shall be subject to the approval of the Administrative Council.

Breach gives rise to grounds for petition for review – Article 112a (2)(a)

Documents relating to exclusion of or objections to Board of Appeal and Enlarged Board of Appeal members are excluded from public inspection – Rule 144 (a)

Article 24 Exclusion and objection (1) Members of the Boards of Appeal or of the Enlarged Board of Appeal may not take part in a case in which they have any personal interest, or if they have previously been involved as representatives of one of the parties, or if they participated in the decision under appeal.

(2) If, for one of the reasons mentioned in paragraph 1, or for any other reason, a member of a Board of Appeal or of the Enlarged Board of Appeal considers that he should not take part in any appeal, he shall inform the Board accordingly.

(3) Members of a Board of Appeal or of the Enlarged Board of Appeal may be objected to by any party for one of the reasons mentioned in paragraph 1, or if suspected of partiality. An objection shall not be admissible if, while being aware of a reason for objection, the party has taken a procedural step.

An objection may not be based upon the nationality of members.

(4) The Boards of Appeal and the Enlarged Board of Appeal shall decide

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Part I: General and Institutional Provisions

Articles 24-27

as to the action to be taken in the cases specified in paragraphs 2 and 3, without the participation of the member concerned. For the purposes of taking this decision the member objected to shall be replaced by his alternate.

Other Relevant Rules Rule 144 Parts of the file excluded from inspection

See Article 128, page 161

Comment: In G5/91, the Enlarged Board of Appeal held that the principle of impartiality established by Article 24 EPC applies to all departments of the EPO and not just to members of the Boards of Appeal and the Enlarged Board of Appeal.

Article 25 Technical opinion At the request of the competent national court hearing an infringement or revocation action, the European Patent Office shall be obliged, on payment of an appropriate fee, to give a technical opinion concerning the European patent which is the subject of the action. The Examining Division shall be responsible for issuing such opinions.

Chapter IV The Administrative Council Article 26 Membership (1) The Administrative Council shall be composed of the Representatives and the alternate Representatives of the Contracting States. Each Contracting State shall be entitled to appoint one Representative and one alternate Representative to the Administrative Council.

(2) The members of the Administrative Council may, in accordance with the Rules of Procedure of the Administrative Council, be assisted by advisers or experts.

Article 27 Chairmanship (1) The Administrative Council shall elect a Chairman and a Deputy Chairman from among the Representatives and alternate Representatives of the Contracting States. The Deputy Chairman shall ex officio replace the Chairman if he is prevented from carrying out his duties.

(2) The terms of office of the Chairman and the Deputy Chairman shall be three years. They may be re-elected.

19

Fee for technical opinion sought by national court is €3,860 – RRF Article 2 (20) 75% of fee refunded if request withdrawn before opinion drawn up – RRF Article 10

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Article 28-31

A Guide to the EPC 2000 Article 28 Board

(1) When there are at least eight Contracting States, the Administrative Council may set up a Board composed of five of its members.

(2) The Chairman and the Deputy Chairman of the Administrative Council shall be members of the Board ex officio; the other three members shall be elected by the Administrative Council.

(3) The term of office of the members elected by the Administrative Council shall be three years.

They may not be re-elected.

(4) The Board shall perform the duties assigned to it by the Administrative Council in accordance with the Rules of Procedure.

Article 29 Meetings (1) Meetings of the Administrative Council shall be convened by its Chairman.

(2) The President of the European Patent Office shall take part in the deliberations of the Administrative Council.

(3) The Administrative Council shall hold an ordinary meeting once each year. In addition, it shall meet on the initiative of its Chairman or at the request of one third of the Contracting States.

(4) The deliberations of the Administrative Council shall be based on an agenda, and shall be held in accordance with its Rules of Procedure.

(5) The provisional agenda shall contain any question whose inclusion is requested by any Contracting State in accordance with the Rules of Procedure.

Article 30 Attendance of observers (1) The World Intellectual Property Organization shall be represented at the meetings of the Administrative Council, in accordance with an agreement between the Organisation and the World Intellectual Property Organization.

(2) Other intergovernmental organisations entrusted with carrying out international procedures in the field of patents, with which the Organisation has concluded an agreement, shall be represented at the meetings of the Administrative Council, in accordance with such agreement.

(3) Any other intergovernmental and international non-governmental organisations carrying out an activity of interest to the Organisation may be invited by the Administrative Council to be represented at its meetings during any discussion of matters of mutual interest.

Article 31 Languages of the Administrative Council (1) The languages used in the deliberations of the Administrative Council shall be English, French and German.

(2) Documents submitted to the Administrative Council, and the minutes of its deliberations, shall be drawn up in the three languages specified in paragraph 1.

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Part I: General and Institutional Provisions

Articles 32-33

Article 32 Staff, premises and equipment The European Patent Office shall place at the disposal of the Administrative Council, and of any committee established by it, such staff, premises and equipment as may be necessary for the performance of their duties.

Article 33 Competence of the Administrative Council in certain cases (1) The Administrative Council shall be competent to amend: (a) the time limits laid down in this Convention; (b) Parts II to VIII and Part X of this Convention, to bring them into line with an international treaty relating to patents or European Community legislation relating to patents; (c) the Implementing Regulations.

(2) The Administrative Council shall be competent, in conformity with this Convention, to adopt or amend: (a) the Financial Regulations; (b) the Service Regulations for permanent employees and the conditions of employment of other employees of the European Patent Office, the salary scales of the said permanent and other employees, and also the nature of any supplementary benefits and the rules for granting them; (c) the Pension Scheme Regulations and any appropriate increases in existing pensions to correspond to increases in salaries; (d) the Rules Relating to Fees; (e) its Rules of Procedure.

(3) Notwithstanding Article 18, paragraph 2, the Administrative Council shall be competent to decide, in the light of experience, that in certain categories of cases Examining Divisions shall consist of one technically qualified examiner only. Such decision may be rescinded.

(4) The Administrative Council shall be competent to authorise the President of the European Patent Office to negotiate and, subject to its approval, to conclude agreements on behalf of the European Patent Organisation with States, with intergovernmental organisations and with documentation centres set up on the basis of agreements with such organisations.

(5) The Administrative Council may not take a decision under paragraph 1 (b): – concerning an international treaty, before its entry into force; – concerning European Community legislation, before its entry into force or, where that legislation lays down a period for its implementation, before the expiry of that period.

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Article 18 (2) – An Examining Division shall consist of 3 technically qualified examiners

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Article 33-35

A Guide to the EPC 2000

Comment: Article 33 (1)(b) EPC gives the Administrative Council the power to amend the EPC to bring it into line with international treaties and European Community legislation relating to patents. This enables the EPC to be amended where consensus has already been reached at EU, WIPO or WTO level without the need for a separate diplomatic conference and subsequent national ratification, thereby reducing delays in amending the EPC to reflect such international changes.

The power to amend the EPC under Article 33 (1)(b) is restricted by Article 35 (3) EPC. This provides that representatives of all EPC Contracting States must be present at any meeting exercising the power under Article 33 (1)(b) EPC and that any Contracting State has the power to veto a proposed amendment. This veto can be exercised either at the meeting or within the 12 months following it, allowing time for national governments to reject a proposed amendment and prevent it from coming into force.

Article 34 Voting rights (1) The right to vote in the Administrative Council shall be Article 36 – Weighting of votes on fees and restricted to the Contracting States. budget issues

(2) Each Contracting State shall have one vote, except where Article 36 applies.

Article 7 – Setting up of EPO sub-offices Article 11 (1) – Appointment of EPO President

Article 35 Voting Rules

Article 33 – Amendment of EPC and (1) The Administrative Council shall take its decisions, other Implementing Regulations

than those referred to in paragraphs 2 and 3, by a simple

Article 39 (1) – Payments by Contracting States majority of the Contracting States represented and voting. to EPO

Article 40 (2) and (4) – Additional payments by (2) A majority of three-quarters of the votes of the Contracting Contracting States to EPO where European Patent States represented and voting shall be required for the Organisation cannot balance its budget decisions which the Administrative Council is empowered Article 46 – Adoption of budget

to take under Article 7, Article 11, paragraph 1, Article 33,

Article 134a – Admission and conduct of paragraphs 1 (a) and (c), and 2 to 4, Article 39, paragraph 1, professional representatives Article 40, paragraphs 2 and 4, Article 46, Article 134a, Article Article 149a (2) – Establishing European 149a, paragraph 2, Article 152, Article 153, paragraph 7, Patents Court and other agreements Article 166 and Article 172 Article 152 – EPO as International Searching Authority and International Preliminary (3) Unanimity of the Contracting States voting shall be required for the decisions which the Administrative Council Examining Authority Article 153 (7) – Reductions in search fees for is empowered to take under Article 33, paragraph 1 (b). The Euro-PCT applications or dispensing with Administrative Council shall take such decisions only if all supplementary search reports the Contracting States are represented. A decision taken on Article 166 – Admission of new Contracting the basis of Article 33, paragraph 1 (b), shall not take effect if States a Contracting State declares, within twelve months of the Article 172 – Revision of EPC

date of the decision, that it does not wish to be bound by that

Article 33 (1)(b) – Revision of EPC by decision.

Administrative Council to align with (4) Abstentions shall not be considered as votes. international treaties or European Community 22 legislation

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Part I: General and Institutional Provisions

Articles 36-38

Article 36 Weighting of votes (1) In respect of the adoption or amendment of the Rules Relating to Fees and, if the financial contribution to be made by the Contracting States would thereby be increased, the adoption of the budget of the Organisation and of any amending or supplementary budget, any Contracting State may require, following a first ballot in which each Contracting State shall have one vote, and whatever the result of this ballot, that a second ballot be taken immediately, in which votes shall be given to the States in accordance with paragraph 2. The decision shall be determined by the result of this second ballot.

(2) The number of votes that each Contracting State shall have in the second ballot shall be calculated as follows: (a) the percentage obtained for each Contracting State in respect of the scale for the special financial contributions, pursuant to Article 40, paragraphs 3 and 4, shall be multiplied by the number of Contracting States and divided by five; (b) the number of votes thus given shall be rounded upwards to the next whole number; (c) five additional votes shall be added to this number; (d) nevertheless, no Contracting State shall have more than 30 votes.

Article 40 (3) and (4) – Additional payments by Contracting States to EPO where European Patent Organisation cannot balance its budget

Chapter V Financial provisions Article 37 Budgetary funding The budget of the Organisation shall be financed: (a) by the Organisation’s own resources; (b) by payments made by the Contracting States in respect of renewal fees for European patents levied in these States; (c) where necessary, by special financial contributions made by the Contracting States; (d) where appropriate, by the revenue provided for in Article 146; (e) where appropriate, and for tangible assets only, by third-party borrowings secured on land or buildings; (f) where appropriate, by third party funding for specific projects.

Article 38 The Organisation’s own resources The Organisation’s own resources shall comprise: (a) all income from fees and other sources and also the reserves of the Organisation; (b) the resources of the Pension Reserve Fund, which shall be treated as a special class of asset of the Organisation, designed to support the Organisation’s pension scheme by providing the appropriate reserves.

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Article 146 – Cover for expenditure for special tasks assigned to EPO by Contracting States

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Article 39-40

A Guide to the EPC 2000 Article 39 Payments by the Contracting States in respect of renewal fees for European patents (1) Each Contracting State shall pay to the Organisation in respect of each renewal fee received for a European patent in that State an amount equal to a proportion of that fee, to be fixed by the Administrative Council; the proportion shall not exceed 75% and shall be the same for all Contracting States. However, if the said proportion corresponds to an amount which is less than a uniform minimum amount fixed by the Administrative Council, the Contracting State shall pay that minimum to the Organisation.

(2) Each Contracting State shall communicate to the Organisation such information as the Administrative Council considers to be necessary to determine the amount of these payments.

(3) The due dates for these payments shall be determined by the Administrative Council.

(4) If a payment is not remitted fully by the due date, the Contracting State shall pay interest from the due date on the amount remaining unpaid.

Article 40 Level of fees and payments – Special financial contributions Article 38 – Resources of (1) The amounts of the fees referred to in Article 38 and the proportion European Patent Organisation

referred to in Article 39 shall be fixed at such a level as to ensure that the

Article 39 – Proportion of renewal fees to be paid by revenue in respect thereof is sufficient for the budget of the Organisation to Contracting States to be balanced.

European Patent Organisation (2) However, if the Organisation is unable to balance its budget under the

conditions laid down in paragraph 1, the Contracting States shall remit to the Organisation special financial contributions, the amount of which shall be determined by the Administrative Council for the accounting period in question.

(3) These special financial contributions shall be determined in respect of any Contracting State on the basis of the number of patent applications filed in the last year but one prior to that of entry into force of this Convention, and calculated in the following manner: (a) one half in proportion to the number of patent applications filed in that Contracting State; (b) one half in proportion to the second highest number of patent applications filed in the other Contracting States by natural or legal persons having their residence or principal place of business in that Contracting State. However, the amounts to be contributed by States in which the number of patent applications filed exceeds 25 000 shall then be taken as a whole and a new scale drawn up in proportion to the total number of patent applications filed in these States.

(4) Where the scale position of any Contracting State cannot be established in accordance with paragraph 3, the Administrative Council shall, with the consent of that State, decide its scale position.

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Part I: General and Institutional Provisions

Articles 40-44

(5) Article 39, paragraphs 3 and 4, shall apply mutatis mutandis to the special Article 39 (3) and (4) – Due dates and interest on financial contributions. payments by Contracting

(6) The special financial contributions shall be repaid with interest at a rate States to European Patent which shall be the same for all Contracting States. Repayments shall be made Organisation in so far as it is possible to provide for this purpose in the budget; the amount thus provided shall be distributed among the Contracting States in accordance with the scale referred to in paragraphs 3 and 4.

(7) The special financial contributions remitted in any accounting period shall be repaid in full before any such contributions or parts thereof remitted in any subsequent accounting period are repaid.

Article 41 Advances (1) At the request of the President of the European Patent Office, the Contracting States shall grant advances to the Organisation, on account of their payments and contributions, within the limit of the amount fixed by the Administrative Council.

The amount of such advances shall be determined in proportion to the amounts due from the Contracting States for the accounting period in question.

(2) Article 39, paragraphs 3 and 4, shall apply mutatis mutandis to the advances. Article 39 (3) and (4) –

Due dates and interest on payments by Contracting States to European Patent Organisation

Article 42 Budget (1) The budget of the Organisation shall be balanced. It shall be drawn up in accordance with the generally accepted accounting principles laid down in the Financial Regulations. If necessary, there may be amending or supplementary budgets.

(2) The budget shall be drawn up in the unit of account fixed in the Financial Regulations.

Article 43 Authorisation for expenditure (1) The expenditure entered in the budget shall be authorised for the duration of one accounting period, unless the Financial Regulations provide otherwise.

(2) In accordance with the Financial Regulations, any appropriations, other than those relating to staff costs, which are unexpended at the end of the accounting period may be carried forward, but not beyond the end of the following accounting period.

(3) Appropriations shall be set out under different headings according to type and purpose of the expenditure and subdivided, as far as necessary, in accordance with the Financial Regulations.

Article 44 Appropriations for unforeseeable expenditure (1) The budget of the Organisation may contain appropriations for unforeseeable expenditure.

(2) The employment of these appropriations by the Organisation shall be subject to the prior approval of the Administrative Council.

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Article 45-48

A Guide to the EPC 2000 Article 45 Accounting period The accounting period shall commence on 1 January and end on 31 December.

Article 46 Preparation and adoption of the budget (1) The President of the European Patent Office shall submit the draft budget to the Administrative Council no later than the date prescribed in the Financial Regulations.

(2) The budget and any amending or supplementary budget shall be adopted by the Administrative Council.

Article 47 Provisional budget (1) If, at the beginning of the accounting period, the budget has not been adopted by the Administrative Council, expenditures may be effected on a monthly basis per heading or other division of the budget, in accordance with the Financial Regulations, up to one twelfth of the budget appropriations for the preceding accounting period, provided that the appropriations thus made available to the President of the European Patent Office shall not exceed one twelfth of those provided for in the draft budget.

(2) The Administrative Council may, subject to the observance of the

Article 37 (b) – Payments by other provisions laid down in paragraph 1, authorise expenditure in Contracting States to European Patent Organisation in respect of renewal fees excess of one twelfth of the appropriations. for European patents (3) The payments referred to in Article 37 (b), shall continue to be made, Article 39 – Proportions, due dates and interest on payments by Contracting States to European Patent Organisation in respect of renewal fees for European patents

on a provisional basis, under the conditions determined under Article 39 for the year preceding that to which the draft budget relates.

(4) The Contracting States shall pay each month, on a provisional basis and in accordance with the scale referred to in Article 40, Article 40 (3) and (4) – Additional paragraphs 3 and 4, any special financial contributions necessary to payments by Contracting States to EPO ensure implementation of paragraphs 1 and 2. Article 39, paragraph where European Patent Organisation 4, shall apply mutatis mutandis to these contributions. cannot balance its budget

Article 39 (4) – Interest on payments

by Contracting States to European Patent Organisation

Article 48 Budget implementation (1) The President of the European Patent Office shall implement the budget and any amending or supplementary budget on his own responsibility and within the limits of the allocated appropriations.

(2) Within the budget, the President of the European Patent Office may, in accordance with the Financial Regulations, transfer funds between the various headings or subheadings.

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Part I: General and Institutional Provisions

Articles 49-51

Article 49 Auditing of accounts (1) The income and expenditure account and a balance sheet of the Organisation shall be examined by auditors whose independence is beyond doubt, appointed by the Administrative Council for a period of five years, which shall be renewable or extensible.

(2) The audit shall be based on vouchers and shall take place, if necessary, in situ. The audit shall ascertain whether all income has been received and all expenditure effected in a lawful and proper manner and whether the financial management is sound. The auditors shall draw up a report containing a signed audit opinion after the end of each accounting period.

(3) The President of the EPO shall annually submit to the Administrative Council the accounts of the preceding accounting period in respect of the budget and the balance sheet showing the assets and liabilities of the Organisation together with the report of the auditors.

(4) The Administrative Council shall approve the annual accounts together with the report of the auditors and shall discharge the President of the EPO in respect of the implementation of the budget.

Article 50 Financial Regulations The Financial Regulations shall lay down in particular: (a) the arrangements relating to the establishment and implementation of the budget and for the rendering and auditing of accounts; (b) the method and procedure whereby the payments and contributions provided for in Article 37 and the advances provided for in Article 41 are to be made available to the Organisation by the Contracting States; (c) the rules concerning the responsibilities of authorising and accounting officers and the arrangements for their supervision; (d) the rates of interest provided for in Articles 39, 40 and 47; (e) the method of calculating the contributions payable by virtue of Article 146; (f) the composition of and duties to be assigned to a Budget and Finance Committee which should be set up by the Administrative Council; (g) the generally accepted accounting principles on which the budget and the annual financial statements shall be based.

Article 51 Fees (1) The European Patent Office may levy fees for any official task or procedure carried out under this Convention.

(2) Time limits for the payment of fees other than those fixed by this Convention shall be laid down in the Implementing Regulations.

(3) Where the Implementing Regulations provide that a fee shall be paid, they shall also lay down the legal consequences of failure to pay such fee in due time.

(4) The Rules Relating to Fees shall determine in particular the amounts of the fees and the ways in which they are to be paid.

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Article 37 – Financing of European Patent Organisation budget Article 41 – Advances from Contracting States on request of EPO President Article 39 – Interest on payments by Contracting States in respect of renewal fees relating to European patents Article 40 – Interest on special financial contributions where European Patent Organisation unable to balance its budget Article 47 – Interest on further specified contributions by Contracting States Article 146 – Cover for expenditure for special tasks assigned to EPO by Contracting States

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Article 52

A Guide to the EPC 2000

PART II SUBSTANTIVE PATENT LAW Chapter I

Patentability Content of Article 52 (4) moved to Article 53 (c)

Article 52 Patentable inventions (1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1: (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information.

(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

Comment: With the EPC 2000, Article 52 (1) EPC was amended to refer to granting patents for inventions “in all fields of technology”, bringing the wording into line with the first sentence of Article 27 (1) of the TRIPS agreement.

This amendment provides a clear legal basis for the EPO’s current approach to assessing patentable subject-matter, which only allows patents for inventions that have “technical character”, involve “technical teaching” or can be said to provide “technical solutions” to “technical problems”. As is reflected by the applicability of the amendment to all European patents or patent applications regardless of when filed or granted, the change is not expected to have any effect on substantive practice.

Article 52 (4) EPC was deleted and its contents were transferred to Article 53 EPC (see commentary below).

The Enlarged Board of Appeal reviewed the EPO’s approach to the patentability of computer programs in G3/08.

Case law on what constitutes a “patentable” invention may be found in the Case Law of the Boards of Appeal of the European Patent Office, section I – A, pages 136. Article 52 EPC is also discussed in the Guidelines for Examination in the European Patent Office, Part G, Chapters I and II.

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Part II: Substantive Patent Law

Article 53

Article 53 Exceptions to patentability European patents shall not be granted in respect of: (a) inventions the commercial exploitation of which would be contrary to “ordre public” or morality; such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States; (b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof; (c) methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods.

No genetically modified humans, clones or commercial use of embryos – Rule 28 Definition of biotechnological inventions – Rules 26 and 27 Mere discovery of human gene not patentable – Rule 29 (1)

Article 53 (c) previously Article 52 (4)

Related Rules Rule 26 General and definitions (1) For European patent applications and patents concerning biotechnological inventions, the relevant provisions of the Convention shall be applied and interpreted in accordance with the provisions of this Chapter. Directive 98/44/EC of 6 July 1998 on the legal protection of biotechnological inventions shall be used as a supplementary means of interpretation.

(2) “Biotechnological inventions” are inventions which concern a product consisting of or containing biological material or a process by means of which biological material is produced, processed or used.

(3) “Biological material” means any material containing genetic information and capable of reproducing itself or being reproduced in a biological system.

(4) “Plant variety” means any plant grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective of whether the conditions for the grant of a plant variety right are fully met, can be: (a) defined by the expression of the characteristics that results from a given genotype or combination of genotypes, (b) distinguished from any other plant grouping by the expression of at least one of the said characteristics, and (c) considered as a unit with regard to its suitability for being propagated unchanged.

(5) A process for the production of plants or animals is essentially biological if it consists entirely of natural phenomena such as crossing or selection.

(6) “Microbiological process” means any process involving or performed upon or resulting in microbiological material.

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Previously Rule 23b

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Article 53 Previously Rule 23c

A Guide to the EPC 2000 Rule 27 Patentable biotechnological inventions Biotechnological inventions shall also be patentable if they concern: (a) biological material which is isolated from its natural environment or produced by means of a technical process even if it previously occurred in nature; (b) plants or animals if the technical feasibility of the invention is not confined to a particular plant or animal variety; (c) a microbiological or other technical process, or a product obtained by means of such a process other than a plant or animal variety.

Previously Rule 23d Article 53 (a) – Exceptions to patentability

Previously Rule 23e

Rule 28 Exceptions to patentability Under Article 53 (a), European patents shall not be granted in respect of biotechnological inventions which, in particular, concern the following: (a) processes for cloning human beings; (b) processes for modifying the germ line genetic identity of human beings; (c) uses of human embryos for industrial or commercial purposes; (d) processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes.

Rule 29 The human body and its elements (1) The human body, at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene, cannot constitute patentable inventions.

(2) An element isolated from the human body or otherwise produced by means of a technical process, including the sequence or partial sequence of a gene, may constitute a patentable invention, even if the structure of that element is identical to that of a natural element.

(3) The industrial application of a sequence or a partial sequence of a gene must be disclosed in the patent application.

Comment: The EPC 2000 transferred the exclusion of methods of treatment and diagnostic methods in old Article 52 (4) EPC to Article 53 EPC. Additionally, minor editorial amendments were made to align the wording of Article 53 EPC with that of Article 27.2 of TRIPS and Article 6.1 of the EU Directive on the Legal Protection of Biotechnology Inventions.

Previously, while surgical or therapeutic methods were accepted as inventions, old Article 52 (4) EPC excluded them from patentability on the basis of the fiction that such inventions were not industrially applicable. Moving the exclusion to Article 53 EPC clarifies that in reality diagnostic and therapeutic methods are

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Part II: Substantive Patent Law

Articles 53-54

excluded from patentability for public policy reasons. No change of practice is expected to arise from this amendment.

The special rules relating to biotechnological inventions are now found in Rules 26 and 27 EPC. These define biotechnological inventions and provide that they are patentable if they involve either the isolation of biological material from its natural environment or biological material produced by means of a technical process even if it previously occurred in nature (Rule 27 (a) EPC). Certain biotechnological inventions are expressly excluded from patentability, including processes for cloning human beings or modifying human germ lines, inventions involving human embryos and inventions that cause suffering to animals without there being any substantial medical benefits to man or animal (Rule 28 EPC). Parts of the human body are also excluded from patentability (Rule 29 (1) EPC) as is the patenting of human gene sequences where an industrial application of the sequence is not also disclosed (Rule 29 (3) EPC). These rules correspond to their counterparts in the EPC prior to its revision.

In general, the exclusions from patentability in Article 53 EPC have been construed narrowly. “diagnostic methods” and “practised on the human or animal body” were considered in G1/04, in which the Enlarged Board of Appeal held that a claim would only fall within the exclusion if it included a diagnostic step and essential preceding steps involving interactions with the human or animal body. Similarly, the term “plant variety” was considered in G1/98, in which the Enlarged Board held that a claim was only excluded from patentability under Article 53 (b) EPC if it covered a single plant variety. If the claim covered multiple plant varieties, it was not so excluded.

In G1/07, the Enlarged Board defined “methods of surgery” as methods comprising or encompassing a step involving substantive physical intervention on the body which require professional medical expertise to be carried out and which entail a substantive health risk even when carried out under professional care.

G2/06 held that Rule 28(c) EPC forbids the patenting of claims directed to products which at the filing date and as described in the application required the destruction of human embryos.

The meaning of “essentially biological processes“ was considered in G2/07 and G1/08. The Enlarged Board held that processes for the production of plants which contain or consist of sexually crossing plants and subsequently selecting plants are in principle excluded from patentability as being "essentially biological" within the meaning of Article 53(b) EPC unless such a process contains an additional technical step which itself introduces or modifies a trait in the genome of a plant.

Case law on matter excluded from patentability may be found in the Case Law of the Boards of Appeal of the European Patent Office, section I-B, pages 37-66.

Biotechnological inventions are discussed in the Guidelines for Examination in the European Patent Office, Part G, Chapter II, section 5. Exceptions to patentability are discussed in the Guidelines for Examination in the European Patent Office, Part G, Chapter II, section 4.

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Article 54 Non-prejudicial Article 55

A Guide to the EPC 2000 disclosures

Article 54 Novelty

–

For the purposes of Articles 54 (2) and (3), “date of filing” means priority date, if priority claimed – Article 89

(1) An invention shall be considered to be new if it does not form part of the state of the art.

(2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European Earlier European patent abstract not patent application. prior art – Article 85

(3) Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in Earlier PCT is prior art only if paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art. regional phase entered – Rule 165 N.B. Article 54 (4) of the EPC 1973 (4) Paragraphs 2 and 3 shall not exclude the patentability of any continues to apply to patents and substance or composition, comprised in the state of the art, for use in patent applications filed before a method referred to in Article 53 (c), provided that its use for any the coming into force of the EPC such method is not comprised in the state of the art.

2000 (see commentary below) Publication of European patent application – Article 93

Article 53 (c) – Surgery, therapy and diagnostic methods

(5) Paragraphs 2 and 3 shall also not exclude the patentability of any substance or composition referred to in paragraph 4 for any specific use in a method referred to in Article 53 (c), provided that such use is not comprised in the state of the art.

Related Rule Article 54 (3) – Prior art effect of earlier European patent applications

Rule 165 The Euro-PCT application as conflicting application under Article 54, paragraph 3

Article 153 (3) – Publication of PCT application in English, French or German

A Euro-PCT application shall be considered as comprised in the state of the art under Article 54, paragraph 3, if in addition to the Article 153 (4) – Filing and publication conditions laid down in Article 153, paragraph 3 or 4, the filing fee of translation of PCT application into under Rule 159, paragraph 1 (c) has been paid.

English, French or German Rule 159 (1)(c) – Filing fee for entry of Euro-PCT application into regional phase

Other Relevant Rules Rule 159 The European Patent Office as a See Article 153, page 182 designated or elected Office – Requirements for entry into the European phase

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Part II: Substantive Patent Law

Article 54

Comment: The novelty of a European patent application is assessed against the state of the art as of its filing date, or, if priority is claimed, its priority date (Article 54 (1) and Article 89 EPC). The “state of the art” is defined by Article 54 (2) EPC as everything made available to the public by means of a written or oral description, by use, or in any other way.

Additionally, Article 54 (3) EPC provides that for the purposes of assessing novelty, later published European patent applications having earlier priority or filing dates also form part of the state of the art. Previously, later published European patent applications having earlier priority or filing dates were only considered part of the state of the art to the extent that the same Contracting States were designated in the earlier and later applications. This restriction has been dropped and later published European patent applications having priority or filing dates earlier than the priority or filing dates of European patent applications filed on or after 13 December 2007 are considered prior art for the assessment of novelty in respect of all Contracting States.

The change does not affect patent applications filed prior to implementation of the EPC 2000. For such applications and granted patents based on them, old Article 54 (4) EPC continues to apply. This section read: (4) Paragraph 3 shall be applied only in as far as a Contracting State designated in respect of the later application, was also designated in respect of the earlier application as published.

In relation to the old law, the Enlarged Board of Appeal in G4/98 held that the Contracting States indicated on an application when published were determinative as to the Article 54 (3) prior art effect of an earlier European patent application, regardless whether designations subsequently lapsed due to non-payment of designation fees.

Article 54 (4) EPC corresponds to former Article 54 (5) EPC but has been amended to take account of the transfer of provisions excluding surgical, therapeutic and diagnostic methods from patentability. These provisions were previously in Article 52 (4) EPC but are now in Article 53 (c) EPC. Article 54 (5) was introduced when the EPC 2000 came into effect and provides an explicit basis for claims based on the discovery of new uses for medical products. Previously the acceptability of such claims was based on Enlarged Board of Appeal decisions G1/83, G5/83 and G6/83.

In G1/92, the Enlarged Board of Appeal held that making a substance publicly

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Articles 54-55

A Guide to the EPC 2000

available makes its composition also available, irrespective of whether there are reasons to analyse the composition. The test for novelty is therefore entirely objective and there is no requirement for evidence that anyone would be motivated to undertake a compositional analysis G2/08 held that Article 54(5) EPC does not exclude patenting a medicament for use in a new treatment of an illness even if it is already known to treat the illness using the medicament in a different way. Patent protection is therefore potentially available even if the only novel feature in a claim to a medicament for use in a new treatment is that a different dosage regime is to be used.

Case law on the definition of novelty may be found in the Case Law of the Boards of Appeal of the European Patent Office, section I – C, pages 70-162. The definition of novelty in Article 54 EPC is discussed in the Guidelines for Examination in the European Patent Office, Part G, Chapter VI with the definition of the State of the Art being discussed in Part G, Chapter IV. Article 55 Non-prejudicial disclosures Article 54 – Assessment of (1) For the application of Article 54, a disclosure of the invention shall not be novelty taken into consideration if it occurred no earlier than six months preceding

the filing of the European patent application and if it was due to, or in

Supporting certificate for consequence of: international exhibition due (a) an evident abuse in relation to the applicant or his legal predecessor, or within four months of filing (b) the fact that the applicant or his legal predecessor has displayed the European patent application – Rule 25 invention at an official, or officially recognised, international

exhibition falling within the terms of the Convention on international exhibitions signed at Paris on 22 November 1928 and last revised on 30 November 1972.

(2) In the case of paragraph 1 (b), paragraph 1 shall apply only if the applicant states, when filing the European patent application, that the invention has been so displayed and files a supporting certificate within the time limit and under the conditions laid down in the Implementing Regulations.

Related Rule Previously Rule 23

Rule 25 Certificate of exhibition

Article 55 (2) – Certificate Within four months of filing the European patent application, the applicant for international exhibition shall file the certificate referred to in Article 55, paragraph 2, which: Notification of loss of rights without decision – Rule 112 Further processing available – Article 121

(a) is issued at the exhibition by the authority responsible for the protection of industrial property at that exhibition; (b) states that the invention was in fact displayed there; (c) states the opening date of the exhibition and, where the invention was disclosed later than on that date, the date on which the invention was first disclosed; and 34

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Part II: Substantive Patent Law

Articles 55-56

(d) is accompanied by an identification of the invention, duly authenticated by the abovementioned authority.

Other Relevant Rules Rule 112 Noting of loss of rights Rule 135 Further processing

See Article 113, page 135 See Article 121, page 148

Comment: Article 55 EPC carves out two very limited exceptions to the requirement for absolute novelty in Article 54 EPC. The first protects applicants from disclosures made in breach of confidence. The second permits pre-filing disclosure at officially recognised exhibitions under the terms of the Paris Convention. A list of such exhibitions is published periodically by the European Patent Office, with normally only one or two occurring in any given year.

If a disclosure covered by one of these exceptions occurs, a European patent application must be filed within six months to avoid loss of novelty. It is not sufficient that a European patent application claims priority from an earlier patent application filed within the six-month window (see G3/98 and G2/99).

Where an application is filed within six months of disclosure at an internationally recognised exhibition, a certificate issued by the exhibition authorities confirming the disclosure of the invention at the exhibition, the dates on which the invention was disclosed and the dates of the exhibition itself is due within four months (Rule 25 EPC). Failure to file the certificate in due time results in the disclosure forming part of the state of the art for the assessment of novelty and inventive step (Article 55 (2) EPC). The consequences of failing to file a certificate in due time can be avoided if the certificate is filed and the fee for further processing is paid within two months of notification of loss of rights (Article 121 and Rule 135 EPC).

Case law on non-prejudicial disclosures may be found in the Case Law of the Boards of Appeal of the European Patent Office, section I – C – 1.8, pages 76-77.

Non-prejudicial disclosures under Article 55 EPC are also discussed in the Guidelines for Examination in the European Patent Office, Part G, Chapter V. The requirements for filing a certificate following disclosure at an international exhibition are discussed in the Guidelines for Examination in the European Patent Office, Part A, Chapter IV, section 3.

Article 56 Inventive step An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, Article 54 (3) – Content of paragraph 3, these documents shall not be considered in deciding whether prior-filed European patent applications there has been an inventive step.

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Articles 56-59

A Guide to the EPC 2000

Comment: Case law on inventive step, including the European Patent Office’s “problem-andsolution” approach, may be found in the Case Law of the Boards of Appeal of the European Patent Office, section I – D, pages 163-233. The definition of inventive step under Article 56 EPC is discussed in the Guidelines for Examination in the European Patent Office, Part G, Chapter VII. Article 57 Industrial application An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture.

Comment: Case law on the European Patent Office’s approach to industrial applicability may be found in the Case Law of the Boards of Appeal of the European Patent Office, section I – E, pages 234-240. The requirement for industrial applicability is discussed in the Guidelines for Examination in the European Patent Office, Part G, Chapter III.

Chapter II Persons entitled to apply for and obtain a European patent – Mention of the inventor Article 58 Entitlement to file a European patent application Grant of European patent to different applicants in different Contracting States – Rule 72 Appointment of common representative – Rule 151

A European patent application may be filed by any natural or legal person, or any body equivalent to a legal person by virtue of the law governing it.

Article 59 Multiple applicants A European patent application may also be filed either by joint applicants or by two or more applicants designating different Contracting States.

Other Relevant Rules Rule 72 Grant of the European patent to different applicants

See Article 97, page 104

Rule 151 Appointment of a common representative

See Article 133, page 166

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Part II: Substantive Patent Law

Articles 59-60

Comment: Rule 151 EPC requires a common representative to be appointed where a European patent application is filed on behalf of more than one applicant. Any professional representative appointed is taken to be the common representative.

Where joint applicants appoint different professional representatives, the professional representative appointed by the first-named applicant is considered to be the common representative. If no professional representative is appointed, the first-named applicant is deemed to fulfil the role (Rule 151 (1) EPC).

Similar rules apply if a European patent application is subsequently transferred to multiple applicants (Rule 151 (2) EPC).

Rule 72 EPC provides that where there are different applicants in respect of different Contracting States, the EPO will grant European patents to the applicants named for each State accordingly.

Post-grant revocation or limitation proceedings can only be filed with the agreement of all the proprietors in all Contracting States where the patent has effect. If a single proprietor files a request for limitation or revocation but is not the proprietor in all the relevant Contracting States, the request must list the names and addresses of the other proprietors and be accompanied by evidence that the requester is authorised to act on their behalf (Rule 92 (2)(c) EPC; see commentary on Article 105b EPC).

Article 60 Right to a European patent (1) The right to a European patent shall belong to the inventor or his successor in title. If the inventor is an employee, the right to a European patent shall be determined in accordance with the law of the State in which the employee is mainly employed; if the State in which the employee is mainly employed cannot be determined, the law to be applied shall be that of the State in which the employer has the place of business to which the employee is attached.

(2) If two or more persons have made an invention independently of each other, the right to a European patent therefor shall belong to the person whose European patent application has the earliest date of filing, provided that this first application has been published.

(3) In proceedings before the European Patent Office, the applicant shall be deemed to be entitled to exercise the right to a European patent.

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For the purposes of Article 60 (2), “date of filing” means priority date, if priority claimed – Article 89

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Article 61

A Guide to the EPC 2000

Party challenging entitlement can apply to EPO to stay examination pending court decision – Rule 14

Article 61 European patent applications filed by non-entitled persons

No withdrawal of application or designations permitted during stay pending outcome of entitlement (1) If by a final decision it is adjudged that a person other proceedings – Rule 15

than the applicant is entitled to the grant of the European

Any replacement application must be filed before grant of challenged application and within 3 months of court patent, that person may, in accordance with the Implementing Regulations: decision on entitlement – Rule 16 Three-month period cannot be extended using further processing – Rule 135 Once replacement application filed, earlier application deemed withdrawn – Rule 17 (1) Filing and search fees must be paid within 1 month of filing replacement application – Rule 17 (2) Designation fees due within 6 months of publication of search report for replacement application – Rule 17 (3) Same procedures apply if replacement applicant held entitled to only part of original application – Rule 18

(a) prosecute the European patent application as his own application in place of the applicant; (b) file a new European patent application in respect of the same invention; or (c) request that the European patent application be refused.

(2) Article 76, paragraph 1, shall apply mutatis mutandis to a new European patent application filed under paragraph 1 (b).

Original application number must be provided on filing of replacement application – Rule 41 (2)(f) Replacement application does not incur renewal fees for filing year or preceding years – Rule 51 (6) If designation of inventor required but not filed, EPO will set deadline for filing it – Rule 60 (2) Party challenging entitlement can apply to EPO to stay opposition pending court decision – Rule 78 Original application remains available on file for public inspection – Rule 147 (5) Article 76 (1) – Replacement applications must be filed directly at EPO and may only contain subjectmatter within original application

Related Rules Rule 14 Stay of proceedings

Previously Rules 13 (1) – (3) and (5)

(1) If a third party provides evidence that he has instituted proceedings against the applicant seeking a decision within the meaning of Article 61, paragraph 1, the Article 61 (1) – Entitlement proceedings proceedings for grant shall be stayed unless the third party communicates to the European Patent Office in writing his consent to the continuation of such Neither application nor designations of Contracting proceedings. Such consent shall be irrevocable. However, States may be withdrawn while proceedings are proceedings for grant shall not be stayed before the stayed – Rule 15 publication of the European patent application.

Article 61 (1) – Entitlement proceedings

(2) Where evidence is provided that a final decision within the meaning of Article 61, paragraph 1, has been taken, the European Patent Office shall inform the applicant and any

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Part II: Substantive Patent Law

Article 61

other party that the proceedings for grant shall be resumed as from the date stated in the communication, unless a new European patent application under Article 61, paragraph 1 (b), has been filed for all the designated Contracting States. If the decision is in favour of the third party, the proceedings may not be resumed earlier than three months after the decision has become final, unless the third party requests the resumption.

Article 61 (1)(b) – Replacement application filed when original applicant found not to be entitled Rules 14 (2) – (4) also apply to oppositions – Rule 78 (1)

(3) Upon staying the proceedings for grant, or thereafter, the European Patent Office may set a date on which it intends to resume the proceedings for grant, regardless of the stage reached in the national proceedings instituted under paragraph 1. It shall communicate this date to the third party, the applicant and any other party. If no evidence has been provided by that date that a final decision has been taken, the European Patent Office may resume proceedings.

(4) All periods other than those for the payment of renewal fees, running at the date of the stay of proceedings, shall be interrupted by such stay. The time which has not yet elapsed shall begin to run from the date on which proceedings are resumed. However, the time still to run after such resumption shall not be less than two months.

Rule 15 Limitation on withdrawals

Previously Rule 14

From the date on which a third party provides evidence that he has instituted national proceedings under Rule 14, paragraph 1, and up to the date on which the proceedings for grant are resumed, neither the European patent application nor the designation of any Contracting State may be withdrawn.

Rule 14 (1) – Party challenging entitlement can apply to EPO to stay proceedings pending decision of national court

Rule 16 Procedure under Article 61, paragraph 1

Previously elements of Article 61 (1)

(1) A person entitled to the grant of a European patent may only avail himself of the remedies under Article 61, paragraph 1, if: (a) he does so no later than three months after the decision recognising his entitlement has become final, and (b) the European patent has not yet been granted.

Article 61 (1) – Prosecuting existing application, filing replacement application or requesting that existing application be refused

Rule 16 also applies in event of decision confirming partial (2) Such remedies shall only apply in respect of Contracting States entitlement – Rule 18 (1) designated in the European patent application in which the decision Three-month period cannot be has been taken or recognised or must be recognised on the basis of extended using further processing – Rule 135 (2)

the Protocol on Recognition.

Rule 17 Filing of a new European patent application by the entitled person (1) Where the person adjudged by a final decision to be entitled to the grant of the European patent files a new European patent application under Article 61, paragraph 1 (b), the original application shall be deemed to be withdrawn on the date of filing the new

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Previously Rules 15 (1) and (2)

Rule 17 also applies in event of decision confirming partial entitlement – Rule 18 (1) Article 61 (1)(b) – Replacement application filed when original applicant found not to be entitled

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Article 61

Payment of filing and search fees checked if application sufficient to obtain filing date – Rule 57 (e) and Article 90 (3)

A Guide to the EPC 2000 application for the Contracting States designated therein in which the decision has been taken or recognised or must be recognised on the basis of the Protocol on Recognition.

(2) The filing fee and search fee shall be paid within one month of filing the new application. If the filing fee or search fee is not paid in Search fee refunded in part if search based on content of earlier search – due time, the application shall be deemed to be withdrawn.

RRF 9 (2) (3) The designation fee shall be paid within six months of the date on which the European Patent Bulletin mentions the publication of Rule 39 (2) – If designation fee not the European search report drawn up in respect of the new paid, application deemed withdrawn application. Rule 39, paragraphs 2 and 3, shall apply.

Rule 39 (3) – Designation fee not refundable

Previously Rules 16 (1) and (2)

Rule 18 Partial transfer of the right to the European patent

(1) If a final decision determines that a third party is entitled to the Article 61 – Remedies where grant of a European patent in respect of only part of the subjectEuropean patent filed by person not matter disclosed in the original European patent application, Article entitled 61 and Rules 16 and 17 shall apply to such part.

Rule 16 – Time limits and conditions for filing replacement application

(2) Where appropriate, the original European patent application shall contain, for the designated Contracting States in which the decision Rule 17 – Procedures for filing replacement application by entitled was taken or recognised or must be recognised on the basis of the Protocol on Recognition, claims, a description and drawings which person are different from those for the other designated Contracting States.

Other Relevant Rules Rule 39 Rule 41 Rule 51 Rule 57

Designation fees Request for grant Payment of renewal fees Examination as to formal requirements Rule 60 Subsequent designation of the inventor Rule 78 Procedure where the proprietor of the patent is not entitled Rule 135 Further processing Rule 147 Constitution, maintenance and preservation of files

See Article 79, page 63 See Article 78, page 56 See Article 86, page 79 See Article 90, page 88 See Article 81, page 67 See Article 101, page 109 See Article 121, page 148 See Article 128, page 162

Comment: The Protocol on Jurisdiction and the Recognition of Decisions in Respect of the Right to the Grant of a European Patent determines where entitlement proceedings may be brought when a European patent application is alleged to have been filed by a person who is not entitled to it.

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Article 61

Such proceedings must be brought in the courts of the Contracting State where the applicant has its residence or principal place of business (Article 2 of the Protocol on Recognition). If the applicant is not a resident of, and does not have a principal place of business in, an EPC Contracting State, but the party claiming a right in the application is or does, proceedings are to be brought in the state where the claiming party has its residence or principal place of business (Article 3 of the Protocol on Recognition). In the case of employee inventions, the courts of the Contracting State whose law governs the employment contract have jurisdiction (Article 4 of the Protocol on Recognition). Where the dispute arises from an agreement between the parties, the terms of the agreement may determine which courts have jurisdiction (Article 5 of the Protocol on Recognition).

If none of the above rules apply, the German courts are to be used (Article 6 of the Protocol on Recognition).

Under Rule 14 (1) EPC, if a third party provides evidence to the EPO that it has brought entitlement proceedings against an applicant for a European patent, the prosecution of the application will be stayed unless the party bringing the entitlement proceedings consents to it continuing. Any such consent is irrevocable. Once evidence that proceedings have been initiated has been filed, the applicant is barred from withdrawing the application or designation of Contracting States (Rule 15 EPC). All time periods with the exception of due dates for paying renewal fees are stayed pending the resumption of proceedings (Rule 14 (4) EPC).

Proceedings are resumed when the EPO receives evidence that a final decision has been taken on entitlement to the disputed application (Rule 14 (2) EPC). Alternatively, the EPO may set a date when proceedings will re-start regardless of the state of the national entitlement proceedings (Rule 14 (3) EPC). When proceedings re-start, all stayed time periods also re-start with terms of less than two months being re-set to at least two months (Rule 14 (4) EPC).

If the relevant national court rules that the party challenging entitlement is entitled to the European patent application, the entitled party may either prosecute the existing application, file a replacement application or request the refusal of the existing application (Article 61 (1) EPC). The chosen remedy must be initiated within three months of the date of the court decision (Rule 16 (1)(a) EPC). This three-month period cannot be extended using further processing (Rule 135 (2) EPC).

A replacement application must be filed directly at the EPO and must be in, or be translated into, the language of the disputed application. If a translation is required, the usual rules and time limits for filing translations of applications apply (see commentary on Article 14 EPC). The replacement application may only cover subject-matter present in the original application (Article 61 (2) EPC) and must indicate the number of the original disputed application (Rule 41 (2)(f) EPC). If a designation of inventor is required but not filed with the replacement application, the EPO will set a term for filing it (Rule 60 (2) EPC). Filing and search fees are due within one month of filing the replacement application (Rule 17 (2) EPC) and designation fees are due within six months of

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Articles 61-62

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publication of the search report on the new application (Rule 17 (3) EPC). There is no requirement to pay any renewal fees for the year when a replacement application is filed nor for any earlier year (Rule 51 (6) EPC). If a replacement application is filed, the original disputed application is deemed withdrawn (Rule 17 (1) EPC).

Rules 16 (2) and 18 EPC apply where a third party is found to be entitled in respect of only some Contracting States or in respect of only part of the subject-matter of an application. In such a case, the entitled party’s options of prosecuting the application, filing a replacement application or requesting refusal of the challenged application are limited to the extent that entitlement is determined by the court.

In G3/92, the Enlarged Board of Appeal held that the right to file a replacement application still existed even if the application being replaced had already lapsed. The circumstances that gave rise to G3/92 are outlined in the Case Law of the Boards of Appeal of the European Patent Office, section III – P, page 690. Case law relating to the suspension of proceedings while an entitlement action is pending before the national courts may be found in the Case Law of the Boards of Appeal of the European Patent Office, section III – M.3, pages 676-678.

The procedures for filing and examination of replacement applications are discussed in the Guidelines for Examination in the European Patent Office, Part A, Chapter IV, section 2 and Part C, Chapter IX, section 2.

Article 62 Right of the inventor to be mentioned Designation of inventor – Rule 19 Publication of designation of inventor – Rule 20

The inventor shall have the right, vis à vis the applicant for or proprietor of a European patent, to be mentioned as such before the European Patent Office.

Rectification of designation of inventor – Rule 21

Other Relevant Rules See Article 81, page 66 Rule 19 Designation of the inventor Rule 20 Publication of the mention of the See Article 81, page 67 inventor Rule 21 Rectification of the designation of See Article 81, page 67 an inventor

Comment: Article 62 EPC identifies the right of an inventor to be named in a patent application. The requirements for filing and rectifying designations of inventors are dealt with by Article 81 EPC and by Rules 19, 20 and 21 EPC, all of which are discussed in the comments relating to Article 81 EPC below.

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Part II: Substantive Patent Law

Articles 63-65

Chapter III Effects of the European patent and the European patent application Article 63 Term of the European patent (1) The term of the European patent shall be 20 years from the date of filing of the application.

(2) Nothing in the preceding paragraph shall limit the right of a Contracting State to extend the term of a European patent, or to grant corresponding protection which follows immediately on expiry of the term of the patent, under the same conditions as those applying to national patents: (a) in order to take account of a state of war or similar emergency conditions affecting that State; (b) if the subject-matter of the European patent is a product or a process for manufacturing a product or a use of a product which has to undergo an administrative authorisation procedure required by law before it can be put on the market in that State.

(3) Paragraph 2 shall apply mutatis mutandis to European patents granted Article 142 – Unitary patents jointly for a group of Contracting States in accordance with Article 142. covering more than one (4) A Contracting State which makes provision for extension of the term or Contracting State corresponding protection under paragraph 2 (b) may, in accordance with an agreement concluded with the Organisation, entrust to the European Patent Office tasks associated with implementation of the relevant provisions.

Article 64 Rights conferred by a European patent (1) A European patent shall, subject to the provisions of paragraph 2, confer on its proprietor from the date on which the mention of its grant is published in the European Patent Bulletin, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State.

(2) If the subject-matter of the European patent is a process, the protection conferred by the patent shall extend to the products directly obtained by such process.

(3) Any infringement of a European patent shall be dealt with by national law.

Article 65 Translation of the European patent (1) Any Contracting State may, if the European patent as granted, amended or limited by the European Patent Office is not drawn up in one of its official languages, prescribe that the proprietor of the patent shall supply to its central industrial property office a translation of the patent as granted, amended or limited in one of its official languages at his option or, where that State has prescribed the use of one specific official language, in that language. The period for supplying the 43

Translations due within three months of grant. Exceptions are Iceland (four months) and Ireland (six months). Extensions of time available in Czech Republic, Estonia, Hungary, Romania, Slovakia and Turkey

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Article 65

A Guide to the EPC 2000

translation shall end three months after the date on which the mention of the grant, maintenance in amended form or limitation of the European patent is published in the European Patent Bulletin, unless the State concerned prescribes a longer period.

(2) Any Contracting State which has adopted provisions pursuant to paragraph 1 may prescribe that the proprietor of the patent must pay all or part of the costs of publication of such translation within a period laid down by that State.

(3) Any Contracting State may prescribe that in the event of failure to observe the provisions adopted in accordance with paragraphs 1 and 2, the European patent shall be deemed to be void ab initio in that State.

Other Relevant Rules Rule 82 Maintenance of the European patent in amended form

See Article 103, page 112

Comment: The London Agreement is an optional protocol on the application of Article 65 EPC. Under it, any state having English, French or German as an official language agrees to dispense with translation requirements as a prerequisite for bringing a European patent into effect (Article 1 (1) of the London Agreement). States without English, French or German as an official language agree to dispense with any requirements for the translation of descriptions and accompanying drawings, if a patent is granted in an official language of the European Patent Office prescribed by that state (Article 1 (2) of the London Agreement). Such states may continue to require claims to be translated into a national language (Article 1 (3) of the London Agreement). National laws may require a patent proprietor to provide a full translation of a patent to the court and any alleged infringer if any dispute relating to a European patent arises (Article 2 of the London Agreement).

The Agreement has been ratified by Albania, Croatia, Denmark, Finland, France, Germany, Hungary, Iceland, Ireland, Latvia, Liechtenstein, Lithuania, Monaco, the Netherlands, Slovenia, Sweden, Switzerland, the United Kingdom and the former Yugoslav Republic of Macedonia France, Germany, Ireland, Luxembourg, Liechtenstein, Luxembourg, Monaco, Switzerland and the United Kingdom do not require any translations to be filed in order to bring a European patent into effect.

Latvia, Lithuania and Slovenia and the former Yugoslav Republic of Macedonia require claims to be translated into their national languages in order to have effect.

Croatia, Denmark, Finland, Hungary, Iceland, the Netherlands and Sweden require a full translation of a European patent if granted in French or German. If a European patent is granted in English, only the claims need to be translated.

Albania has not adopted provisions pursuant to Article. 65(1) EPC. Therefore, neither a translation of the claims nor of the patent specification of the European patent granted for Albania is to be supplied.

Full translations into national languages are required in order for a European patent to have effect in the other EPC Contracting States.

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Part II: Substantive Patent Law

Articles 66-68

Article 66 Equivalence of European filing with national filing A European patent application which has been accorded a date of filing shall, in the designated Contracting States, be equivalent to a regular national filing, where appropriate with the priority claimed for the European patent application.

Reference to patent also includes utility models and utility certificates – Article 140 EPO will issue certified copy of European patent application on request – Rule 54

Other Relevant Rules Rule 54 Issuing priority documents

See Article 88, page 85

Article 67 Rights conferred by a European patent application after publication (1) A European patent application shall, from the date of its publication, provisionally confer upon the applicant the protection provided for by Article 64 – Rights conferred Article 64, in the Contracting States designated in the application.

by European patent

(2) Any Contracting State may prescribe that a European patent application shall not confer such protection as is conferred by Article 64. However, the protection attached to the publication of the European patent application may not be less than that which the laws of the State concerned attach to the compulsory publication of unexamined national patent applications. In any event, each State shall ensure at least that, from the date of publication of a European patent application, the applicant can claim compensation reasonable in the circumstances from any person who has used the invention in that State in circumstances where that person would be liable under national law for infringement of a national patent.

(3) Any Contracting State which does not have as an official language the language of the proceedings may prescribe that provisional protection in accordance with paragraphs 1 and 2 above shall not be effective until such time as a translation of the claims in one of its official languages at the option of the applicant or, where that State has prescribed the use of one specific official language, in that language: (a) has been made available to the public in the manner prescribed by national law, or (b) has been communicated to the person using the invention in the said State.

(4) The European patent application shall be deemed never to have had the effects set out in paragraphs 1 and 2 when it has been withdrawn, deemed to be withdrawn or finally refused. The same shall apply in respect of the effects of the European patent application in a Contracting State the designation of which is withdrawn or deemed to be withdrawn.

Article 68 Effect of revocation or limitation of the European patent The European patent application and the resulting European patent shall be deemed not to have had, from the outset, the effects specified in

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Effect of revocation or limitation of European patent – Article 68 Extent of protection conferred

by European patent – Article 69 Publication of European patent application – Article 93

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A Guide to the EPC 2000

Article 64 – Rights conferred by European patent

Articles 64 and 67, to the extent that the patent has been revoked or limited in opposition, limitation or revocation proceedings.

Article 67 – Rights conferred by European patent application after publication

Article 69 Extent of protection (1) The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.

(2) For the period up to grant of the European patent, the extent of the protection conferred by the European patent application shall be determined by the claims contained in the application as published. However, the European patent as granted or as amended in opposition, limitation or revocation proceedings shall determine retroactively the protection conferred by the application, in so far as such protection is not thereby extended.

Protocol on the Interpretation of Article 69 EPC Article 1 General principles Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.

Article 2 Equivalents For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.

Comment: The EPC 2000 added Article 2 to the Protocol on Article 69 EPC to clarify that due account is to be taken of equivalents.

When the EPO proposed amending the EPC, it also considered amending the Protocol to include a definition of “equivalent” and to provide that the scope of protection conferred by a patent should be construed in the light of statements made during prosecution. Neither proposal was ultimately adopted, however.

It is debatable whether the new reference to equivalents will have any effect on the scope of protection. The courts may well consider that the approach to claim interpretation required by Article 1 of the Protocol already ensures that due account of equivalents is taken.

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Part II: Substantive Patent Law

Articles 70-72

Article 70 Authentic text of a European patent application or European patent (1) The text of a European patent application or a European patent in the language of the proceedings shall be the authentic text in any proceedings before the European Patent Office and in any Contracting State.

(2) If, however, the European patent application has been filed in a language Applications filed in non-EPO which is not an official language of the European Patent Office, that text shall languages – Article 14 (2) be the application as filed within the meaning of this Convention.

Translation assumed not to add (3) Any Contracting State may provide that a translation into one of its official matter – Rule 7 languages, as prescribed by it according to this Convention, shall in that State be regarded as authentic, except for revocation proceedings, in the event of the Translation regarded as European patent application or European patent in the language of the authentic text except in Belgium and Germany translation conferring protection which is narrower than that conferred by it in the language of the proceedings.

(4) Any Contracting State which adopts a provision under paragraph 3: (a) shall allow the applicant for or proprietor of the patent to file a corrected translation of the European patent application or European patent. Such corrected translation shall not have any legal effect until any conditions established by the Contracting State under Article 65, paragraph 2, or Article 67, paragraph 3, have been complied with; (b) may prescribe that any person who, in that State, in good faith has used or has made effective and serious preparations for using an invention the use of which would not constitute infringement of the application or patent in the original translation, may, after the corrected translation takes effect, continue such use in the course of his business or for the needs thereof without payment.

Article 65 (2) – Payment of costs for publication of translation into national language Article 67 (3) – Provision of translation into national language as precondition for obtaining provisional protection for European patent application

Other Relevant Rules Rule 7

Legal authenticity of the translation of the European patent application

See Article 14, page 8

Chapter IV The European patent application as an object of property Article 71 Transfer and constitution of rights A European patent application may be transferred or give rise to rights Procedure for recordal of for one or more of the designated Contracting States. assignments – Rule 22

Assignments may be recorded during opposition period and while opposition pending – Rule 85

Article 72 Assignment

An assignment of a European patent application shall be made in writing Central recordal of assignments after grant not recognised in and shall require the signature of the parties to the contract.

Albania, Austria, Bulgaria, Croatia, Ireland, Italy, Malta, Poland, San Marino or Slovenia

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Articles 72-73

A Guide to the EPC 2000 Related Rule Rule 22 Registration of transfers

Previously Rule 20

(1) The transfer of a European patent application shall be recorded in the European Patent Register at the request of an interested party, upon production of documents providing evidence of such transfer.

(2) The request shall not be deemed to have been filed until an administrative fee has been paid. It may be rejected only if paragraph 1 has not been complied with.

(3) A transfer shall have effect vis-à-vis the EPO only at the date when and to the extent that the documents referred to in paragraph 1 have been produced.

Previously Rule 61

Rule 85 Transfer of the European patent

Rule 22 – Procedure for Rule 22 shall apply to any transfer of the European patent made during the recordal of assignments opposition period or during opposition proceedings.

Comment: Article 72 and Rule 22 EPC deal with assignments of European patent applications.

Article 72 EPC provides that assignments must be in writing and signed by both assignor and assignee. Rule 22 EPC contains the rules for recordal of assignments at the EPO. Satisfactory evidence of the assignment must be filed and an administrative fee must be paid.

Rule 85 EPC provides that unlike licences (see commentary on Article 73 below), assignments of granted European patents may also be recorded at the EPO during the nine-month opposition period and while an opposition or associated appeal is pending.

The extent to which such central post-grant recordals are recognised depends on national laws. Central post-grant recordal at the EPO is not recognised in Austria, Bulgaria, Ireland, Italy, Poland or Slovenia and any assignment of European patents relating to such countries must be recorded separately with the national authorities.

The procedures for recording assignments and licences are discussed in the Guidelines for Examination in the EPO, Part E, Chapter XII, section 2. Case law relating to recordal of assignments may be found in the Case Law of the Boards of Appeal of the EPO, section III – M.2.3, pages 675-676.

Article 73 Contractual licensing Recordal of licences – Rule 23 Recordal of exclusive licences and sub-licences – Rule 24

A European patent application may be licensed in whole or in part for the whole or part of the territories of the designated Contracting States.

Related Rules Previously Rule 21 Rule 22 (1) and (2) – EPO will

Rule 23 Registration of licences and other rights (1) Rule 22, paragraphs 1 and 2, shall apply mutatis mutandis to the 48

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Part II: Substantive Patent Law

Articles 73-74

registration of the grant or transfer of a licence, the establishment or transfer record licences and other of a right in rem in respect of a European patent application and any legal rights if satisfactory evidence of transaction is provided and means of execution affecting such an application. recordal fee is paid

(2) A registration under paragraph 1 shall be cancelled upon request, supported by documents providing evidence that the right has lapsed, or by the written consent of the proprietor of the right to the cancellation of the Rule 22 (2) – Fee required registration. Rule 22, paragraph 2, shall apply mutatis mutandis. to update register

Rule 24 Special entries for licence registrations

Previously Rule 22

A licence in respect of a European patent application shall be recorded (a) as an exclusive licence if the applicant and the licensee so request; (b) as a sub-licence where it is granted by a licensee whose licence is recorded in the European patent Register.

Other Relevant Rules Rule 22 Registration of transfers

See Article 72, page 48

Comment: Article 73 EPC permits licensing of pending European patent applications.

Rule 23 EPC provides for the recordal of licences and other rights (e.g. mortgages and security interests) against pending European patent applications. As with assignments (see commentary on Article 72 above), suitable evidence of the transaction must be filed and an administrative fee must be paid. Recordals of licences or other rights can be cancelled on request (Rule 23 (2) EPC). However, evidence that the right has lapsed or that the right holder consents to the cancellation must be provided. Again, an administrative fee must be paid.

Rule 24 expressly permits the recordal of exclusive licences and sub-licences at the EPO. Central recordal of licences and other rights is only possible in respect of pending applications. Once a patent is granted, no further central recordals may be made and any applications for recordal must be directed to the national authorities in the states where a granted patent has been brought into effect. In this respect, the treatment of licences and other rights differs from that accorded to assignments, where central recordals at the EPO are permitted during the opposition period and while an opposition or related appeal is pending (Rule 85 EPC; see commentary on Article 72 EPC above).

The procedures for recording licences are discussed in the Guidelines for Examination in the EPO, Part E, Chapter XII, section 3. Case law on the recordal of licences may be found in the Case Law of the Boards of Appeal of the EPO, section III – M.2.2, page 675.

Article 74 Law applicable Unless this Convention provides otherwise, the European patent application as an object of property shall, in each designated Contracting State and with effect for such State, be subject to the law applicable in that State to national patent applications 49

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A Guide to the EPC 2000

PART III THE EUROPEAN PATENT APPLICATION Chapter I

Filing and requirements of the European patent application Article 75 Filing of a European patent application (1) A European patent application may be filed: (a) with the European Patent Office, or (b) if the law of a Contracting State so permits, and subject to Article 76, General provisions on filing paragraph 1, with the central industrial property office or other – Rule 35 competent authority of that State. Any application filed in this way Forwarding of European shall have the same effect as if it had been filed on the same date with patent applications to EPO the European Patent Office.

Article 76 (1) – Divisional applications must be filed directly with the EPO

by national offices – Rule 37

(2) Paragraph 1 shall not preclude the application of legislative or regulatory provisions which, in any Contracting State: (a) govern inventions which, owing to the nature of their subject-matter, may not be communicated abroad without the prior authorisation of the competent authorities of that State, or (b) prescribe that any application is to be filed initially with a national Automatic extension of time authority, or make direct filing with another authority subject to prior periods when national office authorisation. closed or mail service Allowances for late receipt of documents posted or dispatched by recognised delivery services before deadline – Rule 133

interrupted – Rule 134

Related Rule Previously Rule 24

Rule 35 General provisions

(1) European patent applications may be filed in writing with the European Patent Office in Munich, The Hague or Berlin, or the authorities referred to Article 75 (1)(b) – Filing in Article 75, paragraph 1 (b). with national authorities (2) The authority with which the European patent application is filed shall mark the documents making up the application with the date of their receipt, and issue without delay a receipt to the applicant including at least the application number and the nature, number and date of receipt of the documents.

(3) If the European patent application is filed with an authority referred to Article 75 (1)(b) – Filing in Article 75, paragraph 1 (b), such authority shall without delay inform the European Patent Office of the receipt of the application, and, in particular, of with national authorities the nature and date of receipt of the documents, the application number and any priority date claimed.

(4) Upon receipt of a European patent application forwarded by the central industrial property office of a Contracting State, the European Patent Office shall inform the applicant accordingly, indicating the date of its receipt.

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Part III: The European Patent Application

Articles 75-76

Other Relevant Rules Rule 37 Forwarding of European patent applications Rule 133 Late receipt of documents Rule 134 Extension of periods

See Article 77, page 54 See Article 120, page 146 See Article 120, page 146

Comment: Article 75 (1)(a) EPC and Rule 35(1) EPC allow European patent applications to be filed with the European Patent Office in Munich, The Hague or Berlin but not the sub-office established in Vienna. Further details of the addresses and opening hours of the filing offices and the provision of automated mail boxes in Munich and Berlin are set out in a number of decisions of the President dated 12 July 2007. The decisions also provide that all application documents with the exception of authorisations and priority documents may also be filed by fax and set out regulations for filing applications electronically.

Article 75 (1)(b) EPC provides for filing European patent applications through the national patent offices of the various Contracting States. Indeed, Article 75 (2) EPC permits Contracting States to require certain types of application to be filed with national authorities rather than directly with the EPO. Filing through a national office is permitted by all the Contracting States except the Netherlands. If a European patent application is filed through a national patent office, that office must forward the application to the EPO within the time periods laid out in Rule 37 EPC (see commentary on Article 77 EPC).

Article 76 European divisional applications (1) A European divisional application shall be filed directly with the European Patent Office in accordance with the Implementing Regulations. It may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed; in so far as this requirement is complied with, the divisional application shall be deemed to have been filed on the date of filing of the earlier application and shall enjoy any right of priority.

(2) All the Contracting States designated in the earlier application at the time of filing of a European divisional application shall be deemed to be designated in the divisional application.

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Divisional application can be filed only while parent application pending – Rule 36 (1) Divisional application or Article 14 (2) translation must be in language of proceedings of parent application. If divisional application filed in language other than English, French or German, translation into language of parent must be filed within two months of filing – Rule 36 (2) Deadline for filing translation cannot be extended using further processing – Rule 135 (2) Filing fees increased for second and subsequent generation divisionals – Rule 38 (4), RRF Article 2 (1b) Filing fees reduced by 30% for natural persons, SME or Universities who are nationals or residents of or persons with a principal place of business in Contracting States with official languages other than English, French or German who file in such a language – Article 14 (4), Rule 6 (3), RRF Article 14 (1)) Notification of loss of rights without decision – Rule 112 Further processing not available for filing translation – Rule 135 (2) If designation of inventor required but not filed, EPO will set deadline for filing it – Rule 60 (2) Renewal fees due on filing of divisional application may be paid without fine up to four months from filing – Rule 51 (3) Search fee on divisional refunded in part if search based on content of earlier search – RRF 9 (2)

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Article 76

A Guide to the EPC 2000 Related Rule Rule 36 European divisional applications

Previously Rules 4 and 25

(1) The applicant may file a divisional application relating to any pending earlier European patent application.

Further processing cannot be used to extend deadline for filing translation – Rule 135 (2) Filing of translation checked by Receiving Section – Article 90 (3) and Rule 57 (a) Further processing cannot be used to extend two-month period for filing translation – Rule 135 (2) Extra fees payable for second and subsequent generation divisional applications – Rule 38(4) and RRF Article 2 (1b)

(2) A divisional application shall be filed in the language of the proceedings for the earlier application. If the latter was not in an official language of the European Patent Office, the divisional application may be filed in the language of the earlier application; a translation into the language of the proceedings for the earlier application shall then be filed within two months of the filing of the divisional application. The divisional application shall be filed with the European Patent Office in Munich, The Hague or Berlin.

(3) The filing fee and search fee shall be paid within one month of filing the divisional application. If the filing fee or search fee is not paid in due time, the application shall be deemed to be withdrawn.

(4) The designation fee shall be paid within six months of the date Payment of fees checked if application on which the European Patent Bulletin mentions the publication of sufficient to obtain filing date – Rule 57 the European search report drawn up in respect of the divisional (e) and Article 90 (3) application. Rule 39, paragraphs 2 and 3, shall apply.

Rule 39 (2) – If designation fee not paid, application deemed withdrawn Rule 39 (3) – Designation fee not refundable

Other Relevant Rules Rule 6

Filing of translations and reduction of fees Rule 38 Filing fee and search fee Rule 39 Designation fees Rule 51 Payment of renewal fees Rule 57 Examination as to formal requirements Rule 60 Subsequent designation of the inventor Rule 71 Examination procedure Rule 112 Noting of loss of rights Rule 135 Further processing

See Article 14, page 8 See Article 78, page 56 See Article 79, page 63 See Article 86, page 79 See Article 90, page 88 See Article 81, page 67 See Article 94, page 99 See Article 113, page 135 See Article 121, page 148

Comment: Article 76 EPC and Rule 36 EPC set out the rules for filing divisional applications.

A divisional application can be filed at any time while a parent application is pending (Rule 36 (1) EPC). As the existence of a pending application sets a

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Part III: The European Patent Application

Article 76

condition rather than a deadline for action, it is not possible to recover divisional status using re-establishment of rights under Article 122 EPC if a divisional application is filed after a parent application is granted or lapses.

Divisional applications must be filed directly with the EPO in Munich, The Hague or Berlin and must be in the language of proceedings of the parent application or be translated into that language (Rule 36 (2) and Article 14 (2) EPC). If a translation is required, it must be filed within two months of filing the divisional (Rule 36 (2) EPC). This two-month deadline cannot be extended using further processing (Rule 135 (2) EPC).

The filing fee for a divisional applicaton is increased for filing a divisional application based on an earlier application which itself was a divisional application.

The uplift varies depending on how many generations of divisional have been filed.

For a second generation divisional application (i.e. a divisional of a divisional), the filing fee is increased by €210; for a third generation divisional application, the filing fee is increased by €420; for a fourth generation divisional, the filing fee is increased by €630; and the filing fee is increased by €840 for any division of the fifth or subsequent generation. (Rule 38(4) EPC and Article 2(1b) of the Rules Relating to Fees).

In the case of natural persons, SMEs and universities who are nationals or residents of or persons having their principal place of business in EPC Contracting States having an official language other than English, French or German, filing fees for divisionals are reduced by 30% if a divisional application is initially filed in an official language of that state other than English, French or German where this is permitted (Rule 6 (3) EPC and Article 14 (1) of the Rules Relating to Fees; see commentary on Article 14 EPC).

Filing and search fees are due within one month of filing the divisional application (Rule 36 (3) EPC). These fees can be paid late with a 50% surcharge up to two months from receipt of notification of non-payment, using further processing (Article 121 and Rule 135 EPC and Article 2 (12) of the Rules Relating to Fees).

Maintenance fees due or paid on the parent application must also be paid on a divisional. These fees may be paid without fine up to four months from the date of filing of the divisional and up to six months from the date of filing if a 50% surcharge is also paid (Rule 51 (3) EPC and Article 2 (5) of the Rules Relating to Fees).

If a designation of inventor is required but not included on filing, the EPO will set a deadline for filing it (Rule 60 (2) EPC).

Designation fees are due within six months of the date of publication of the search report for the divisional application (Rule 36 (4) EPC). Failure to pay the

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designation fee by the due date results in the application being deemed withdrawn (Rule 39 (2) EPC). The fees may be paid late with a 50% surcharge up to two months from receipt of notification that the fees have not been paid, using further processing (Article 121 and Rule 135 EPC and Article 2 (12) of the Rules Relating to Fees).

The Enlarged Board of Appeal held in G1/05 and G1/06 that where a divisional application contains matter extending beyond the content of the parent application, the divisional application can be corrected by deletion of the additional matter during prosecution.

The Enlarged Board of Appeal held in G1/09 that an application revoked by a decision of an Examining Division remains pending for the purposes of filing further divisional applications until the final deadline for filing an appeal against the Examining Division’s decision regardless of whether any appeal is ever filed.

Case law on divisional applications may be found in the Case Law of the Boards of Appeal of the EPO, section II - F, pages 440-460. Special provisions relating to divisional applications are discussed in the Guidelines for Examination in the EPO, Part A, Chapter IV, section 1 and Part C, Chapter IX section 1.

National office must inform EPO of date of receipt, application number and any priority date claimed – Rule 35 (3) National offices should forward nonsecret applications to EPO within six weeks. Applications examined for secrecy should be forwarded within four months of filing or, if priority claimed, within 14 months of priority date – Rule 37 (1) Applications not received by EPO within four months of filing or, if priority claimed, within 14 months of priority date are deemed withdrawn and any fees paid are refunded – Rule 37 (2)

Article 77 Forwarding of European patent applications (1) The central industrial property office of a Contracting State shall forward to the European Patent Office any European patent application filed with it or any other competent authority in that State, in accordance with the Implementing Regulations.

(2) A European patent application the subject of which has been made secret shall not be forwarded to the European Patent Office.

(3) A European patent application not forwarded to the European Patent Office in due time shall be deemed to be withdrawn.

Forwarding deadline automatically extended where mail service interrupted – Rule 134 (2) Applications not forwarded in time can be transformed into national applications – Article 135 (1)

Previously elements of Article 77 Forwarding deadlines are extended if there is a general dislocation of mail – Rule 134 (2)

Related Rule Rule 37 Forwarding of European patent applications (1) The central industrial property office of a Contracting State shall forward European patent applications to the European Patent Office 54

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Article 77

in the shortest time compatible with its National Law Relating to the secrecy of inventions in the interests of the State, and shall take all appropriate steps to ensure such forwarding within: (a) six weeks of filing, where the subject of the application is evidently not liable to secrecy under the national law; or (b) four months of filing or, if priority has been claimed, fourteen months of the date of priority, where the application requires further examination as to its liability to secrecy.

(2) A European patent application not received by the EPO within 14 months of filing or, if priority has been claimed, of the date of priority, shall be deemed to be withdrawn. Any fees paid in respect of this application shall be refunded.

Other Relevant Rules Rule 35 General provisions Rule 134 Extension of periods

See Article 75, page 50 See Article 120, page 146

Comment: Where a European patent application is filed with a national patent office, that office must forward the application to the European Patent Office within time limits set by Rule 37 EPC. The national office is required to inform the EPO of the filing date, the application number and any claimed priority date without delay (Rule 35 (3) EPC). The national office must then forward the application itself as soon as possible. Applications that are clearly not subject to secrecy restrictions must be forwarded within six weeks. Applications that require examination as to whether their subject-matter falls within the scope of national secrecy laws must be forwarded within four months, or, if priority has been claimed, within 14 months of the priority date (Rule 37 (1) EPC).

If the EPO does not receive the application within 14 months of filing or, if priority has been claimed, within 14 months of the priority date, the application is deemed withdrawn (Rule 37 (2) EPC). This deadline is automatically extended if the filing offices of the EPO are shut or there is a general disruption of mail affecting the EPO or in the Contracting State where the application has been filed (Rule 134 EPC). Other than for these reasons, however, the time period for forwarding applications to the EPO cannot be extended. Neither further processing under Article 121 nor re-establishment of rights under Article 122 EPC is available because failure to observe the deadline arises from inaction on the part of the national patent authorities rather than the applicant.

If an application is deemed withdrawn due to the failure of a national patent office to forward it to the EPO in due time, all fees are refunded (Rule 37 (2) EPC). The application may be converted into national applications on request, provided certain formalities are fulfilled and a fee is paid (see commentary on Article 135 EPC below).

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Article 78 Deposit of biological material for biotechnological inventions – Rule 31 Filing and search fees due within 1 month of filing application – Rule 38 Request for grant – Rule 41 Content of description – Rule 42 Form and content of claims – Rule 43 Unity of invention – Rule 44 Excess claims fees – Rule 45 Form of drawings – Rule 46 Form and content of abstract – Rule 47 Prohibited matter – Rule 48 General provisions on presentation of documents – Rule 49 Documents filed subsequently – Rule 50 Filing of claims and abstract checked if application sufficient to obtain filing date – Rule 57 (c) and (d) and Article 90 (3) If claims or abstract missing, applicant given two months to file – Rule 58 Notification of loss of rights without decision – Rule 112 Further processing not available in respect of time limit for correcting deficiencies in application – Rule 135 (2) Late-filed claims are included in published application – Rule 68 (4) Correction of errors – Rule 139 Requirements for entry of Euro-PCT application into regional phase – Rule 159

A Guide to the EPC 2000 Article 78 Requirements of a European patent application (1) A European patent application shall contain: (a) a request for the grant of a European patent; (b) a description of the invention; (c) one or more claims; (d) any drawings referred to in the description or the claims; (e) an abstract, and satisfy the requirements laid down in the Implementing Regulations.

(2) A European patent application shall be subject to the payment of the filing fee and the search fee. If the filing fee or the search fee is not paid in due time, the application shall be deemed to be withdrawn.

Related Rules Rule 38 Filing fee and search fee

Previously Article 78 (2)

Filing fee is €210 or €120 if filed on line (1) The filing fee and search fee shall be paid within one month plus €15 per page in excess of 35 – RRF of filing the European patent application.

Article 2 (1 & 1a) Search fee is €1285 for applications filed after 1 July 2005– RRF Article 2 (2) Payment of fee checked if application sufficient to obtain filing date – Rule 57 (e) and Article 90 (3) Notification of loss of rights without decision – Rule 112 Further processing available – Article 121 Rule 40(3) – Certified copy of application filed by reference due within two months of filing

(2) The Rules relating to Fees may provide for an additional fee as part of the filing fee if the application comprises more than 35 pages.

(3) The additional fee referred to in paragraph 2 shall be paid within one month of filing the European patent application or one month of filing the first set of claims or one month of filing the certified copy referred to in Rule 40, paragraph 3, whichever period expires last.

(4) The Rules relating to fees may provide for an additional fee as part of the filing fee in the case of a divisional application filed in respect of any earlier application that is itself a divisional application.

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Part III: The European Patent Application Rule 41 Request for grant

Article 78

Previously Rule 26

(1) The request for grant of a European patent shall be filed on a form drawn up by the European Patent Office.

(2) The request shall contain: (a) a petition for the grant of a European patent; (b) the title of the invention, which shall clearly and concisely state the technical designation of the invention and shall exclude all fancy names; (c) the name, address and nationality of the applicant and the State in which his residence or principal place of business is located. Names of natural persons shall be indicated by the person’s family name, followed by his given names. Names of legal persons, as well as of bodies equivalent to legal persons under the law governing them, shall be indicated by their official designations. Addresses shall be indicated in accordance with applicable customary requirements for prompt postal delivery and shall comprise all the relevant administrative units, including the house number, if any. It is recommended that the fax and telephone numbers be indicated; (d) if the applicant has appointed a representative, his name and the address of his place of business as prescribed in subparagraph (c); (e) where appropriate, an indication that the application constitutes a divisional application and the number of the earlier European patent application; (f) in cases covered by Article 61, paragraph 1 (b), the number of the original European patent application; (g) where applicable, a declaration claiming the priority of an earlier application and indicating the date on which and the country in or for which the earlier application was filed; (h) the signature of the applicant or his representative; (i) a list of the documents accompanying the request. This list shall also indicate the number of sheets of the description, claims, drawings and abstract filed with the request; (j) the designation of the inventor, where the applicant is the inventor.

Compliance with Rule 41 checked if application sufficient to obtain filing date – Rule 57 (b) and Article 90 (3) Applicant given two-month term to correct deficiencies in request for grant – Rule 58 Two-month term cannot be extended using further processing – Rule 135 (2)

Article 61 (1)(b) – Replacement application filed when original applicant found not to be entitled

(3) If there is more than one applicant, the request shall preferably contain the appointment of one applicant or representative as common representative.

Rule 42 Content of the description

Previously Rule 27 Rule 42 also applies to

(1) The description shall: replacement pages of (a) specify the technical field to which the invention relates; description – Rule 50 (1) (b) indicate the background art which, as far as is known to the applicant, can be regarded as useful to understand the invention, draw up the European search report and examine the European patent application, and, preferably, cite the documents reflecting such art; (c) disclose the invention, as claimed, in such terms that the technical

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Article 78

A Guide to the EPC 2000 problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art; (d) briefly describe the figures in the drawings, if any; (e) describe in detail at least one way of carrying out the invention claimed, using examples where appropriate and referring to the drawings, if any; (f) indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is industrially applicable.

(2) The description shall be presented in the manner and order specified in paragraph 1, unless, owing to the nature of the invention, a different presentation would afford a better understanding or be more concise.

Previously Rule 32 Compliance with Rule 46 checked if application sufficient to obtain filing date – Rule 57 (i) and Article 90 (3) Applicant given two-month term to correct deficiencies in drawings – Rule 58 Two-month term cannot be extended using further processing – Rule 135 (2) Rule 46 also applies to replacement drawing pages – Rule 50 (1)

Rule 46 Form of the drawings (1) On sheets containing drawings, the usable surface area shall not exceed 26.2 cm x 17 cm. The usable or used surface shall not be surrounded by frames. The minimum margins shall be as follows: top 2.5 cm left side 2.5 cm right side 1.5 cm bottom 1 cm (2) Drawings shall be executed as follows: (a) Drawings shall be executed without colourings in durable, black, sufficiently dense and dark, uniformly thick and well defined lines and strokes. (b) Cross-sections shall be indicated by hatching which should not impede the clear reading of the reference signs and leading lines. (c) The scale of the drawings and their graphical execution shall be such that electronic or photographic reproduction with a linear reduction in size to two thirds will allow all details to be distinguished without difficulty. If, exceptionally, the scale is given on a drawing, it shall be represented graphically. (d) All numbers, letters, and reference signs appearing on the drawings shall be simple and clear. Brackets, circles or inverted commas shall not be used in association with numbers and letters. (e) Generally, all lines in the drawings shall be drawn with the aid of drafting instruments. (f) Elements of the same figure shall be proportional to one another, unless a difference in proportion is indispensable for the clarity of the figure. (g) The height of the numbers and letters shall not be less than 0.32 cm.

For the lettering of drawings, the Latin and, where customary, the Greek alphabets shall be used. (h) The same sheet of drawings may contain several figures. Where figures drawn on two or more sheets are intended to form a single figure, the figures on the several sheets shall be so arranged that the whole figure can be assembled without concealing any part of the partial figures. The different figures shall be arranged without wasting space, preferably in an upright position, clearly separated 58

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Part III: The European Patent Application

Article 78

from one another. Where the figures are not arranged in an upright position, they shall be presented sideways with the top of the figures at the left side of the sheet. The different figures shall be numbered consecutively in Arabic numerals, independently of the numbering of the sheets. (i) Reference signs not mentioned in the description and claims shall not appear in the drawings, and vice versa. Reference signs to features shall be consistent throughout the application. (j) The drawings shall not contain text matter. Where indispensable to understand the drawings, a few short keywords, such as “water”, “steam”, “open”, “closed” or “section on AB”, may be included. Any such keywords shall be placed in such a way that, if required, they can be replaced by their translations without interfering with any lines of the drawings.

(3) Flow sheets and diagrams shall be deemed to be drawings.

Rule 48 Prohibited matter

Previously Rule 34

(1) The European patent application shall not contain: Rule 48 also applies to later-filed (a) statements or other matter contrary to “ordre public” or morality; replacement pages – Rule 50 (1) (b) statements disparaging the products or processes of any third party or the merits or validity of the applications or patents of any such party. Mere comparisons with the prior art shall not be considered disparaging per se; (c) any statement or other matter obviously irrelevant or unnecessary under the circumstances.

(2) If the application contains matter prohibited under paragraph 1 (a), the European Patent Office may omit such matter from the application as published, indicating the place and number of words or drawings omitted.

(3) If the application contains statements referred to in paragraph 1 (b), the European Patent Office may omit them from the application as published, indicating the place and number of words omitted.

Upon request, the European Patent Office shall furnish a copy of the passages omitted.

Rule 49 General provisions governing the presentation of the application documents

Previously Rule 35 Article 14 (2) – Translation into EPO language of application not originally filed in English, French or German

(1) Any translation filed under Article 14, paragraph 2, or Rule 40, Rule 40 (3) – Translation into EPO paragraph 3, shall be deemed to be a document making up the language of application filed by European patent application. reference when original application not (2) The documents making up the application shall be presented so as to allow electronic and direct reproduction, in particular by scanning, photography, electrostatic processes, photo offset and microfilming, in an unlimited number of copies. All sheets shall be free from cracks,

59

in English, French or German Compliance with Rules 49 (1) – (9) and (12) checked if application sufficient to obtain filing date – Rule 57 (i) and Article 90 (3)

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Applicant given two-month period to creases and folds. Only one side of the sheet shall be used. correct Rule 49 deficiencies – Rule (3) The documents making up the application shall be on A4 paper 58

(29.7 cm x 21 cm) which shall be pliable, strong, white, smooth, matt

Two-month deadline cannot be and durable. Subject to paragraph 9 and Rule 46, paragraph 2(h), each extended using further processing – sheet shall be used with its short sides at the top and bottom (upright Rule 135 (2) Rule 46 (2)(h) Drawings may be position). arranged sideways with top of figure (4) Each of the documents making up the application (request, on left

description, claims, drawings and abstract) shall commence on a new

Rule 49 also applies to later-filed sheet. The sheets shall be connected in such a way that they can easily replacement pages – Rule 50 (1)

be turned over, separated and joined together again.

Paragraphs (2) – (12) also apply to claims translations – Rule 50 (5) Subject to Rule 46, paragraph 1, the minimum margins shall be as (1), Rule 71 (3) follows: top: 2 cm left side: 2.5 cm right side: 2 cm bottom: 2 cm.

Rule 46 (1) Margin requirements The recommended maximum for the margins quoted above is as for drawings are different to follows: top: 4 cm left side: 4 cm right side: 3 cm bottom: 3 cm. margin requirements in Rule 49 (5) (6) All the sheets contained in the application shall be numbered in

consecutive Arabic numerals. These shall be centred at the top of the sheet, but not placed in the top margin.

(7) The lines of each sheet of the description and of the claims shall preferably be numbered in sets of five, the numbers appearing on the left side, to the right of the margin.

(8) The request for grant of a European patent, the description, the claims and the abstract shall be typed or printed. Only graphic symbols and characters and chemical or mathematical formulae may, if necessary, be drawn or written by hand. The typing shall be 1½ spaced.

All text matter shall be in characters, the capital letters of which are not less than 0.21 cm high, and shall be in a dark, indelible colour.

(9) The request for grant of a European patent, the description, the claims and the abstract shall not contain drawings. The description, claims and abstract may contain chemical or mathematical formulae.

The description and abstract may contain tables. The claims may contain tables only if their subject-matter makes the use of tables desirable. Tables and chemical or mathematical formulae may be placed sideways on the sheet if they cannot be presented satisfactorily in an upright position. Tables or chemical or mathematical formulae presented sideways shall be placed so that the tops of the tables or formulae are at the left-hand side of the sheet.

(10) Values shall be expressed in units conforming to international standards, wherever appropriate in terms of the metric system using SI units. Any data not meeting this requirement shall also be expressed in units conforming to international standards. Only the technical terms, formulae, signs and symbols generally accepted in the field in question shall be used.

(11) The terminology and the signs shall be consistent throughout the European patent application.

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(12) Each sheet shall be reasonably free from erasures and shall be free from alterations. Noncompliance with this rule may be authorised if the authenticity of the content is not impugned and the requirements for good reproduction are not thereby jeopardised.

Other Relevant Rules Rule 31 Rule 40 Rule 43 Rule 44 Rule 45 Rule 47 Rule 50 Rule 57 Rule 58 Rule 68

Deposit of biological material Date of filing Form and content of claims Unity of invention Claims incurring fees Form and content of the abstract Documents filed subsequently Examination as to formal requirements Correction of deficiencies in the application documents Form of the publication of European patent applications and European search reports Rule 71 Examination procedure Rule 135 Further processing Rule 139 Correction of errors in documents filed with the EPO Rule 159 The EPO as a designated or elected Office – Requirements for entry into the European phase

See Article 83, page 70 See Article 80, page 64 See Article 84, page 75 See Article 82, page 69 See Article 84, page 76 See Article 85, page 78 See Article 94, page 98 See Article 90, page 88 See Article 90, page 89 See Article 93, page 96 See Article 94, page 99 See Article 121, page 148 See Article 123, page 153 See Article 153, page 182

Comment: Article 78 EPC identifies the basic components of a European patent application.

These are: (a) a request for grant; (b) a description of the invention; (c) one or more claims; (d) any drawings that accompany the description; (e) an abstract; and (f) the filing fee and search fee.

Rule 41 EPC sets out in detail the information required in the request for grant.

The form and content of the description and accompanying drawings are addressed in Rules 42, 46, 48 and 49 EPC. These rules also apply to replacement pages filed during prosecution or in post-grant opposition or limitation proceedings (Rules 50 (1), 76 (3) and 92 (1) EPC). The same rules apply to translations of an application (Rule 49 (1) EPC). Compliance is checked once the minimum requirements for obtaining a filing date under Rule 40 EPC have been met. If an application has been allocated a filing date but does not comply with these other rules, the applicant is given the opportunity to correct the application or make good any omissions (see commentary on Article 90 EPC).

The substantive requirements relating to the content of the description, claims and abstract appear in Articles 83, 84 and 85 EPC respectively (see commentary under those articles).

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Articles 78-79

A Guide to the EPC 2000

The filing and search fees may be paid up to one month after filing (Rule 38 EPC). If the fees are not paid in due time, they can be paid together with a 50% surcharge using further processing, up to two months from the date on which the EPO notifies an applicant that the fee has been omitted (Article 121 and Rule 135 EPC and Article 2 (12) of the Rules Relating to Fees). The filing fee is currently €120 for applications filed online and €210 for all other applications (Article 2 (1) of the Rules Relating to Fees) with an additional fee of €15 per page in excess of 35 for all applications having more than 35 pages (Article 2 (1a) of the Rules Relating to Fees).

The filing fee is increased for filing a divisional application based on an earlier application, which itself was a divisional application. The uplift varies depending on how many generations of divisional have been filed. For a second generation divisional application (i.e. a divisional of a divisional), the filing fee is increased by €210; for a third generation divisional application, the filing fee is increased by €420; for a fourth generation divisional, the filing fee is increased by €630; and the filing fee is increased by €630 for any division of the fifth or subsequent generation. (Rule 38(4) EPC and Article 2(1b) of the Rules Relating to Fees).

The search fee for applications filed after 1 July 2005 is currently €1,285 (Article 2 (2) of the Rules Relating to Fees).

In the case of natural persons, SMEs and universities who are nationals or residents of or persons having their principal place of business in EPC Contracting States having an official language other than English, French or German, filing fees for divisionals are reduced by 30% if a divisional application is initially filed in an official language of that state other than English, French or German where this is permitted (Rule 6 (3) EPC and Article 14 (1) of the Rules Relating to Fees; see commentary on Article 14 EPC).

Designation fee due within six months of publication of search report – Rule 39 (1) If designation fee not paid, application deemed withdrawn – Rule 39 (2) Notification of loss of rights without decision – Rule 112 Further processing available – Article 121 50% uplift in fees for late payment – RRF Article 2(12)

Article 79 Designation of Contracting States (1) All the Contracting States party to this Convention at the time of filing of the European patent application shall be deemed to be designated in the request for grant of a European patent.

(2) The designation of a Contracting State may be subject to the payment of a designation fee.

(3) The designation of a Contracting State may be withdrawn at any time up to the grant of the European patent.

Divisional applications deemed to designate all Contracting States designated in parent application at time divisional application filed – Article 76 (2) Grant delayed until designation fees are paid – Rule 71a(3)

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Part III: The European Patent Application

Related Rule

Article 79

Previously Articles 79 (2) and (3)

Rule 39 Designation fees (1) The designation fee shall be paid within six months of the date on which the European Patent Bulletin mentions the publication of the European search report.

(2) Where the designation fee is not paid in due time or the designations of all the Contracting States are withdrawn, the European patent application shall be deemed to be withdrawn.

Rules 39 (2) and (3) apply to replacement applications filed when original applicant found not to be entitled – Rule 17 (3) Rules 39 (2) and (3) also apply to divisional applications – Rule 36 (4) Rule 37 (2) – All fees refunded where application not forwarded by national office in due time

(3) Without prejudice to Rule 37, paragraph 2, second sentence, the designation fee shall not be refunded.

Other Relevant Rules Rule 17 Filing of a new European patent application by the entitled See Article 61, page 39 person Rule 36 European divisional applications

See Article 76, page 52

Rule 37 Forwarding of European patent applications Rule 71a Conclusion of grant procedure

See Article 77, page 54 See Article 94, page 100

Rule 112 Noting of loss of rights

See Article 113, page 135

Rule 135 Further processing

See Article 121, page 148

Comment: Modification of Article 79 EPC by the EPC 2000 ended the former requirement to designate individual Contracting States expressly. With the introduction of the EPC 2000, all new European patent applications automatically designate all Contracting States. In the case of divisional applications, all the Contracting States designated in a parent application at the time the divisional application is filed are deemed designated in the divisional application (Article 76 (2) EPC).

Designation fees must be paid within six months of the date of publication of the search report (Rule 39 (1) EPC). A single designation fee of €580 is payable to designate all Contracting States (Article 2 (3) of the Rules Relating to Fees).

If the designation fee is not paid, the entire application is deemed withdrawn (Rule 39 (2) EPC). Further processing is available and the fee can be paid late with a 50% fine (Article 121 and Rule 135 EPC and Article 12 of the Rules Relating to Fees).

If a proposed text for grant issues before the designation fees have been paid, grant will be delayed until payment has been made (Rule 71a(3) EPC) With the amendment of Article 54 EPC and the deletion of old Rule 23a EPC, all European patent applications are considered prior art in respect of all Contracting States for the purposes of Article 54 (3) EPC (see commentary on Article 54 EPC).

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Articles 79-80

A Guide to the EPC 2000

Article 79 (3) EPC allows designations of individual Contracting States to be withdrawn.

Designation of Contracting States is discussed in the Guidelines for Examination in the European Patent Office, Part A, Chapter III, section 11.

Article 80 Date of filing

Minimum requirements for obtaining filing date – Rule 40 Requirements for filing date checked on filing – Article 90 (1) Applicant given opportunity to correct deficiencies in application – Rule 55

The date of filing of a European patent application shall be the date on which the requirements laid down in the Implementing Regulations are fulfilled.

Late-filed or missing drawings and re-dating of application – Rule 56 Notification of loss of rights without decision – Rule 112 Further processing not available in respect of two-month deadline for correcting deficiencies in application – Rule 135 (2)

Previously Article 80

Related Rule

Requirements for filing date checked on filing – Article 90 (1) Applicant given opportunity to correct deficiencies in application – Rule 55 Further processing not available in respect of two-month deadline for correcting deficiencies in application – Rule 135 (2) Compliance with Rule 40 (1)(c), (2) and (3) checked if application sufficient to obtain filing date – Rule 57 (c) and Article 90 (3) Applicant given two months to make good the omission of description or reference – Rule 58 Two-month time limit cannot be extended using further processing – Rule 135 (2) Filing of translation when original application not in English, French or German checked if application sufficient to obtain filing date – Rule 57 (a) and Article 90 (3) Translation deemed to be a document making up the application – Rule 49 (1) If translation not filed in due time, applicant invited to make good the omission within two months – Rule 58 Two-month period cannot be extended using further processing – Rule 135 (2) Rule 53 (2) – Certified copy deemed duly filed if available under conditions determined by EPO President

Rule 40 Date of filing (1) The date of filing of a European patent application shall be the date on which the documents filed by the applicant contain: (a) an indication that a European patent is sought; (b) information identifying the applicant or allowing the applicant to be contacted; and (c) a description or reference to a previously filed application.

(2) A reference to a previously filed application under paragraph 1 (c) shall state the filing date and number of that application and the Office with which it was filed. Such reference shall indicate that it replaces the description and any drawings.

(3) Where the application contains a reference under paragraph 2, a certified copy of the previously filed application shall be filed within two months of filing the application. Where the previously filed application is not in an official language of the European Patent Office, a translation thereof in one of these languages shall be filed within the same period. Rule 53, paragraph 2, shall apply mutatis mutandis.

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Article 80

Other Relevant Rules Rule 6 Filing of translations and reduction of fees Rule 39 Designation fees Rule 51 Payment of renewal fees Rule 57 Examination as to formal requirements Rule 60 Subsequent designation of the inventor Rule 112 Noting of loss of rights Rule 135 Further processing

See Article 14, page 8 See Article 79, page 63 See Article 86, page 79 See Article 90, page 88 See Article 81, page 67 See Article 113, page 135 See Article 121, page 148

Comment: The requirements for obtaining a filing date appear in Article 80 EPC and Rule 40 EPC. The EPC 2000 brought the minimum requirements for obtaining a filing date into line with the requirements set out in Article 5 of the Patent Law Treaty 2000.

Articles 14 and 80 EPC and the Implementing Regulations provide that patent applications in any language are now accepted. If an application is not in English, French or German, a translation into one of those languages must be filed within two months of the filing date (Article 14 (2) and Rule 6 (1) EPC). Compliance is checked by the Receiving Section (Article 90 (3) EPC and Rule 57 (a) EPC). If a translation has not been filed in due time, the EPO will invite the applicant to file one within two months (Rule 58 EPC). This deadline is not extendible and further processing is not available (Rule 135 (2) EPC). If the required translation is not filed within the two-month term set by the EPO, the application is deemed withdrawn (Article 14 (2) EPC, last sentence).

Rule 40 EPC also provides for obtaining a filing date by reference to an earlier patent application rather than through filing a description. Where a filing date is obtained by reference, a certified copy of the earlier patent application is due within two months of the new filing; if the earlier application is not in English, French or German, a translation into one of those languages is due by the same date (Rule 40 (3) EPC). The requirement to file a certified copy is, however, waived if a copy is available to the EPO under conditions determined by the EPO President (Rule 53 (2) EPC) and the European Patent Office issued a notice dated 14 September 2009 stating that it was not necessary to file a copy of an earlier application if the earlier application was either an earlier European patent application or an earlier international application filed with the EPO as receiving office.

The deadlines for providing a certified copy of the earlier application and a translation into English, French or German cannot be extended using further processing (Rule 135 (2) EPC). Rather, any deficiencies on filing are noted by the EPO and the applicant is given a non-extendible two-month term to correct them (Article 90 (4) and Rule 55 EPC). If the deficiencies are not corrected in due time, the application will not be dealt with as a European patent application (Rule 55 EPC, first sentence).

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Article 81

A Guide to the EPC 2000 Article 81 Designation of the inventor

Designation of inventor should be filed The European patent application shall designate the inventor. If the with request for grant – Rule 19 (1) applicant is not the inventor or is not the sole inventor, the Name of inventor published unless inventor asks that it be withheld – Rule 20

designation shall contain a statement indicating the origin of the right to the European patent.

Rectification of designation of inventor – Rule 21 Application refused if designation of inventor required but not supplied within 16 months of filing or, if priority claimed, within 16 months of priority date – Rule 60 (1) For replacement and divisional applications, EPO sets time limit for filing missing designation of inventor – Rule 60 (2)

Previously Rule 17

Related Rules Rule 19 Designation of the inventor

(1) The request for grant of a European patent shall contain the designation of the inventor. However, if the applicant is not the inventor or is not the sole inventor, the designation shall be filed in a separate Article 81 – Statement indicating origin of right to European patent if document. The designation shall state the family name, given names applicant not inventor or sole and full address of the inventor, contain the statement referred to in inventor Article 81 and bear the signature of the applicant or his representative.

Filing of designation of inventor checked if application sufficient to obtain filing date – Rule 57 (f) and Article 90 (3) If designation of inventor required but missing, application will be refused if designation not provided within 16 months of filing date or, if priority claimed, within 16 months of priority date, and in any event before application published – Rule 60 (1)

(2) The European Patent Office shall not verify the accuracy of the designation of the inventor.

(3) If the applicant is not the inventor or is not the sole inventor, the EPO shall communicate to the designated inventor the information in the document designating him and the following data: (a) the number of the European patent application; (b) the date of filing of the European patent application and, if priority has been claimed, the date, State and file number of the previous application; (c) the name of the applicant; (d) the title of the invention; (e) the Contracting States designated.

(4) The applicant and the inventor may invoke neither the omission of the communication under paragraph 3 nor any errors contained therein.

Previously Rule 18

Rule 20 Publication of the mention of the inventor (1) The designated inventor shall be mentioned in the published European patent application and the European patent specification, unless he informs the European Patent Office in writing that he has waived his right to be thus mentioned.

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(2) Paragraph 1 shall apply where a third party files with the EPO a final decision determining that the applicant for or proprietor of a European patent is required to designate him as an inventor.

Rule 21 Rectification of the designation of an inventor (1) An incorrect designation of an inventor shall be rectified upon request and only with the consent of the wrongly designated person and, where such a request is filed by a third party, the consent of the applicant for or proprietor of the patent.

Rule 19 shall apply mutatis mutandis.

Previously Rule 19

Rule 19 – Designation of inventor must include statement of origin of entitlement to European patent.

Statement assumed correct. Details forwarded to named inventor

(2) Where an incorrect designation of the inventor has been recorded in the European Patent Register or published in the European Patent Bulletin, its rectification or cancellation shall also be recorded or published therein.

Rule 60 Subsequent designation of the inventor (1) If the designation of the inventor has not been made in accordance with Rule 19, the European Patent Office shall inform the applicant that the European patent application will be refused unless the designation is made within sixteen months of the date of filing of the application or, if priority is claimed, of the date of priority, this period being deemed to have been observed if the information is communicated before completion of the technical preparations for the publication of the European patent application.

(2) Where, in a divisional application or a new application under Article 61, paragraph 1 (b), the designation of the inventor has not been made in accordance with Rule 19, the European Patent Office shall invite the applicant to make the designation within a period to be specified.

Previously Rule 42

Rule 19 – Requirements designation of inventor

for

Article 61 (1)(b) – Replacement application filed when original applicant found not to be entitled Time periods set by EPO must be at least two months and may be extended on request – Rule 132 (2) Notification of loss of rights without decision – Rule 112 Further processing available – Article 121

Other Relevant Rules Rule 57 Examination as to formal requirements Rule 112 Noting of loss of rights Rule 132 Periods specified by the European Patent Office Rule 135 Further processing

See Article 90, page 88 See Article 113, page 135 See Article 120, page 146 See Article 121, page 148

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Comment: Article 81 EPC and Rules 19, 20, 21 and 60 EPC deal with the requirement to include a designation of inventor in a European patent application.

Under Article 81 EPC, a designation of inventor must be filed if the applicant is not the inventor or the sole inventor. If a designation of inventor is required, it should be filed with the request for grant (Rule 19 (1) EPC). The filing of a required designation of inventor is checked by the Receiving Section and if it is missing the applicant is informed (Article 90 (3) and Rule 57 (f) EPC). If the missing designation is not filed within 16 months of filing, or, if priority is claimed, within 16 months of the earliest priority date, the application is refused (Rule 60 (1) EPC). It can, however, be reinstated provided the fee for further processing is paid and the missing designation of inventor is filed within two months of the receipt of notification of refusal (Article 121 and Rule 135 EPC).

For divisional applications and replacement applications filed following entitlement proceedings, any required designation of inventor should be included when the divisional or replacement application is filed. If it is omitted on filing, the EPO will set a time limit for filing it (Rule 60 (2) EPC).

The EPO does not verify the accuracy of a designation of inventor (Rule 19 (2) EPC).

When such a designation is filed, the EPO writes to the designated inventors informing them of the application number, filing date, title of the invention and the name of the applicant as well as the Contracting States designated (Rule 19 (3) EPC). The names of the designated inventors are published when the European patent application is published unless an inventor expressly asks that his or her name be withheld (Rule 20 EPC).

An erroneous designation of inventor can only be rectified with the designated person’s consent (Rule 21 EPC).

The procedures for filing and rectifying designations of inventors are discussed in the Guidelines for Examination in the European Patent Office, Part A, Chapter III, section 5.

Article 82 Unity of invention Allowable independent claims – Rule 43 (2) Unity exists if there is a “technical relationship” between claims – Rule 44 (1)

The European patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.

Partial search report drawn up where there is lack of unity and additional search fees not paid – Rule 64 Partial Euro-PCT supplementary search drawn up where there is lack of unity and additional search fees not paid – Rule 164 (1)

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Article 82

Related Rule Rule 44 Unity of invention

Previously Rule 30

(1) Where a group of inventions is claimed in a European patent application, the requirement of unity of invention under Article 82 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those features which define a contribution which each of the claimed inventions considered as a whole makes over the prior art.

Article 82 – European application must relate to single invention or group of inventions linked by common inventive concept

(2) The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.

Other Relevant Rules

Rule 43 Form and content of claims Rule 64 European search report where the invention lacks unity Rule 164 Unity of invention and further searches

See Article 84, page 75 See Article 92, page 94 See Article 153, page 185

Comment: Under Article 82 EPC, a European patent application must relate to a single invention or a group of inventions linked by a common inventive concept. Rule 44 (1) EPC further defines unity of invention by providing that inventions are linked by a common inventive concept only if they share the same features or corresponding features that give rise to a common contribution over the prior art.

When a search report is drawn up, the EPO will limit the initial search to a single invention and require the payment of additional search fees for further inventions to be searched (Rule 64 EPC). Similarly, the EPO will limit an initial search to a single invention and require the payment of additional search fees for further inventions to be searched when drawing up supplementary search reports for Euro-PCT applications (Rule 164 (1) EPC).

Unity of invention is enforced during prosecution by the requirements of Rule 43 (2) EPC, which only permits a European patent application to contain multiple independent claims in the same category (e.g. method or apparatus) in respect of interrelated products, different uses of the same product or alternative solutions

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to a particular problem.

Case law on unity of invention may be found in the Case Law of the Boards of Appeal of the European Patent Office, section II – B, pages 280-303.

Sequence listings – Rule 30 Biological inventions only disclosed if deposit made – Rule 31 Expert solution – Rule 32

Article 83 Disclosure of the invention

The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a material person skilled in the art.

Sample of biological available on request – Rule 33

New deposit of biological material – Rule 34 Content of description – Rule 42

Related Rules Previously Rules 27a (1) and (4) Compliance checked if application sufficient to obtain filing date – Rule 57 (j) and Article 90 (3)

Rules 30 (2) and (3) also apply to Euro-PCT applications – Rule 163 (3)

Rule 30 Requirements of European patent applications relating to nucleotide and amino acid sequences (1) If nucleotide or amino acid sequences are disclosed in the European patent application, the description shall contain a sequence listing conforming to the Rules laid down by the President of the European Patent Office for the standardised representation of nucleotide and amino acid sequences (2) A sequence listing filed after the date of filing shall not form part of the description.

(3) Where the applicant has not filed a sequence listing complying with the requirements under paragraph 1 at the date of filing, the European Patent Office shall invite the applicant to furnish such a sequence listing and pay the late furnishing fee. If the applicant does not furnish the required sequence listing and pay the required late furnishing fee within a period of two months after such an invitation, the application shall be refused.

Previously Rules 28 (1) and (2) New deposit of biological material – Rule 34

Rule 31 Deposit of biological material

(1) If an invention involves the use of or concerns biological material which is not available to the public and which cannot be described in the European patent application in such a manner as to enable the Article 83 – Disclosure of invention invention to be carried out by a person skilled in the art, the invention in manner sufficiently clear and complete for it to be carried out by shall only be regarded as being disclosed as prescribed in Article 83 if: person skilled in the art (a) a sample of the biological material has been deposited with a recognised depositary institution on the same terms as those laid down in the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure of 28 April 1977 not later than the date of filing of the application; 70

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(2) The information referred to in paragraph 1 (c) and (d) may be submitted (a) within sixteen months after the date of filing of the application or, if priority has been claimed, after the priority date, this period being deemed to have been observed if the information is communicated before completion of the technical preparations for publication of the European patent application; (b) up to the date of submission of a request under Article 93, paragraph 1 (b); (c) within one month after the European Patent Office has communicated to the applicant that the right to inspect the files under Article 128, paragraph 2, exists. The ruling period shall be the one which is the first to expire. The communication of this information shall be considered as constituting the unreserved and irrevocable consent of the applicant to the deposited biological material being made available to the public in accordance with Rule 33.

Article 83

Rule 33 – Sample of biological material available on request Notification of loss of rights without decision – Rule 112 Time limit cannot be extended using further processing – Rule 135 (2)

Article 93 (1)(b) – Request for early publication Article 128 (2) – Right of alleged infringer to inspect file before publication

Rule 33 – Sample of biological material available on request

Rule 32 Expert solution

Previously Rules 28 (4) and (5)

(1) Until completion of the technical preparations for publication of the European patent application, the applicant may inform the European Patent Office that, (a) until the publication of the mention of the grant of the European patent or, where applicable, (b) for twenty years from the date of filing, if the application is refused or withdrawn or deemed to be withdrawn, the availability referred to in Rule 33 shall be effected only by the issue of a sample to an expert nominated by the requester.

Alleged infringer may invoke right to obtain biological material relating to patent application before publication – Rule 33 (1)

(2) The following may be nominated as an expert: (a) any natural person, provided that the requester furnishes evidence, when filing the request, that the nomination has the approval of the applicant; 71

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A Guide to the EPC 2000 (b) any natural person recognised as an expert by the President of the EPO. The nomination shall be accompanied by a declaration from the expert vis à vis the applicant in which he enters into the undertaking given under Rule 33 until either the date on which the patent expires in all the designated States or, where the application is refused, withdrawn or deemed to be withdrawn, the date referred to in paragraph 1 (b), the requester being regarded as a third party.

Previously Rules 28 (3), (6) and (9)

Rule 33 Availability of biological material

Rule 31 – Rules relating to deposit of biological material

(1) Biological material deposited in accordance with Rule 31 shall be available upon request to any person from the date of publication of Article 128 (2) – Right of alleged the European patent application and to any person having the right infringer to inspect file before to inspect the files under Article 128, paragraph 2, prior to that date. publication Subject to Rule 32, such availability shall be effected by the issue of a Rule 32 – Expert solution sample of the biological material to the person making the request (hereinafter referred to as “the requester”).

(2) Said issue shall be made only if the requester has undertaken vis à vis the applicant for or proprietor of the patent not to make the biological material or any biological material derived therefrom available to any third party and to use that material for experimental purposes only, until such time as the patent application is refused or withdrawn or deemed to be withdrawn, or before the European patent has expired in all the designated States, unless the applicant for or proprietor of the patent expressly waives such an undertaking.

The undertaking to use the biological material for experimental purposes only shall not apply in so far as the requester is using that material under a compulsory licence. The term “compulsory licence” shall be construed as including ex officio licences and the right to use patented inventions in the public interest.

(3) For the purposes of paragraph 2, derived biological material shall mean any material which still exhibits those characteristics of the deposited material which are essential to carrying out the invention.

The undertaking under paragraph 2 shall not impede any deposit of derived biological material necessary for the purpose of patent procedure.

Rule 32 – Expert solution

(4) The request referred to in paragraph 1 shall be submitted to the European Patent Office on a form recognised by that Office. The European Patent Office shall certify on the form that a European patent application referring to the deposit of the biological material has been filed, and that the requester or the expert nominated by him under Rule 32 is entitled to the issue of a sample of that material.

After grant of the European patent, the request shall also be submitted to the European Patent Office.

(5) The European Patent Office shall transmit a copy of the request, with the certification provided for in paragraph 4, to the depositary

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Article 83

Rule 31 – Rules relating to deposit of biological material

(6) The EPO shall publish in its Official Journal the list of depositary institutions and experts recognised for the purpose of Rules 31 to 34. Rule 32 – Expert solution

Rule 33 – Sample of biological material available on request Rule 34 – New deposit of biological material

Rule 34 New deposit of biological material

Previously Rule 28a

If biological material deposited in accordance with Rule 31 ceases to Rule 31 – Rules relating to deposit of biological material be available from the recognised depositary institution, an interruption in availability shall be deemed not to have occurred if a new deposit of that material is made with a recognised depositary institution on the same terms as those laid down in the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure of 28 April 1977, and if a copy of the receipt of the new deposit issued by the depositary institution is forwarded to the European Patent Office within four months of the date of the new deposit, stating the number of the European patent application or of the European patent.

Other Relevant Rules Rule 42 Content of the description

See Article 78, page 57

Rule 57 Examination as to formal requirements

See Article 90, page 88

Rule 112 Noting of loss of rights

See Article 113, page 135

Rule 135 Further processing

See Article 121, page 148

Rule 163 Examination of certain formal requirements by the EPO

See Article 153, page 184

Comment: Article 83 EPC requires European patent applications to disclose a claimed invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. For most inventions this requirement is met through the written description and drawings and compliance with Rule 42 (1)(c) EPC, which requires disclosure such that both the technical problem solved by the invention and its solution are understood.

Rules 30 – 34 EPC set out additional provisions relating to the disclosure of biotechnological inventions.

Rule 30 EPC provides that if nucleotide or amino acid sequences are disclosed

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in an application, a sequence listing in a standardised form must be filed. This can be supplied up to two months after the filing date, provided a late furnishing fee of €230 is paid (Rule 30 (3) EPC and Article 2 (14a) Rules Relating to Fees). Failure to provide a timely sequence listing and to pay the fee if necessary results in the application being refused. The application can be reinstated using further processing if the missing sequence listing is filed and the fee is paid together with a 50% uplift within two months of notification that the application has been refused (Article 121 and Rule 135 EPC and Article 2 (12) of the Rules Relating to Fees). Detailed provisions relating to the form and content of sequence listings are set out in a decision of the President dated 28 April 2011.

The conditions for depositing biological material are set out in Rule 31 EPC. A deposit may be made at any recognised depository (Rule 31 (1)(a) EPC).

Information on the institution where the deposit is made, the accession number of the deposited material and, where the deposit is made by someone other than the applicant, confirmation of the depositor’s consent to the applicant making reference to the material must be filed within 16 months of the filing date or, if priority is claimed, within 16 months of the priority date (Rule 31 (2)(a) EPC). This deadline cannot be extended using further processing (Rule 135 (2) EPC). It is brought forward if early publication is requested (Rule 31 (2)(b) EPC) or if an alleged infringer seeks to inspect the deposited material (Rule 31 (2)(c) EPC).

Rules 32 and 33 EPC provide for making samples of biological material available to third parties on request, either directly or via an expert. The replacement of deposited biological material is governed by Rule 34 EPC. Case law relating to sufficiency of disclosure may be found in the Case Law of the Boards of Appeal of the European Patent Office, section II – C, pages 304-332.

The substantive requirements for sufficiency of disclosure in European patent applications are discussed in the Guidelines for Examination in the European Patent Office, Part F, Chapter III. The special rules relating to the filing of biological material are discussed in the Guidelines for Examination in the European Patent Office, Part A, Chapter IV, section 4, while sequence listings are covered in Part A, Chapter IV, section 5.

Article 84 Claims

Form and content of claims – Rule 43 Excess claims fees – Rule 45 Amended claims may not relate to unsearched subject-matter – Rule 137 (5)

The claims shall define the matter for which protection is sought.

They shall be clear and concise and be supported by the description.

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Article 84

Related Rules Rule 43 Form and content of claims

Previously Rule 29

(1) The claims shall define the matter for which protection is sought Rule 43 also applies to replacement in terms of the technical features of the invention. Wherever claims pages – Rule 50 (1) appropriate, claims shall contain: (a) a statement indicating the designation of the subject-matter of the invention and those technical features which are necessary for the definition of the claimed subject-matter but which, in combination, form part of the prior art; (b) a characterising portion, beginning with the expression “characterised in that” or “characterised by” and specifying the technical features for which, in combination with the features stated under subparagraph (a), protection is sought.

(2) Without prejudice to Article 82, a European patent application may contain more than one independent claim in the same category (product, process, apparatus or use) only if the subject-matter of the application involves one of the following: (a) a plurality of interrelated products, (b) different uses of a product or apparatus, (c) alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim.

(3) Any claim stating the essential features of an invention may be followed by one or more claims concerning particular embodiments of that invention.

(4) Any claim which includes all the features of any other claim (dependent claim) shall contain, if possible at the beginning, a reference to the other claim and then state the additional features. A dependent claim directly referring to another dependent claim shall also be admissible. All dependent claims referring back to a single previous claim, and all dependent claims referring back to several previous claims, shall be grouped together to the extent and in the most appropriate way possible.

(5) The number of claims shall be reasonable with regard to the nature of the invention claimed. The claims shall be numbered consecutively in Arabic numerals.

(6) Except where absolutely necessary, claims shall not rely on references to the description or drawings in specifying the technical features of the invention. In particular, they shall not contain such expressions as “as described in part. of the description”, or “as illustrated in figure. of the drawings”.

(7) Where the European patent application contains drawings including reference signs, the technical features specified in the claims shall preferably be followed by such reference signs relating to these features, placed in parentheses, if the intelligibility of the claim can thereby be increased. These reference signs shall not be construed as limiting the claim.

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Article 84

A Guide to the EPC 2000 Rule 45 Claims incurring fees

Previously Rule 31

(1) Any European patent application comprising more than fifteen claims shall, in respect of the sixteenth and each subsequent claim, incur payment of a claims fee.

Notification of loss of rights without decision – Rule 112

(2) The claims fees shall be paid within one month of filing the first set of claims. If the claims fees have not been paid in due time, they may Further processing available – still be paid within one month of a communication concerning the failure Article 121 to observe the time limit.

(3) If a claims fee is not paid in due time, the claim concerned shall be deemed to be abandoned.

Other Relevant Rules Rule 40 Date of filing Rule 50 Documents filed subsequently Rule 57 Examination as to formal requirements Rule 58 Correction of deficiencies in the application documents Rule 62a Applications containing a plurality of independent claims Rule 63 Incomplete search Rule 112 Noting loss of rights Rule 135 Further processing Rule 137 Amendment of the European patent application

See Article 80, page 64 See Article 94, page 98 See Article 90, page 88 See Article 90, page 89 See Article 92, page 93 See Article 92, page 93 See Article 113, page 135 See Article 121, page 148 See Article 123, page 153

Comment: A European patent application must include one or more claims (Article 78 (1)(c) EPC). However, the absence of claims on filing does not prevent an application obtaining a filing date (Article 80 and Rule 40 EPC). The Receiving Section checks whether any claims are included in an application (Article 90 (3) and Rule 57 (c) EPC) and if no claims have been filed will give the applicant an inextensible twomonth period to file them (Rule 58 EPC). This two-month term cannot be extended using further processing (Rule 135 (2) EPC).

The form and content of claims is governed by Article 84 EPC, as supplemented

by Rule 43 EPC. Article 84 EPC requires the claims to be clear, concise and supported by the description. In accordance with Rule 43 (1) EPC, the claims should whenever appropriate be written in two-part form, having a pre-characterising portion corresponding to features known in the prior art and a characterising portion specifying the technical features that distinguish the claimed invention from the prior art.

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The number of independent claims is normally limited to one per claim category (e.g. method, apparatus, etc.). However, multiple independent claims in the same category are allowed if the claims concern interrelated products, different uses of a product or apparatus, or alternative solutions to the same problem where it is inappropriate to cover the alternatives in a single claim (Rule 43 (2) EPC). The total number of claims must, however, be reasonable with regard to the nature of the claimed invention (Rule 43 (5) EPC). If the Search Division considers that the claims do not comply with Rule 43(2) EPC, the applicant is asked to elect which claims are to be searched. If no election is made within two months, the first claim in each category is searched (Rule 62a (1) EPC). This two-month period cannot be extended using further processing (Rule 135(2) EPC). References to technical features illustrated in any drawings should appear in parentheses throughout the claims (Rule 43 (7) EPC).

Excess claims fees of €235 per claim in excess of 15 and €580 per claim in excess of 50 must be paid (Rule 45 (1) EPC and Article 2 (15) of the Rules Relating to Fees). These fees are due within one month of the date of filing but can be paid up to one month from notification of non-payment by the EPO (Rule 45 (2) EPC).

Further processing is available and the fees can be paid up to two months from notification with a 50% uplift (Article 121 and Rule 135 EPC and Article 2 (12) of the Rules Relating to Fees).

Claims may only relate to subject-matter that has been searched. Rules 62a (2) and 63 (3) EPC require the Examining Division to request an applicant to delete any claims which have not been the subject of a search. Rule 137 (5) EPC provides that amended claims may not relate to unsearched subject-matter that does not combine with the originally claimed invention or group of inventions to form a single general inventive concept.

Case law relating to the content and form of claims may be found in the Case Law of the Boards of Appeal of the European Patent Office, section II-A, pages 241279.

The payment of claims fees is discussed in the Guidelines for Examination in the EPO, Part A, Chapter III, section 9. Substantive considerations relating to claims are discussed in the Guidelines for Examination in the EPO, Part C, Chapter IV.

Article 85 Abstract The abstract shall serve the purpose of technical information only; it may not be taken into account for any other purpose, in particular for interpreting the scope of the protection sought or applying Article 54, paragraph 3.

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A Guide to the EPC 2000 Related Rules Rule 47

Previously Rule 33

Form and content of the abstract Rule 47 also applies to replacement abstract – Rule 50 (1)

(1) The abstract shall indicate the title of the invention.

(2) The abstract shall contain a concise summary of the disclosure as contained in the description, the claims and any drawings. The summary shall indicate the technical field to which the invention pertains, and shall be drafted in a manner allowing the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention. The abstract shall, where applicable, contain the chemical formula which, among those contained in the application, best characterises the invention. It shall not contain statements on the alleged merits or value of the invention or on speculative applications thereof.

(3) The abstract shall preferably not contain more than 150 words.

(4) If the European patent application contains drawings, the applicant shall indicate the figure or, exceptionally, the figures of the drawings which should be published with the abstract. The European Patent Office may decide to publish one or more other figures if it considers that they better characterise the invention. Each essential feature mentioned in the abstract and illustrated by a drawing shall be followed by a reference sign placed in parentheses.

(5) The abstract shall be drafted in such a manner as to constitute an efficient instrument for the purpose of searching in the particular technical field. In particular, it shall make it possible to assess whether consultation of the European patent application itself is necessary.

Previously Rule 47

Rule 66 Definitive content of the abstract Upon drawing up the European search report, the European Patent Office shall determine the definitive content of the abstract and transmit it to the applicant together with the search report.

Other Relevant Rules Rule 40 Date of filing See Article 80, page 64 Rule 50 Documents filed subsequently See Article 94, page 98 Rule 57 Examination as to formal See Article 90, page 88 requirements Rule 58 Correction of deficiencies in the See Article 90, page 89 application documents Rule 135 Further processing See Article 121, page 148

Comment: A European patent application must include an abstract (Article 78 (1)(e) EPC). The absence of an abstract does not, however, prevent an application from being

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Article 85-86

accorded a filing date (Article 80 and Rule 40 EPC). The Receiving Section checks for an abstract when the application is filed (Article 90 (3) and Rule 57 (d) EPC) and if it has been omitted, an applicant is given an inextensible two-month period to file it (Rule 58 EPC). The two-month term cannot be extended using further processing (Rule 135 (2) EPC).

The form and content of an abstract are prescribed by Rule 47 EPC. It must include the title of the invention and should concisely summarise the invention, normally in no more than 150 words. The purpose of the abstract is to help with the identification of an application when it is being cited against other applications and the abstract must be drafted with that end in mind (Rule 47 (5) EPC). The EPO may use a different abstract at its discretion, however, and the one it chooses is definitive (Rule 66 EPC).

Because the abstract may be rewritten after filing in a manner not under the applicant’s control, the abstract is not used for determining a patent’s scope of protection. The content of a published abstract never forms part of the state of the art for the assessment of novelty under Article 54 (3) EPC. Rather, an abstract only constitutes prior art as of the date of its publication.

Procedures relating to filing and amending an abstract are discussed in the Guidelines for Examination in the European Patent Office, Part A, Chapter III, section 10.

Article 86 Renewal fees for the European patent application (1) Renewal fees for the European patent application shall be paid to the European Patent Office in accordance with the Implementing Regulations. These fees shall be due in respect of the third year and each subsequent year, calculated from the date of filing of the application. If a renewal fee is not paid in due time, the application shall be deemed to be withdrawn.

(2) The obligation to pay renewal fees shall terminate with the payment of the renewal fee due in respect of the year in which the mention of the grant of the European patent is published in the European Patent Bulletin.

Payment due at end of relevant month – Rule 51 (1) Renewal fees may be paid with fine within six months of due date – Rule 51 (2) Late surcharge is 50% – RRF Article 2 (5) Renewal fees for divisional application may be paid without fine up to four months from filing or with fine up to six months from filing – Rules 51 (2) and (3) Grant delayed until payment of renewal fees falling due after issue of proposed text for grant – Rule 71a (4) Notification of loss of rights without decision – Rule 112 Interruption of proceedings – Rule 142

Related Rule Rule 51 Payment of renewal fees

Previously Rule 37

(1) A renewal fee for the European patent application in respect of the coming year shall be due on the last day of the month containing the anniversary of the date of filing of the European Time limits in Rules 51 (2) – (5) cannot patent application. Renewal fees may not be validly paid more be extended using further processing – Rule 135 (2) than three months before they fall due.

(2) If a renewal fee is not paid in due time, the fee may still be

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A Guide to the EPC 2000 paid within six months of the due date, provided that an additional fee is also paid within that period.

(3) Renewal fees already due in respect of an earlier application at the date on which a divisional application is filed shall also be paid for the divisional application and shall be due on its filing. These fees and any renewal fee due within four months of filing the divisional application may be paid within that period without an additional fee. Paragraph 2 shall apply.

(4) If a European patent application has been refused or deemed to be withdrawn as a result of non-observance of a time limit, and if the Article 122 – Re-establishment applicant’s rights are re-established under Article 122, a renewal fee of rights (a) which would have fallen due under paragraph 1 in the period starting on the date on which the loss of rights occurred, up to and including the date of the notification of the decision reestablishing the rights shall be due on that latter date. This fee and any renewal fee due within four months from that latter date may still be paid within four months of that latter date without an additional fee. Paragraph 2 shall apply. (b) which, on the date on which the loss of rights has occurred, was already due but the period provided for in paragraph 2 has not yet expired, may still be paid within six months from the date of the notification of the decision re-establishing the rights, provided that the additional fee pursuant to paragraph 2 is also paid within that period.

Article 112a (5) – Re-opening of Board of Appeal proceedings following successful petition for review

Article 61 (1)(b) – Replacement application filed when original applicant found not to be entitled

(5) If the Enlarged Board of Appeal re-opens proceedings before the Board of Appeal under Article 112a, paragraph 5, second sentence, a renewal fee (a) which would have fallen due under paragraph 1 in the period starting on the date when the decision of the Board of Appeal subject to the petition for review was taken, up to and including the date of the notification of the decision of the Enlarged Board of Appeal re-opening proceedings before the Board of Appeal, shall be due on that latter date. This fee and any renewal fee due within four months from that latter date may still be paid within four months of that latter date without an additional fee.

Paragraph 2 shall apply. (b) which, on the day on which the decision of the Board of Appeal was taken, was already due but the period provided for in paragraph 2 has not yet expired, may still be paid within six months from the date of the notification of the decision of the Enlarged Board of Appeal re-opening proceedings before the Board of Appeal, provided that the additional fee pursuant to paragraph 2 is also paid within that period.

(6) A renewal fee shall not be payable for a new European patent application filed under Article 61, paragraph 1 (b), in respect of the year in which it was filed and any preceding year.

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Article 86

Other Relevant Rules Rule 71a Conclusion of the grant procedure

See Article 94, page 100

Rule 112 Noting of loss of rights

See Article 113, page 135

Rule 135 Further processing

See Article 121, page 148

Rule 142 Interruption of proceedings

See Article 125, page 157

Comment: Article 86 and Rule 51 EPC govern the payment of renewal fees for European patent applications.

Under Article 86 (1) EPC, renewal fees first become payable in the third year of a European patent application’s life. The fees are then due on the last day of the month containing the anniversary of the filing date, for that year and each successive year (Rule 51 (1) EPC). The amount due ranges from €465 for the third year up to €1,560 for the tenth and each successive year (Article 2 (4) of the Rules Relating to Fees). The obligation to pay renewal fees continues until payment of the renewal fee for the year when a patent is granted (Article 86 (2) EPC).

The deadlines for paying renewal fees cannot be extended using further processing (Rule 135 (2) EPC). However, renewal fees can be paid up to six months late with a 50% fine (Rule 51 (2) EPC and Article 2 (5) of the Rules Relating to Fees).

If a divisional application is filed, renewal fees must be paid in respect of all the years in which a parent application was pending. These fall due on filing but can be paid up to four months late without a fine and up to six months late with a 50% uplift (Rules 51 (2) and (3) EPC and Article 2 (5) of the Rules Relating to Fees).

In contrast, no renewal fees in respect of earlier years need be paid when a replacement application is filed following successful entitlement proceedings (Rule 51 (6) EPC).

If an application is restored following an application for re-establishment of rights under Article 122 EPC or a petition for review under Article 112a EPC, any renewal fees falling due between the lapse and the restoration must be paid. If the application lapsed before the fee became due, the renewal fee may be paid up to four months after restoration without a fine and up to six months after restoration with a 50% uplift. If the normal due date for payment had already passed when the application lapsed, the renewal fee plus a 50% uplift must be paid within six months of the application being restored (Rules 51 (4) and (5) EPC).

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Article 87

A Guide to the EPC 2000 Chapter II Priority Article 87 Priority right

(1) Any person who has duly filed, in or for (a) any State party to the Paris Convention for the Protection of Industrial Property or (b) any Member of the World Trade Organization, an application for a patent, a utility model or a utility certificate, or his successor in title, shall enjoy, for the purpose of filing a 12-month priority period cannot be European patent application in respect of the same invention, extended using further processing – a right of priority during a period of 12 months from the date Article 121 (4) of filing of the first application.

Application for re-establishment of right to priority must be filed within two months of end of priority period – Rule 136 (1)

(2) Every filing that is equivalent to a regular national filing under the national law of the State where it was made or under bilateral or multilateral agreements, including this Convention, shall be recognised as giving rise to a right of priority.

European applications equivalent to national filings – Article 66 PCT applications equivalent to national filings – Article 11 (3) PCT

(3) A regular national filing shall mean any filing that is sufficient to establish the date on which the application was filed, whatever the outcome of the application may be.

(4) A subsequent application in respect of the same subject-matter as a previous first application and filed in or for the same State shall be considered as the first application for the purposes of determining priority, provided that, at the date of filing the subsequent application, the previous application has been withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.

(5) If the first filing has been made with an industrial property authority which is not subject to the Paris Convention for the Protection of Industrial Property or the Agreement Establishing the World Trade Organization, paragraphs 1 to 4 shall apply if that authority, according to a communication issued by the President of the European Patent Office, recognises that a first filing made with the European Patent Office gives rise to a right of priority under conditions and with effects equivalent to those laid down in the Paris Convention.

Other Relevant Rules Rule 134 Extension of periods Rule 136 Re-establishment of rights

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See Article 120, page 146 See Article 122, page 151

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Articles 87-88

Comment: Article 87 (1) EPC was amended by the EPC 2000 to liberalise the definition of priority right. It provides that priority claims may be based on filings in WTO countries as well as on filings in countries party to the Paris Convention. This brings the EPC into line with Article 2 of TRIPS and effectively overrules the Enlarged Board of Appeal decisions in G2/02 and G3/02, which held that priorities from WTO countries that were not members of the Paris Convention were not recognised under the EPC. Additionally, Article 87 (5) EPC was amended to streamline the process by which the EPO can recognise priority rights based on applications in countries that have not joined the WTO or the Paris Convention. Such rights are now recognised upon the issue of an official communication by the EPO President. Priority may then be claimed from earlier filings in the countries identified in the communication, and the priority rights are valid for all Contracting States. Article 87 (5) EPC also now refers to filings with “an industrial property authority” rather than to filings in “states”, thus avoiding political issues relating to the recognition of states.

The right to priority is limited to filings made in the 12-month period following the first filing in a Paris Convention, WTO or other recognised country (Article 87 (1) EPC). This period is only extended if it ends on a day when the EPO is shut or on which there is a general disruption of mail (Rule 134 EPC). Further processing is not available (Article 121 (4) EPC). If the 12-month period is missed despite all due care having been taken, it is possible to apply for re-establishment of rights under Article 122 EPC. However, any such application must be made within two months of the missed priority deadline (Rule 136 (1) EPC).

In order to support a priority claim, an earlier application must contain an enabling disclosure of the invention claimed (see G3/93). In determining whether an earlier application relates to “the same invention” as a later application, the test is whether the invention can be directly and unambiguously derived from the earlier application (see G2/98).

Case law on the right to priority may be found in the Case Law of the Boards of Appeal of the European Patent Office, section II, pages 333-359. Consideration of priority rights during substantive examination is discussed in the Guidelines for Examination in the European Patent Office, Part F, Chapter VI. The issuance of certified priority documents is discussed in the Guidelines for Examination in the European Patent Office, Part A, Chapter XI, section 6.

Article 88 Claiming priority (1) An applicant desiring to take advantage of the priority of a previous Priority declaration must include application shall file a declaration of priority and any other document date, country and application required, in accordance with the Implementing Regulations. number of earlier filing – Rule 52 (1) 83

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(2) Multiple priorities may be claimed in respect of a European patent application, notwithstanding the fact that they originated in different countries. Where appropriate, multiple priorities may be claimed for any one claim. Where multiple priorities are claimed, time limits Correction possible within four which run from the date of priority shall run from the earliest date of months of filing, provided correction occurs within 16 months of earliest priority.

Priority declaration due on filing of European application but may be filed up to 16 months from earliest priority date – Rule 52 (2)

priority date – Rule 52 (3) No corrections of priority claims allowed following request for early publication – Rule 52 (4)

(3) If one or more priorities are claimed in respect of a European patent application, the right of priority shall cover only those elements of the European patent application which are included in the application or applications whose priority is claimed.

Certified copy due within 16 months of earliest priority date – Rule 53 (1)

(4) If certain elements of the invention for which priority is claimed do not appear among the claims formulated in the previous Certified copy deemed filed if available to EPO under conditions determined by application, priority may nonetheless be granted, provided that the documents of the previous application as a whole specifically EPO President – Rule 53 (2) If application number or required disclose such elements. certified copy not provided on filing, EPO will set term for filing it – Rule 59

Related Rules Rule 52 Declaration of priority

Previously Rules 38 (1), (2) and (6)

(1) The declaration of priority referred to in Article 88, paragraph 1, shall indicate the date of the previous filing, the State party to the Paris Convention or Member of the World Trade Organization in or for which it was made and the file number. In the case referred to in Article 87, Article 87 (5) – Priority claims from non-Paris Convention and non-WTO paragraph 5, the first sentence shall apply mutatis mutandis.

Article 88 (1) – Declaration of priority and supporting documents

countries Compliance with Rule 52 checked if application sufficient to obtain filing date – Rule 57 (g) and Article 90 (3) Applicant given opportunity to correct deficiencies in priority declaration – Rule 59 Time limit for correcting priority details or adding priority claim cannot be extended using further processing – Rule 135 (2) Article 93 (1)(b) – Request for early publication

(2) The declaration of priority shall preferably be made on filing the European patent application. It may still be made within sixteen months from the earliest priority date claimed.

(3) The applicant may correct the declaration of priority within sixteen months from the earliest priority date claimed, or, where the correction would cause a change in the earliest priority date claimed, within sixteen months from the corrected earliest priority date, whichever sixteen month period expires first, provided that such a correction may be submitted until the expiry of four months from the date of filing accorded to the European patent application.

(4) However, a declaration of priority may not be made or corrected after a request under Article 93, paragraph 1 (b), has been filed.

(5) The particulars of the declaration of priority shall appear in the published European patent application and the European patent specification.

Previously Rules 38 (3) – (5) and elements of Article 88 (1) Filing of certified copy checked if application sufficient to obtain filing date – Rule 57 (g) and Article 90 (3)

Rule 53 Priority documents (1) An applicant claiming priority shall file a copy of the previous application within sixteen months of the earliest priority date

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claimed. This copy and the date of filing of the previous application shall be certified as correct by the authority with which that application was filed.

If certified copy not filed, applicant given opportunity to remedy omission – Rule 59

(2) The copy of the previous application shall be deemed to be duly filed if a copy of that application available to the European Patent Office is to be included in the file of the European patent application under the conditions determined by the President of the European Patent Office.

Time limit for providing certified copy cannot be extended using further processing – Rule 135 (2)

(3) Where the previous application is not in an official language of theEuropean Patent Office and the validity of the priority claim is relevant to the determination of the patentability of the invention concerned, the European Patent Office shall invite the applicant for or proprietor of the European patent to file a translation of that application into one of the official languages within a period to be specified.

Alternatively, a declaration may be submitted that the European patent application is a complete translation of the previous application.

Paragraph 2 shall apply mutatis mutandis. If a requested translation of a previous application is not filed in due time, the right of priority for the European patent application or for the European patent with respect to that application shall be lost. The applicant for or proprietor of the European patent shall be informed accordingly.

Rule 54 Issuing priority documents

Rule 40 Date of filing Rule 57 Examination as to formal requirements Rule 59 Deficiencies in claiming priority Rule 112 Noting of loss of rights Rule 132 Periods specified by the EPO Rule 135 Further processing Rule 163 Examination of certain formal requirements by the EPO

See Article 80, page 64 See Article 90, page 88 See Article 90, page 89 See Article 113, page 135 See Article 120, page 146 See Article 121, page 148 See Article 153, page 184

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Time periods set by EPO must be at least two months and may be extended on request – Rule 132 (2) Notification of loss of rights without decision – Rule 112 Further processing available – Article 121

Previously Rule 38a

On request, the European Patent Office shall issue to the applicant a certified copy of the European patent application (priority document), under the conditions determined by the President of the European Patent Office, including the form of the priority document and the circumstances under which an administrative fee shall be paid.

Other Relevant Rules

Rule 53 (2) also applies to certified copies in support of filings by reference and Euro-PCT applications – Rule 40 (3), Rule 163 (2)

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Articles 88-89

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Comment: The procedure whereby a European patent application may claim priority from an earlier patent, utility model or utility certificate application is laid out in Article 88 and Rules 52 and 53 EPC. A declaration of priority must identify the date and country of the earlier filing and the application number assigned to it (Rule 52 (1) EPC). These details should be provided when filing an application but can be supplied up to 16 months from the earliest claimed priority date (Rule 52 (2) EPC).

Errors in a priority claim may be corrected within four months of filing and within 16 months of the earliest claimed or corrected priority date (Rule 52 (3) EPC). No corrections are permitted once an applicant has filed a request for early publication (Rule 52 (4) EPC).

In order to complete a priority claim, an applicant must file a certified copy of the earlier application within 16 months of the claimed priority date (Rule 53 (1) EPC). This requirement may be waived if a copy is available to the EPO by other means (Rule 53 (2) EPC). By a decision of the President dated 9 August 2012, the requirement to provide a certified copy of a priority document has been waived for priority claims based on European patent applications, PCT applications filed at the EPO, Chinese, Japanese and Korean patent or utility model applications, and US provisional and non-provisional patent applications.

It is no longer obligatory to file a translation of a priority document that is not in English, French or German. Rather, under Rule 53 (3) EPC, the EPO will request a translation only if the validity of the priority claim becomes relevant during prosecution. The period for submitting a requested translation will be at least two months (Rule 132 (2) EPC). The requirement can be fulfilled by filing a declaration that the European application itself is a complete translation of the previous application. Failure to file a translation or a declaration in time results in the priority right being lost (Rule 53 (3) EPC). The applicant will be informed of the loss of rights and futher processing is available to restore a lost priority right.

If an application claims priority but the filing number of the earlier application is omitted, or if a required certified copy of the earlier application is not filed in due time, the EPO will inform the applicant and set a deadline for remedying the omission (Rule 59 EPC).

The initial checking of priority claims is discussed in the Guidelines for Examination in the European Patent Office, Part A, Chapter III, section 6. The issuance of certified priority documents is discussed in Part A, Chapter XI, section 6. Consideration of priority rights during substantive examination is discussed in Part F, Chapter VI. Article 89 Effect of priority right

Article 54 (2) – Definition of state of the art Article 54 (3) – Prior-filed European patent applications

The right of priority shall have the effect that the date of priority shall count as the date of filing of the European patent application for the Article 60 (2) – Assessment of purposes of Article 54, paragraphs 2 and 3, and Article 60, paragraph 2. entitlement to European patent where different parties arrive independently at same invention

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PART IV PROCEDURE UP TO GRANT Article 90 Examination on filing and examination as to formal requirements

Requirements for filing date checked on filing. EPO will set two-month term to correct deficiencies – Rule 40 and Rule 55

(1) The European Patent Office shall examine, in accordance with the Notification of loss of rights without Implementing Regulations, whether the application satisfies the decision – Rule 112 requirements for the accordance of a date of filing.

Further processing not available to

(2) If a date of filing cannot be accorded following the examination extend two-month term for correcting under paragraph 1, the application shall not be dealt with as a deficiencies – Rule 135 (2) Article 14 – Language requirements European patent application.

(3) If the European patent application has been accorded a date of filing, the European Patent Office shall examine, in accordance with the Implementing Regulations, whether the requirements in Articles 14, 78 and 81, and, where applicable, Article 88, paragraph 1, and Article 133, paragraph 2, as well as any other requirement laid down in the Implementing Regulations, have been satisfied.

Article 78 – Content of European patent application Article 81 – Designation of inventor Article 88 (1) – Declaration of priority Article 133 (2) – Representation of non-EPC state applicants Procedure if application insufficient to

(4) Where the European Patent Office in carrying out the examination obtain filing date – Rule 55 under paragraphs 1 or 3 notes that there are deficiencies which may be Filing of missing parts and re-dating corrected, it shall give the applicant an opportunity to correct them. of application – Rule 56 (5) If any deficiency noted in the examination under paragraph 3 is not corrected, the European patent application shall be refused unless a different legal consequence is provided for by this Convention.

Where the deficiency concerns the right of priority, this right shall be lost for the application.

Examination as to requirements – Rule 57

formal

Correction of other deficiencies after filing date allocated – Rule 58 Deficiencies in claiming priority – Rule 59

Related Rules Rule 55 Examination on filing

Previously Rule 39

If the examination under Article 90, paragraph 1, reveals that the application fails to meet the requirements laid down in Rule 40, paragraph 1 (a) or (c), paragraph 2 or paragraph 3, first sentence, the European Patent Office shall inform the applicant of any deficiencies and advise him that the application will not be dealt with as a European patent application unless such deficiencies are remedied within two months. If the applicant does this, he shall be informed of the date of filing accorded by the Office.

Rule 56 Missing parts of the description or missing drawings (1) If the examination under Article 90, paragraph 1, reveals that parts of the description, or drawings referred to in the description or in the claims, appear to be missing, the European Patent Office shall invite the applicant to file the missing parts within two months. The applicant may not invoke the omission of such a communication.

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Article 90 (1) – Examination as to formal requirements for obtaining filing date Rule 40 – Requirements for obtaining filing date Notification of loss of rights without decision – Rule 112 Time limit cannot be extended using further processing – Rule 135 (2)

Previously Rule 43 Article 90 (1) – Examination as to formal requirements for obtaining filing date Time limit cannot be extended using further processing – Rule 135 (2)

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Article 90

A Guide to the EPC 2000 (2) If missing parts of the description or missing drawings are filed later than the date of filing, but within two months of the date of filing or, if a communication is issued under paragraph 1, within two months of that communication, the application shall be re-dated to the date on which the missing parts of the description or missing drawings were filed. The European Patent Office shall inform the applicant accordingly.

Rule 40 (1) – Requirements for obtaining filing date Rule 53 (2) – Certified copy deemed duly filed if available to EPO under conditions determined by EPO President Rule 53 (3) – Translation or declaration that application is complete translation of earlier application

(3) If the missing parts of the description or missing drawings are filed within the period under paragraph 2, and the application claims priority of an earlier application, the date of filing shall, provided that the missing parts of the description or the missing drawings are completely contained in the earlier application, remain the date on which the requirements laid down in Rule 40, paragraph 1, were fulfilled, where the applicant so requests and files, within the period under paragraph 2: (a) a copy of the earlier application, unless such copy is available to the European Patent Office under Rule 53, paragraph 2; (b) where the earlier application is not in an official language of the European Patent Office, a translation thereof in one of these languages, unless such copy is available to the European Patent Office under Rule 53, paragraph 3; and (c) an indication as to where the missing parts of the description or the missing drawings are completely contained in the earlier application and, where applicable, in the translation thereof.

(4) If the applicant: (a) fails to file the missing parts of the description or the missing drawings within the period under paragraph 1 or 2, or (b) withdraws under paragraph 6 any missing part of the description or missing drawing filed under paragraph 2, any references referred to in paragraph 1 shall be deemed to be deleted, and any filing of the missing parts of the description or missing drawings shall be deemed not to have been made. The European Patent Office shall inform the applicant accordingly.

(5) If the applicant fails to comply with the requirements referred to in paragraph 3 (a) to (c) within the period under paragraph 2, the application shall be re-dated to the date on which the missing parts of the description or missing drawings were filed. The European Patent Office shall inform the applicant accordingly.

(6) Within one month of the notification referred to in paragraph 2 or 5, last sentence, the applicant may withdraw the missing parts of the description or the missing drawings filed, in which case the re-dating shall be deemed not to have been made. The European Patent Office shall inform the applicant accordingly.

Previously Article 91 (1) and Rules 40 and 41

Rule 57 Examination as to formal requirements

Article 90 (3) – Examination of other formal requirements following allocation of filing date

If the European patent application has been accorded a date of filing, the European Patent Office shall examine, in accordance with Article 90, paragraph 3, whether: 88

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Part IV: Procedure up to Grant (a) a translation of the application required under Article 14, paragraph 2, under Rule 36, paragraph 2, second sentence, or under Rule 40, paragraph 3, second sentence, has been filed in due time;" (b) the request for grant of a European patent satisfies the requirements of Rule 41; (c) the application contains one or more claims in accordance with Article 78, paragraph 1 (c), or a reference to a previously filed application in accordance with Rule 40, paragraphs 1 (c), 2 and 3, indicating that it replaces also the claims; (d) the application contains an abstract in accordance with Article 78, paragraph 1 (e); (e) the filing fee and the search fee have been paid in accordance with Rule 17, paragraph 2, Rule 36, paragraph 3, or Rule 38; (f) the designation of the inventor has been made in accordance with Rule 19, paragraph 1; (g) where appropriate, the requirements laid down in Rules 52 and 53 concerning the claim to priority have been satisfied; (h) where appropriate, the requirements of Article 133, paragraph 2, have been satisfied; (i) the application meets the requirements laid down in Rule 46 and Rule 49, paragraphs 1 to 9 and 12. (j) the application meets the requirements laid down in Rule 30.

Article 90

Article 14 (2) – Translation of application filed in language other than English, French or German Rule 36 (2) – Translation of divisional application when filed in language other than English, French or German Rule 40 (3) – Translation of previous application when filing by reference, where previous application not in English, French or German Rule 41 – Form and content of request for grant Article 78 (1)(c) – Application must include one or more claims Rule 40 (1)(c), (2) and (3) – Reference to earlier application and statement that it replaces description, claims and drawings Article 78 (1)(e) – Application must include an abstract Rule 17 (2), Rule 36 (3) and Rule 38 – Filing and search fees due within one month of filing date, including for replacement and divisional applications Rule 19 (1) – Designation of inventor required if applicant not inventor or sole inventor Rule 52 – Declaration of priority Rule 53 – Filing of priority documents Article 133 (2) – Representation of non-EPC state applicants Rule 46 – Form of drawings Rules 49 (1) – (9) and (12) – Form of other documents Rule 30 – Requirements for filing nucleotide and amino acid sequences

Rule 58 Correction of deficiencies in the application documents Previously Article 91 (1) and Rules 40 and 41 If the European patent application does not comply with the requirements of Rule 57 (a) to (d), (h) and (i), the European Patent Office shall inform the applicant accordingly and invite him to correct the deficiencies noted within two months. The description, claims and drawings may be amended only to an extent sufficient to remedy such deficiencies.

Rule 59 Deficiencies in claiming priority If the file number of the previous application under Rule 52, paragraph 1, or the copy of that application under Rule 53, paragraph 1, have not been filed in due time, the European Patent Office shall inform the applicant accordingly and invite him to file them within a period to be specified.

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Rule 57 (a) – Any required translation filed Rule 57 (b) – Form and content of request for grant Rule 57 (c) – Application contains one or more claims or reference to earlier application that replaces claims Rule 57 (d) – Abstract provided Rule 57 (h) – Representative appointed for non-EPC state applicants Rule 57 (i) – Form of drawings and other pages Time limit cannot be extended using further processing – Rule 135 (2) Rule 52 (1) – Declaration of priority must include application number, date and country of earlier filing Rule 53 (1) – Certified copy of priority document due within 16 months of earliest priority date Time periods set by EPO must be at least 2 months and may be extended on request – Rule 132 (2) Time limit cannot be extended using further processing – Rule 135 (2)

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Article 90

A Guide to the EPC 2000 Other Relevant Rules

Rule 17 Filing of a new European patent application by the entitled See Article 61, page 39 person Rule 19 Designation of the inventor See Article 81, page 66 Rule 30 Requirements of European patent applications relating to See Article 83, page 70 nucleotide and amino acid sequences Rule 36 European divisional applications See Article 76, page 52 Rule 38 Filing fee and search fee See Article 78, page 56 Rule 40 Date of filing See Article 80, page 64 Rule 41 Request for grant See Article 78, page 56 Rule 46 Form of the drawings See Article 78, page 58 Rule 49 General provisions governing the presentation of the See Article 78, page 59 application documents Rule 52 Declaration of priority See Article 88, page 83 Rule 53 Priority documents See Article 88, page 83 Rule 60 Subsequent designation of the inventor See Article 81, page 67 Rule 112 Noting of loss of rights See Article 113, page 135 Rule 132 Periods specified by the European Patent Office See Article 120, page 146 Rule 135 Further processing See Article 121, page 148 Rule 163 Examination of certain formal requirements by the European See Article 153, page 184 Patent Office

Comment: Article 90 and Rules 55 – 60 EPC detail the formalities examination conducted on filing and the procedures for correcting deficiencies in new European patent applications.

When an application is filed, the Receiving Section first checks that the minimum requirements for obtaining a filing date have been met (Article 90 (1) EPC). Rule 40 EPC lists these as an indication that a European patent is being sought; information identifying the applicant or enabling the applicant to be contacted; and either a description of an invention or a reference to the filing date, application number and state of an earlier-filed patent application (Rule 40 (1) EPC). If the minimum filing requirements have not been met and the applicant can be contacted, the EPO will advise the applicant that the application will not be treated as a European patent application unless the omissions are remedied within two months of the notification (Rule 55 EPC). This two-month term cannot be extended using further processing (Rule 135 (2) EPC).

If parts of the description or drawings are missing, the applicant is given an opportunity to correct the omission, within either two months of filing or of notification of the deficiency from the EPO (Rules 56 (1) and (2) EPC). If an applicant files the omitted parts within one of these two-month periods, the application is normally re-dated to the day on which the omitted parts are filed (Rule 56 (2) EPC).

However, the earlier filing date can be retained if the application claims priority from an earlier application and the applicant identifies where the missing parts appear in

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the earlier application within the two-month term (Rule 56 (3) EPC). A certified copy of the earlier application must be filed with the EPO if a copy is not already available under conditions determined by the EPO President. If the earlier application is not in English, French or German, a translation or statement that the European application is a complete translation of the earlier application must be provided.

Having checked that an application fulfils the minimum requirements for obtaining a filing date and that all parts of the description and any drawings are present, the Receiving Section then checks for: • any required translations into English, French or German (Article 14 and Rule 57 (a) EPC); • a request for grant and an abstract, together with a description and one or more claims, or a reference to an earlier application that replaces the description and/or claims (Article 78 and Rules 57 (b), (c), and (d) EPC); • payment of the filing and search fees (Rule 57 (e) EPC); • a designation of inventor, where the applicant is not the inventor or sole inventor (Article 81 and Rule 57 (f) EPC); • priority details, comprising the date of filing, application number and country of the earlier filing (Article 88 (1) and Rule 57 (g) EPC); • appointment of an authorised representative, where the applicant is not a national or resident of an EPC Contracting State and does not have a principal place of business in one (Article 133 (2) and Rule 57 (h) EPC); and • the required form of any pages of description or drawings and any amino acid or nucleotide sequence listings (Rules 30, 46, 49, and 57 (i) and (j) EPC).

The EPO will set a two-month deadline for remedying deficiencies if the applicant has omitted a translation, claims or an abstract; if the request for grant is not in the correct form; if the applicant has failed to appoint a required representative; or if the application papers are incorrect as to form (Rule 58 EPC). This deadline is not extendible and further processing is not available (Rule 135 (2) EPC).

If an applicant claims priority but omits the number of the earlier application, or fails to file a required certified copy in due time, the EPO will set a deadline for making good the omission (Rule 59 EPC).

If a required designation of inventor is missing, the Receiving Section informs the applicant (Article 90 (3) and Rule 57 (f) EPC). If the missing designation is not supplied within 16 months of filing, or, if priority is claimed, within 16 months of the priority date, the application is refused (Rule 60 (1) EPC). Further processing is available and if the application is refused, it can be reinstated provided the missing designation of inventor is filed and the fee for further processing is paid within two months of receipt of notification that the application has been refused (Article 121 and Rule 135 EPC).

Case law on the preliminary formalities examination may be found in the Case Law of the Boards of Appeal of the European Patent Office, section IV – A, pages 725-747.

The formalities examination is also discussed in the Guidelines for Examination in the European Patent Office, Part A, chapter III.

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Content of Articles 91 (1) – (3) moved to Articles 90 (3) – (5) and Rule 57 Content of Article 91 (5) moved to Article 90 (5) and Rule 60 Content of search report – Rule 61 Extended European search report – Rule 62

Article 91 Examination as to formal requirements (deleted)

Article 92 Drawing up of the European search report

The European Patent Office shall, in accordance with the Implementing Regulations, draw up and publish a European Incomplete search – Rule 63 search report in respect of the European patent application on Search report where there is lack of unity – the basis of the claims, with due regard to the description and Rule 64 any drawings.

Applications containing a plurality of independent claims – Rule 62a

Transmittal of search report to applicant – Rule 65 Supplementary search of applications – Rule 164 (1)

Euro-PCT

Additional searches of Euro-PCT applications – Rule 164 (2) Search fee refunded if application withdrawn before search – RRF 9 (1) Search fee for divisional or replacement application refunded in part if search based on content of earlier search – RRF 9 (2)

Previously Rule 44

Related Rules Rule 61 Content of the European search report (1) The European search report shall mention those documents, available to the European Patent Office at the time of drawing up the report, which may be taken into consideration in deciding whether the invention to which the European patent application relates is new and involves an inventive step.

(2) Each citation shall be referred to the claims to which it relates. Where appropriate, relevant parts of the documents cited shall be identified.

(3) The European search report shall distinguish between cited documents published before the date of priority claimed, between such date of priority and the date of filing, and on or after the date of filing.

(4) Any document which refers to an oral disclosure, a use or any other means of disclosure which took place before the date of filing of the European patent application shall be mentioned in the European search report, together with an indication of the date of publication, if any, of the document and the date of the non-written disclosure.

(5) The European search report shall be drawn up in the language of the proceedings.

(6) The European search report shall contain the classification of the subject-matter of the European patent application in accordance with the international classification.

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Part IV: Procedure up to Grant Rule 62 Extended European search report (1) The European search report shall be accompanied by an opinion on whether the application and the invention to which it relates seem to meet the requirements of this Convention, unless a communication under Rule 71, paragraph 1 or 3, can be issued.

Article 92 Previously Rule 44a Rule 71 (1) – Examination report inviting applicant to amend specification

Rule 71 (3) – Proposed text for grant and invitation to pay grant and publication fees and file claims (2) The opinion under paragraph 1 shall not be published together translations

with the search report.

Rule 62a Applications containing a plurality of independent claims

Rule 62a is applied to additional searches of Euro-PCT application (1) If the European Patent Office considers that the claims as filed do where the supplementary search is not comply with Rule 43, paragraph 2, it shall invite the applicant to waived – Rule 164(3)

indicate, within a period of two months, the claims complying with Rule 43, paragraph 2, on the basis of which the search is to be carried out. If the applicant fails to provide such an indication in due time, the search shall be carried out on the basis of the first claim in each category.

(2) The Examining Division shall invite the applicant to restrict the claims to the subject-matter searched unless it finds that the objection under paragraph 1 was not justified.

Rule 43 (2) – Application to contain only one independent claim per claim category unless a specific exception applies Two month period for response cannot be extended using further processing – Rule 135(2)

Previously Rule 45

Rule 63 Incomplete search (1) If the European Patent Office considers that the European patent application fails to such an extent to comply with this Convention that it is impossible to carry out a meaningful search regarding the state of the art on the basis of all or some of the subject-matter claimed, it shall invite the applicant to file, within a period of two months, a statement indicating the subject-matter to be searched.

(2) If the statement under paragraph 1 is not filed in due time, or if it is not sufficient to overcome the deficiency noted under paragraph 1, the European Patent Office shall either issue a reasoned declaration stating that the European patent application fails to such an extent to comply with this Convention that it is impossible to carry out a meaningful search regarding the state of the art on the basis of all or some of the subject-matter claimed or, as far as is practicable, draw up a partial search report. The reasoned declaration or the partial search report shall be considered, for the purposes of subsequent proceedings, as the European search report.

(3) When a partial search report has been drawn up, the Examining Division shall invite the applicant to restrict the claims to the subjectmatter searched unless it finds that the objection under paragraph 1 was not justified.

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A Guide to the EPC 2000

Previously Rule 46

Rule 64 European search report where the invention lacks unity

(1) If the European Patent Office considers that the European patent application does not comply with the requirement of unity of invention, it shall draw up a partial search report on those parts of the application which relate to the invention, or the group of inventions within the meaning of Article 82, first mentioned in the claims. It shall Article 82 – Unity of invention inform the applicant that, for the European search report to cover the other inventions, a further search fee must be paid, in respect of each Time limit cannot be extended using invention involved, within a period of two months. The European search report shall be drawn up for the parts of the application relating further processing – Rule 135 (2) to inventions in respect of which search fees have been paid.

(2) Any fee paid under paragraph 1 shall be refunded if, during the examination of the European patent application, the applicant requests a refund and the Examining Division finds that the communication under paragraph 1 was not justified.

Previously Article 92 (2)

Rule 65 Transmittal of the European search report Immediately after it has been drawn up, the European search report shall be transmitted to the applicant together with copies of any cited documents.

Other Relevant Rules Rule 43 Form and content of claims Rule 71 Examination procedure Rule 135 Further processing

See Article 84, page 75 See Article 94, page 99 See Article 121, page 148

Comment: Article 92 and Rules 61-65 EPC govern the form and content of European search reports.

The search report identifies the documents that the EPO will consider when assessing the application for novelty and inventive step (Rule 61 (1) EPC). For all applications filed or entering the regional phase after 1 July 2005, the search report is accompanied by an initial opinion on the allowability of the application (Rule 62 EPC).

If an application contains more than one independent claim per claim category (e.g. apparatus, method, etc.) and the invention does not concern either: a plurality of independent products or apparatus; different uses of a product or apparatus or alternative solutions to a particular problem, the EPO will set a two-month period requesting that the applicant indicate which independent claims are to be searched (Rule 62a (1) EPC). This deadline cannot be extended using further processing (Rule 135 (2) EPC). The EPO will then proceed only to search the claim(s) identified by the applicant or, if an applicant fails to respond the first claim in each claim category (Rule 62a (1) EPC). Unsearched claims have to be deleted from the application (Rule 62a (2) EPC).

If the EPO considers the nature of the application such that it is impossible to carry out

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a meaningful search, the EPO will set a two-month period for the applicant to identify the subject-matter that should be searched (Rule 63 (1) EPC). This time period cannot be extended using further processing (Rule 135 (2) EPC). If no response is filed within the time period or the statement is insufficient to enable the EPO to conduct a search, the EPO will either issue a declaration that conducting a search is not possible in lieu of a search report or will draw up only a partial search (Rule 63 (2) EPC).

Where an application relates to more than one invention, a partial search report relating only to the first claimed invention is issued, together with an official letter setting a deadline for further search fees to be paid (Rule 64 (1) EPC). Additional searches are then conducted only to the extent that further search fees are paid by the deadline. It is not possible to extend the term using further processing (Rule 135 (2) EPC).

Rule 137 (5) EPC provides that amended claims may not relate to unsearched subjectmatter that does not combine with the originally claimed invention or group of inventions to form a single general inventive concept. If additional search fees are not paid when requested, the only way to obtain patent protection for the unsearched subject-matter is by filing a divisional application (see G2/92).

When the search has been completed, a search report is sent to the applicant together with copies of any cited documents (Rule 65 EPC).

The procedures for drawing up search reports are discussed in the Guidelines for Examination in the European Patent Office, Part B. Technical preparations for publication – Rule 67 Form of published European patent (1) The European Patent Office shall publish the European patent applications – Rule 68 application as soon as possible Information provided to applicant (a) after the expiry of a period of eighteen months from the date of about publication – Rule 69 filing or, if priority has been claimed, from the date of priority, or Request for early publication brings (b) at the request of the applicant, before the expiry of that period. forward deadline for providing (2) The European patent application shall be published at the same information about deposit of biological material – Rule 31 (2)(b) time as the specification of the European patent when the decision to No addition or correction of priority grant the patent becomes effective before the expiry of the period details permitted after request for referred to in paragraph 1 (a). early publication – Rule 52 (4) Any required designation of inventor must be filed before publication – Related Rules Rule 60 (1)

Article 93 Publication of the European patent application

Rule 67 Technical preparations for publication (1) The President of the European Patent Office shall determine when the technical preparations for publication of the European patent application are deemed to have been completed.

(2) The application shall not be published if it has been finally refused or withdrawn or is deemed to be withdrawn before the termination of the technical preparations for publication.

95

Previously Rule 48

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Articles 93 Previously Article 93 (2) and Rule 49

A Guide to the EPC 2000 Rule 68 Form of the publication of European patent applications and European search reports (1) The publication of the European patent application shall contain the description, the claims and any drawings as filed, and the abstract, or, if these documents making up the application were not filed in an official language of the EPO, a translation in the language of the proceedings, and, in an annex, the European search report, where it is available before the termination of the technical preparations for publication. If the search report or the abstract is not published at the same time as the application, it shall be published separately.

(2) The President of the European Patent Office shall determine the form of the publication of the application and the data to be included.

The same shall apply where the European search report and the abstract are published separately.

(3) The designated Contracting States shall be indicated in the published application.

(4) If the claims were not filed on the date of filing of the application, this shall be indicated when the application is published. If, before the termination of the technical preparations for publication of the Rule 137 (2) – Voluntary application, the claims have been amended under Rule 137, amendment following receipt of paragraph 2, the new or amended claims shall be included in the search report publication in addition to the claims as filed.

Previously Rule 50

Rule 69 Information about publication

(1) The European Patent Office shall inform the applicant of the date Rule 70 (1) – Examination must be on which the European Patent Bulletin mentions the publication of requested within 6 months of the European search report and shall draw his attention to Rule 70, publication of search report paragraph 1, Article 94, paragraph 2, and Rule 70a, paragraph 1.

Article 94 (2) – Failure to request examination in due time results in application being deemed withdrawn

(2) If a date of publication is specified in the communication under paragraph 1 which is later than the actual date of publication, that later date shall be the decisive date as regards the periods referred to Rule 70a (1) – Deadline for in Rule 70, paragraph 1, and Rule 70a, paragraph 1, unless the error responding to matters raised in the is obvious.

EESR

Other Relevant Rules Rule 31 Deposit of biological material

See Article 83, page 70

Rule 52 Declaration of priority

See Article 88, page 84

Rule 60 Subsequent designation of the inventor

See Article 81, page 67

Rule 70 Request for examination

See Article 94, page 98

Rule 70a Response to the extended European search report

See Article 94; page 99

Rule 137 Amendment of the European patent application

See Article 123, page 153

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Comment: The publication of European patent applications is governed by Article 93 and Rules 67-69 EPC. European patent applications are published after the expiry of 18 months from the date of filing or, if priority is claimed, from the priority date (Article 93 (1)(a) EPC). A European patent application may be published earlier at the request of the applicant (Article 93 (1)(b) EPC). Any required designation of inventor must be filed before the application is published (Rule 60 (1) EPC). Publication is required for an application to have effect as prior art under Article 54 (3) EPC. If early publication is requested, the deadline for providing information about any deposited biological material is brought forward (Rule 31 (2)(b) EPC).

Under Rule 67 EPC, the President of the EPO determines when the technical preparations for publication are complete. This date is important as it constitutes the last day on which an applicant can withdraw an application and be sure that it will not be published. In accordance with a decision of the President dated 12 July 2007, the technical preparations for publication are deemed complete at the end of the day that comes five weeks before expiry of the 18th month following the date of filing or, if priority is claimed, following the priority date.

The form and content of the application as published is determined by Rule 68 EPC. If available, the European search report is published when the application is published.

Publication of the search report starts a six-month term running during which the applicant must request substantive examination (Rule 70 (1) EPC). The EPO must inform the applicant of the deadline and that failure to request examination by that date will cause the application to be deemed withdrawn (Rule 69 EPC).

Publication procedures are discussed in the Guidelines for Examination in the European Patent Office, Part A, Chapter VI, section 1.

Article 94 Examination of the European patent application

Translation of request for examination must be filed within one month or within period for filing request for examination, if later – Rule 6 (2) Examination fees reduced by 30% for natural persons, (1) The European Patent Office shall, in accordance with the SME or Universities who are nationals or residents of Implementing Regulations, examine on request whether the or persons with a principal place of business in European patent application and the invention to which it Contracting States with official languages other than relates meet the requirements of this Convention. The request English, French or German who file in such a shall not be deemed to be filed until the examination fee has language – Article 14 (4), Rule 6 (3), RRF Article 14 (1))

been paid.

Duties of Examining Division – Rule 10

(2) If no request for examination has been made in due Further processing available – Article 121 time, the application shall be deemed to be withdrawn.

Request for examination – Rule 70

(3) If the examination reveals that the application or the Examination procedure – Rule 71 invention to which it relates does not meet the requirements Examination fee refunded in full if application withdrawn of this Convention, the Examining Division shall invite the prior to transfer to Examination Division – RRF Article 11 applicant, as often as necessary, to file his observations and, 75% of examination fee refunded if application withdrawn subject to Article 123, paragraph 1, to amend the application. before substantive examination begins – RRF Article 11 (4) If the applicant fails to reply in due time to any Article 123 (1) – No amendment of application permitted prior to receipt of search report communication from the Examining Division, the application shall be deemed to be withdrawn.

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Article 94

A Guide to the EPC 2000 Related Rules Rule 1 Written proceedings In written proceedings before the European Patent Office, the requirement to use the written form shall be satisfied if the content of the documents can be reproduced in a legible form on paper.

Rule 2 Filing of and formal requirements for documents

Time periods automatically extended if documents filed by technical means cannot be received – Rule 134 (1)

(1) In proceedings before the European Patent Office, documents may be filed by delivery by hand, by post or by technical means of communication. The President of the European Patent Office shall lay down the details and conditions and, where appropriate, any special formal or technical requirements for the filing of documents. In particular, he may specify that confirmation must be supplied. If such confirmation is not supplied in due time, the European patent application shall be refused; documents filed subsequently shall be deemed not to have been received.

(2) Where the Convention provides that a document must be signed, the authenticity of the document may be confirmed by handwritten signature or other appropriate means the use of which has been permitted by the President of the European Patent Office. A document authenticated by such other means shall be deemed to meet the legal requirements of signature in the same way as a document bearing a handwritten signature which has been filed in paper form.

Previously Rule 36 Rule 42 – Content of description Rule 43 – Form and content of claims Rule 46 – Form of drawings Rule 47 – Form and content of abstract

Rule 50 Documents filed subsequently (1) Rules 42, 43 and 46 to 49 shall apply to documents replacing documents making up the European patent application. Rule 49, paragraphs 2 to 12, shall also apply to the translation of the claims referred to in Rule 71.

(2) All documents other than those making up the application shall generally be typewritten or printed. There shall be a margin of about Rule 49 – General provisions 2.5 cm on the left hand side of each page. relating to form of application (3) Documents filed after filing the application shall be signed, with documents the exception of annexed documents. If a document has not been Rule 71 – Translations into other signed, the European Patent Office shall invite the party concerned to EPO languages required on grant do so within a time limit to be specified. If signed in due time, the document shall retain its original date of receipt; otherwise it shall be deemed not to have been filed.

Rule 48 – Prohibited matter

Rule 70 Request for examination

Previously Articles 94 (2), 94 (3) and 96 (1) and Rule 51 (1)

(1) The applicant may request examination of the European patent application up to six months after the date on which the European

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Patent Bulletin mentions the publication of the European search report. The request may not be withdrawn.

(2) If the request for examination has been filed before the European search report has been transmitted to the applicant, the European Patent Office shall invite the applicant to indicate, within a period to be specified, whether he wishes to proceed further with the application, and shall give him the opportunity to comment on the search report and to amend, where appropriate, the description, claims and drawings.

Time periods set by EPO must be at least two months and may be extended on request – Rule 132 (2) Notification of loss of rights without decision – Rule 112 Further processing available – Article 121

(3) If the applicant fails to reply in due time to the invitation under paragraph 2, the application shall be deemed to be withdrawn.

Rule 70a Response to the extended European search report (1) In the opinion accompanying the European search report the European Patent Office shall give the applicant the opportunity to comment on the extended European search report and, where appropriate, invite him to correct any deficiencies noted in the opinion accompanying the European search report and to amend the description, claims and drawings within the period referred to in Rule 70 (1) – Examination to be requested within six months of the Rule 70, paragraph 1. publication date of the search report (2) In the case referred to in Rule 70, paragraph 2, or if a supplementary European search report is drawn up on a Euro-PCTapplication, the European Patent Office shall give the applicant the opportunity to comment on the extended European search report and, where appropriate, invite him to correct any deficiencies noted in the opinion accompanying the European search report and to amend the description, claims and drawings within the period specified for indicating whether he wishes to proceed further with the application.

Rule 70 (2) – If examination is requested prior to receipt of the search report, EPO set a deadline for applicant to confirm their intention to proceed

(3) If the applicant neither complies with nor comments on an invitation in accordance with paragraph 1 or 2, the application shall be deemed to be withdrawn.

Rule 71 Examination procedure (1) In any communication under Article 94, paragraph 3, the Previously Rules 51 (2) – (11) Examining Division shall, where appropriate, invite the applicant to correct any deficiencies noted and to amend the description, claims Article 94 (3) – If application does not fulfil requirements for grant, and drawings within a period to be specified. applicant invited to file observations

(2) Any communication under Article 94, paragraph 3, shall contain and/or amendments a reasoned statement covering, where appropriate, all the grounds Time periods set by EPO must be at least two months and may be against the grant of the European patent. extended on request – Rule 132 (2)

(3) Before the Examining Division decides to grant the European Further processing available – patent, it shall inform the applicant of the text in which it intends to Article 121 grant it and of the related bibliographic data. In this communication

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Translations must comply with the Examining Division shall invite the applicant to pay the fee for grant general formalities as to form – and publishing and to file a translation of the claims in the two official Rule 50 (1) and Rules 49 (2) – languages of the European Patent Office other than the language of the (12)

proceedings within four months.

Further processing available – (4) If the European patent application in the text intended for grant Article 121

comprises more than fifteen claims, the Examining Division shall invite the applicant to pay claims fees in respect of the sixteenth and each Rule 45 – Excess claims fees subsequent claim within the period under paragraph 3 unless the said paid when application filed Rule 162 – Excess claims fees fees have already been paid under Rule 45 or Rule 162. paid when ex-PCT application enters regional phase

(5) If the applicant, within the period laid down in paragraph 3, pays the fees under paragraph 3 and, where applicable, paragraph 4 and files the translations under paragraph 3, he shall be deemed to have approved the text communicated to him under paragraph 3 and verified the bibliographic data.

(6) If the applicant, within the period under paragraph 3, requests reasoned amendments or corrections to the communicated text or keeps to the latest text submitted by him, the Examining Division shall issue a new communication under paragraph 3 if it gives its consent; otherwise it shall resume the examination proceedings.

Notification of loss of rights without decision – Rule 112

(7) If the fee for grant and publishing or the claims fees are not paid in due time, or if the translations are not filed in due time, the European Further processing available – patent application shall be deemed to be withdrawn.

Article 121

Rule 71a Conclusion of the grant procedure (1) The decision to grant the European patent shall be issued if all fees have been paid, a translation of the claims in the two official languages of the European Patent Office other than the language of the proceedings has been filed and there is agreement as to the text to be granted. It shall state which text of the European patent application forms the basis for the decision.

(2) Until the decision to grant the European patent, the Examining Division may resume the examination proceedings at any time.

Rule 71 (3) – Notification of proposed text for grant

Rule 71 (3) – Notification of proposed text for grant

Rule 71 (3) – Notification of proposed text for grant

(3) If the designation fee becomes due after the communication under Rule 71, paragraph 3, the mention of the grant of the European patent shall not be published until the designation fee has been paid. The applicant shall be informed accordingly.

(4) If a renewal fee becomes due after the communication under Rule 71, paragraph 3, and before the next possible date for publication of the mention of the grant of the European patent, the mention shall not be published until the renewal fee has been paid. The applicant shall be informed accordingly.

(5) If, in response to an invitation under Rule 71, paragraph 3, the applicant has already paid the fee for grant and publishing or the claims fees, the paid amount shall be credited if a further such invitation is issued.

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(6) If the European patent application is refused, withdrawn prior to notification of the decision on the grant of a European patent or, at that time, deemed to be withdrawn, the fee for grant and publishing shall be refunded.

Other Relevant Rules Rule 6 Filing of translations and reduction of fees Rule 10 Responsibility of the Receiving Section and the Examining Division Rule 42 Content of the description Rule 43 Form and content of claims Rule 45 Claims incurring fees Rule 46 Form of the drawings Rule 47 Form and content of the abstract Rule 48 Prohibited matter Rule 49 General provisions governing the presentation of the application documents Rule 112 Noting of loss of rights Rule 132 Periods specified by the EPO Rule 134 Extension of periods Rule 162 Claims incurring fees

See Article 14, page 8 See Article 16, page 13 See Article 78, page 57 See Article 84, page 75 See Article 84, page 76 See Article 78, page 58 See Article 85, page 78 See Article 78, page 59 See Article 78, page 59 See Article 113, page 135 See Article 120, page 146 See Article 120, page 146 See Article 153, page 183

Comment: Article 94 EPC and Rules 70, 70a, 71 and 71a EPC set out the procedure for examination of European patent applications.

The publication of the European search report starts a six-month term running for filing a request for examination and paying the examination fee (Rule 70 and Article 94 (1) EPC). At present the examination fee is €1,805 for applications filed prior to 1 July 2005 and for international applications filed prior to that date for which no supplementary search report is drawn up. For all other applications, the examination fee is €1,620 (Article 2 (6) of the Rules Relating to Fees). If a timely request and fee are not filed, the application is deemed withdrawn (Article 94 (2) EPC). Further processing is available and an application will be reinstated if an examination request is filed within two months of notification of loss of rights and the examination fee is paid together with a 50% fine (Article 121 EPC and Article 2 (12) of the Rules Relating to Fees).

If an applicant is anatural person, SME or a uinversity who is a national of or resident in an EPC Contracting State or has a principal place of business in one which has an official language other than English, French or German and the request is filed in that language, the examination fee is reduced by 20% (Rule 6 (3) EPC and Article 14 (1) of the Rules Relating to Fees; see commentary on Article 14 EPC). If the request is not filed in English, French or German, a translation into one of those languages must follow within one month (Rule 6 (2) EPC).

If a request for examination is filed before the search report is transmitted to the

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applicant, the EPO issues a letter asking if the applicant still wishes to proceed (Rule 70 (2) EPC). This gives the applicant an opportunity to abandon the application and obtain a refund of the examination fee if it no longer wishes to continue in light of the search report. Failure to respond within the time limit set by the EPO results in the application being deemed withdrawn (Rule 70 (3) EPC). Further processing is available and an application will be reinstated if an applicant confirms that it still wishes to proceed and pays the fee for further processing within two months of notification of loss of rights (Article 121 and Rule 135 EPC).

Once an applicant has requested examination or confirmed its intent to proceed, the Examining Division becomes responsible for the substantive examination of the application (Rule 10 EPC). The procedure for substantive examination is set out in Rule 71 EPC. During substantive examination, if the Examining Division considers that an application is not in order for grant, it issues an official letter identifying the objections and inviting the applicant to make appropriate amendments (Rules 71 (1) and (2) EPC). Normally, the Examining Division will set a four-month term for filing a response, which can be extended on request to six months (Rule 132 (2) EPC). If no response is filed by the deadline the application is deemed withdrawn (Article 94 (4) EPC). Further processing is available and an application will be reinstated if the response is filed and the fee for further processing is paid within two months of notification of loss of rights (Article 121 and Rule 135 EPC).

When the Examining Division is satisfied that an application is in order, it sends a copy of the proposed text for grant to the applicant together with a request for payment of the publication and grant fees and for translations of the claims into the official languages of the EPO other than the language of proceedings (Rule 71 (3) EPC). These translations and fees are due within four months of the EPO’s communication. The publication and grant fees are currently €915 plus, in the case of applications filed before 1 April 2009, an additional €15 for each page in excess of 35 (Article 2 (7) of the Rules Relating to Fees). Failure to file the translations or pay the fees results in the application being deemed withdrawn (Rule 71 (7) EPC). Further processing is available (Article 121 EPC) and the fee is fixed at €250 (Article 2 (12) of the Rules Relating to Fees).

If the number of claims at grant is greater than 15 and exceeds the number of claims on filing, additional claims fees must be paid with the publication and grant fees (Rule 71 (4) EPC). The relevant fee is €235 for each claim in excess of the number originally on file up to 50 and €580 for each claim in excess of 50 (Article 2 (15) of the Rules Relating to Fees).

If an applicant provides a reasoned request for amendments or corrections of the proposed text for grant within the period for approving the text, the Examining Division will either re-issue a proposed text for grant incorporating the proposed

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changed or if the proposed amendments or corrections are not acceptable will reopen examination proceedings (Rule 71 (6) EPC).

A decision to grant will be issued when all fees have been paid and the claims translations have being filed at the EPO (Rule 71a (1) EPC) If a proposed text for grant is issued before designation fees have been paid, grant will be delayed until payment is made (Rule 71a (3) EPC). Similarly, if a renewal fee falls due after the Examining Division issues a proposed text for grant, the EPO will delay publication of grant until the renewal fee is paid (Rule 71a (4) EPC).

Until grant the Examining Division has the discretion to resume the examination procedure at any time (Rule 71a (2) EPC). Any grant and publication fees paid in response to a communication providing a proposed text for grant will be credited in the event that the examination procedure is resumed and reapplied when a revised proposed text for grant is issued (Rule 71a (5) EPC). If for any reason an application is refused or withdrawn prior to grant any grant and publication fees which have already been paid are refunded (Rule 71a (5) EPC).

In G7/93, the Enlarged Board of Appeal held that the Examining Division has a discretion to allow amendments to an application at any time up to grant, even after an applicant has approved a proposed text for grant.

Case law on examination procedure in general may be found in the Case Law of the Boards of Appeal of the European Patent Office, section IV – B, pages 748-805.

The procedures for substantive examination are discussed in the Guidelines for Examination in the European Patent Office, Part C. Article 95 Extension of the period within which requests for examination may be filed (deleted) Article 96 Examination of the European patent application (deleted) Article 97 Grant or refusal (1) If the Examining Division is of the opinion that the European patent application and the invention to which it relates meet the requirements of this Convention, it shall decide to grant a European patent, provided that the conditions laid down in the Implementing Regulations are fulfilled.

Content of Article 96 (1) moved to Rule 70 Content of Articles 96 (2) and (3) moved to Articles 94 (3) and (4) Examination procedure – Rule 71 Grant of European patent to different applicants in different Contracting States – Rule 72 Different

specifications

in

(2) If the Examining Division is of the opinion that the European patent different Contracting States – application or the invention to which it relates does not meet the Rule 138 requirements of this Convention, it shall refuse the application unless this Convention provides for a different legal consequence.

(3) The decision to grant a European patent shall take effect on the date on which the mention of the grant is published in the European Patent Bulletin.

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Previously Rule 52

Rule 72 Grant of the European patent to different applicants Where different persons are recorded in the European Patent Register as applicants in respect of different Contracting States, the European Patent Office shall grant the European patent for each Contracting State accordingly.

Other Relevant Rules Rule 71 Examination procedure Rule 138 Different claims, description and drawings for different States

See Article 94, page 99 See Article 123, page 153

Article 98 Publication of the specification of the European patent The European Patent Office shall publish the specification of the European patent as soon as possible after the mention of the grant of the European Certificate for European patent patent has been published in the European Patent Bulletin.

Content and form of European patent – Rule 73 – Rule 74

Related Rules Previously Rule 53

Rule 73 Content and form of the specification

Rules 73 (2) and (3) also apply to revised patent following opposition – Rule 87

(1) The specification of the European patent shall include the description, the claims and any drawings. It shall also indicate the period for opposing the European patent.

Rules 73 (2) and (3) also apply to revised patent following limitation – Rule 96

(2) The President of the European Patent Office shall determine the form of the publication of the specification and the data to be included.

Previously Rule 54

(3) The designated Contracting States shall be indicated in the specification.

Rule 74 Certificate for a European patent

Rule 74 also applies to amended patent following opposition – Rule 87

As soon as the specification of the European patent has been published, the European Patent Office shall issue to the proprietor of the patent a Rule 74 also applies to certificate for a European patent. The President of the European Patent amended patent following Office shall prescribe the content, form and means of communication of the certificate and determine the circumstances in which an limitation – Rule 96 administrative fee is payable.

Other Relevant Rules Rule 87 Content and form of the new See Article 103, page 109 specification of the European patent Rule 96 Content and form of the amended See Article 105c, page 117 European patent specification

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PART V OPPOSITION AND LIMITATION PROCEDURE Article 99 Opposition

Admissible languages proceedings – Rule 3)

(1) Within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin, any person may give notice to the European Patent Office of opposition to that patent, in accordance with the Implementing Regulations. Notice of opposition shall not be deemed to have been filed until the opposition fee has been paid.

in

written

Opposition possible even if patent has lapsed or been surrendered in all Contracting States – Rule 75 Form and content of notice of opposition – Rule 76 Rejection of opposition as inadmissible – Rule 77

(2) The opposition shall apply to the European patent in all the Party challenging entitlement can apply to EPO to stay opposition pending court Contracting States in which that patent has effect. decision – Rule 78 (1)

(3) Opponents shall be parties to the opposition proceedings as May have different claims in different well as the proprietor of the patent.

(4) Where a person provides evidence that in a Contracting State, following a final decision, he has been entered in the patent register of such State instead of the previous proprietor, such person shall, at his request, replace the previous proprietor in respect of such State. Notwithstanding Article 118, the previous proprietor and the person making the request shall not be regarded as joint proprietors unless both so request.

Contracting States following court decision on entitlement – Rule 78 (2) Continuation of opposition by EPO of own motion – Rule 84

Recordal of assignments during opposition – Rule 85 Cannot file request to limit or revoke while opposition pending – Article 105a (2) Article 118 – Different applicants or proprietors in different Contracting States treated as joint applicants or proprietors in proceedings before EPO

Previously Article 99 (3)

Related Rules Rule 75 Surrender or lapse of the patent

Previously Rule 55

An opposition may be filed even if the European patent has been Rule 76 also applies to notice of surrendered in all the designated Contracting States or has lapsed intervention by assumed infringer – Rule 89 (2) in all those States.

Rule 76 Form and content of the opposition (1) Notice of opposition shall be filed in a written reasoned statement.

(2) The notice of opposition shall contain: (a) particulars of the opponent as provided in Rule 41, paragraph 2 (c);

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Opposition Division may also invoke additional grounds of own motion – Rule 81 (1)

(b) the number of the European patent against which opposition is filed, the name of the proprietor of the patent and the title of the invention; (c) a statement of the extent to which the European patent is opposed and of the grounds on which the opposition is based, as well as an indication of the facts and evidence presented in support of these grounds; (d) if the opponent has appointed a representative, particulars as provided in Rule 41, paragraph 2 (d).

Rule 41 (2)(d) – Name and address of representative Part III comprises Rules 35 – 54 relating to form and content of application

(3) Part III of the Implementing Regulations shall apply mutatis mutandis to the notice of opposition.

Other Relevant Rules Rule 3 Language in written proceedings Rule 41 Request for grant Rule 77 Rejection of the opposition as inadmissible Rule 78 Procedure where the proprietor of the patent is not entitled Rule 81 Examination of opposition Rule 84 Continuation of the opposition proceedings by the European Patent Office of its own motion Rule 85 Transfer of the European patent Rule 89 Intervention of the assumed infringer

See Article 14, page 6 See Article 78, page 56 See Article 101, page 109 See Article 101, page 109 See Article 101, page 110 See Article 101, page 110

See Article 72, page 48 See Article 105, page 115

Comment: Article 99 EPC sets out the conditions and formalities for filing an opposition.

Under Article 99 (1) EPC, “any person” may give notice to the EPO of an opposition to a European patent. This notice must be given within nine months of publication of grant and is only deemed filed when the opposition fee has been paid. Article 2 (10) of the Rules Relating to Fees sets this fee at €775. If an opposition is filed in a language other than English, French or German, a translation into one of those languages must be filed within a month or before the end of the nine-month period for filing an opposition, whichever is later (Article 14 (4) and Rule 6 (2) EPC).

A notice of opposition must include the name, address, nationality and state of residence or principal place of business of the opponent, the number of the European patent being opposed, the extent to which the patent is being opposed, the grounds on which the opposition is based, an indication of the facts and evidence relied upon and the name and address of any appointed representative (Rule 76 (2) EPC). Failure to file the opposition in time, provide grounds or identify

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Articles 99-100

the patent being opposed renders an opposition inadmissible unless the omissions are corrected before the end of the nine-month opposition period (Rule 77 EPC).

The prevailing view of the Enlarged Board of Appeal is that “any person” does not include the proprietor of an opposed patent. Initially, in G1/84, the Enlarged Board had found that “self opposition” was permissible, as the proprietor of a patent could be regarded as “a person”. This position was later overruled in G9/93, however, in which “any person” was construed as meaning anyone except the patent proprietor. This was reinforced by the decisions in G3/97 and G4/97, in which the Enlarged Board held that it was permissible to act as an opponent on behalf of a third party, provided the third party in question was not the patent proprietor. With the introduction of limitation proceedings under Articles 105a-c EPC, this issue is now largely irrelevant; where a proprietor wishes to amend a patent after grant, it can now achieve that through the limitation procedure.

In G3/99, the Enlarged Board held that multiple parties could file a single joint opposition. Only a single opposition fee need be paid, but all actions must be undertaken by a common representative. If no common representative is expressly appointed, the first-named opponent is deemed to take this role.

Opponent status is not a freely transferable business asset (see G2/04).

However, it can be transferred together with other business assets when a complete business is sold (see G4/88).

Article 100 Grounds for opposition Opposition may only be filed on the grounds that: (a) the subject-matter of the European patent is not patentable under Articles 52 to 57; (b) the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art; (c) the subject-matter of the European patent extends beyond the content of the application as filed, or, if the patent was granted on a divisional application or on a new application filed under Article 61, beyond the content of the earlier application as filed.

Article 52 – Patentable subject-matter Article 53 – Exceptions to patentability Article 54 – Novelty Article 55 – Non-prejudicial disclosures Article 56 – Inventive step Article 57 – Industrial applicability

Article 61 – Replacement application filed when original applicant found not to be entitled

Comment: Article 100 EPC sets out the grounds on which an opposition can be based. These

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are that the granted patent does not meet the requirements for patentability under Articles 52 – 57 EPC; that it does not disclose the claimed invention sufficiently clearly and completely for it to be carried out by a person skilled in the art; or that the subject-matter of the patent has been extended beyond the scope of the application as originally filed or, in the case of divisional or replacement applications, beyond the scope of the earlier applications on which they are based.

A European patent can only be opposed on the grounds set out in Article 100 EPC. Objections based on lack of clarity and support can, however, be raised against amendments filed during the opposition process (see commentary on Article 101 EPC below). In contrast, lack of unity is not relevant at any stage during opposition proceedings, even if a patent is amended (see G1/91).

An opposition is limited to the grounds raised when a notice of opposition is filed. Further grounds can only be introduced later with the consent of the patent proprietor (see G1/95 and G7/95). The relationship between novelty and inventive step is such, however, that an opposition based on lack of inventive step will necessarily succeed if a patent is found to lack novelty (see G1/95 and G7/95).

Where only some claims are opposed, the Opposition Division is limited to considering the validity of the opposed claims, as is any subsequent Board of Appeal (see G9/91 and G10/91).

Article 101 Examination of the opposition – Revocation or maintenance of the European patent Article 100 – Grounds for opposition

(1) If the opposition is admissible, the Opposition Division shall examine, in accordance with the Implementing Regulations, whether at least one ground for opposition under Article 100 prejudices the Observations and amendment following maintenance of the European patent. During this examination, the notice of opposition – Rule 79 Opposition Division shall invite the parties, as often as necessary, to file Amendments limited to those observations on communications from another party or issued by itself.

Rejection of opposition as inadmissible – Rule 77

occasioned by grounds of opposition – Rule 80

(2) If the Opposition Division is of the opinion that at least one ground Observations communicated to all for opposition prejudices the maintenance of the European patent, it shall revoke the patent. Otherwise, it shall reject the opposition. parties – Rule 81 (2) Proprietor given opportunity to amend patent – Rule 81 (3) EPO may disregard documents referred to by parties if documents not provided on request – Rule 83 Continuation of opposition of Opposition Division’s own motion – Rule 84 Recordal of assignments during opposition – Rule 85

(3) If the Opposition Division is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during the opposition proceedings, the patent and the invention to which it relates (a) meet the requirements of this Convention, it shall decide to maintain the patent as amended, provided that the conditions laid down in the Implementing Regulations are fulfilled; (b) do not meet the requirements of this Convention, it shall revoke the patent.

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Related Rules Rule 77 Rejection of the opposition as inadmissible (1)If the Opposition Division notes that the notice of opposition does not comply with Article 99, paragraph 1, or Rule 76, paragraph 2(c), or does not sufficiently identify the patent against which opposition has been filed, it shall reject the opposition as inadmissible, unless these deficiencies have been remedied before expiry of the opposition period.

Previously Rule 56 Rule 77 also applies to notice of intervention by assumed infringer – Rule 89 (2) Article 99 (1) – Opposition must be filed within nine months of grant Rule 76 (2)(c) – Statement of grounds and extent of opposition and indication of supporting facts and evidence

(2) If the Opposition Division notes that the notice of opposition does not comply with provisions other than those referred to in paragraph 1, it shall communicate this to the opponent and shall invite him to remedy the deficiencies noted within a period to be specified. If the Time periods set by EPO must be at deficiencies are not remedied in due time, the Opposition Division least two months and may be extended on request – Rule 132 (2) shall reject the opposition as inadmissible.

(3) The decision to reject an opposition as inadmissible shall be communicated to the proprietor of the patent, together with a copy of the notice of opposition.

Rule 78 Procedure where the proprietor of the patent is not entitled (1) If a third party provides evidence, during opposition proceedings or during the opposition period, that he has instituted proceedings against the proprietor of the European patent, seeking a decision within the meaning of Article 61, paragraph 1, opposition proceedings shall be stayed unless the third party communicates to the European Patent Office in writing his consent to the continuation of such proceedings.

Such consent shall be irrevocable. However, proceedings shall not be stayed until the Opposition Division has deemed the opposition admissible. Rule 14, paragraphs 2 to 4, shall apply mutatis mutandis.

(2) Where a third party has, in accordance with Article 99, paragraph 4, replaced the previous proprietor for one or some of the designated Contracting States, the patent as maintained in opposition proceedings may, for these States, contain claims, a description and drawings different from those for the other designated States.

Rule 79 Preparation of the examination of the opposition

Previously Rules 13 (4) and 16 (3)

Article 61 (1) – Entitlement proceedings Rule 14 (2) – (4) – Resumption of proceedings following stay pending resolution of entitlement proceedings before national court Article 99 (4) – Different proprietors in different Contracting States following court decision on entitlement

Previously Rule 57

(1) The Opposition Division shall communicate the notice of Time periods set by EPO must be at opposition to the proprietor of the patent and shall give him the least two months and may be opportunity to file his observations and to amend, where extended on request – Rule 132 (2) appropriate, the description, claims and drawings within a period to be specified.

(2) If several notices of opposition have been filed, the Opposition Division shall communicate them to the other opponents at the same time as the communication under paragraph 1.

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Time periods set by EPO must be at least two months and may be extended on request – Rule 132 (2)

(3) The Opposition Division shall communicate any observations and amendments filed by the proprietor of the patent to the other parties, and shall invite them, if it considers this expedient, to reply within a period to be specified.

Article 105 – Intervention of assumed infringer in opposition proceedings

(4) In the case of an intervention under Article 105, the Opposition Division may dispense with the application of paragraphs 1 to 3.

Previously Rule 57a

Rule 80 Amendment of the European patent

Rule 138 – Different claims in different Contracting States due to existence of prior national rights

Without prejudice to Rule 138, the description, claims and drawings may be amended, provided that the amendments are occasioned by a ground for opposition under Article 100, even if that ground has Article 100 – Grounds for opposition not been invoked by the opponent.

Previously Rules 58 (1) – (3)

Rule 76 (2)(c) – Grounds for opposition filed with notice of opposition

Rule 81 Examination of opposition (1) The Opposition Division shall examine those grounds for opposition which are invoked in the opponent’s statement under Rule 76, paragraph 2 (c). Grounds for opposition not invoked by the opponent may be examined by the Opposition Division of its own motion if they would prejudice the maintenance of the European patent.

(2) Communications under Article 101, paragraph 1, second sentence, and all replies thereto shall be sent to all parties. If the opposition Time periods set by EPO must be at division considers this expedient, it shall invite the parties to reply least two months and may be within a period to be specified.

Article 101 (1) – Invitations to file observations

extended on request – Rule 132 (2)

(3) In any communication under Article 101, paragraph 1, second sentence, the proprietor of the European patent shall, where necessary, be given the opportunity to amend, where appropriate, the description, claims and drawings. Where necessary, the communication shall contain a reasoned statement covering the grounds against the maintenance of the European patent.

Rule 83 Request for documents

Previously Rule 59

Documents referred to by a party to opposition proceedings shall be filed together with the notice of opposition or the written submissions. If such documents are neither enclosed nor filed in due time upon invitation by the European Patent Office, it may decide not to take into account any arguments based on them.

Previously Rule 60

Rule 84 Continuation of the opposition proceedings by the European Patent Office of its own motion (1) If the European patent has been surrendered in all the designated Contracting States or has lapsed in all those States, the opposition proceedings may be continued at the request of the opponent filed within two months of a communication from the European Patent Office informing him of the surrender or lapse.

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(2) In the event of the death or legal incapacity of an opponent, the opposition proceedings may be continued by the European Patent Office of its own motion, even without the participation of the heirs or legal representatives. The same shall apply where the opposition is withdrawn.

Rule 86 Documents in opposition proceedings

Previously Rule 61a

Part III of the Implementing Regulations shall apply mutatis Part III comprises Rules 35 – 54 relating to form and content of mutandis to documents filed in opposition proceedings. application

Other Relevant Rules Rule 14 Rule 35 Rule 42 Rule 43 Rule 46 Rule 48 Rule 49

Stay of proceedings General provisions Content of the description Form and content of claims Form of the drawings Prohibited matter General provisions governing the presentation of the application documents Rule 50 Documents filed subsequently Rule 76 Form and content of the opposition Rule 85 Transfer of the European patent Rule 89 Intervention of the assumed infringer Rule 132 Periods specified by the European Patent Office Rule 138 Different claims, description and drawings for different States

See Article 61, page 38 See Article 75, page 50 See Article 78, page 57 See Article 84, page 75 See Article 78, page 58 See Article 78, page 59 See Article 78, page 59

See Article 94, page 98 See Article 99, page 105 See Article 72, page 48 See Article 105, page 115 See Article 120, page 146 See Article 123, page 153

Comment: When a notice of opposition is received, the Opposition Division first checks that it was filed within the nine-month opposition period, includes a statement of grounds and identifies the patent being opposed, and that the opposition fee has been paid. If the notice fails to comply with any of these requirements, the opposition is rejected (Rule 77 (1) EPC). In G1/02, the Enlarged Board of Appeal held that a decision to reject an opposition on the basis that the opposition fee was not paid in time may be taken by a formalities officer.

The opposition is also checked for compliance with the other formalities in Rule 76 and if there are any omissions a deadline is set for remedying them (Rule 77 (2) EPC). Further processing is not available because it is confined to use in respect of time limits in pre-grant proceedings (see commentary on Article 121 EPC).

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If the opposition is admissible, the Opposition Division examines whether any of the grounds raised prejudices maintenance of the patent (Article 101 (1) EPC). During the opposition, the proprietor is given the opportunity to amend the opposed patent (Rule 79 (1) EPC). Amendments are limited to those occasioned by grounds of opposition set out in Article 100 EPC (Rule 80 EPC). They must be clear, concise and supported by the content of the description (Articles 83 and 84 EPC). They must also fulfil the usual requirements as to the form and content of replacement pages (Rule 86 EPC).

An opponent may object to amendments on the basis that they add matter (Article 123 (2) EPC) or extend the scope of protection beyond that originally granted (Article 123 (3) EPC). In G1/91, the Enlarged Board held, however, that lack of unity is not a basis for objecting to claim amendments made during opposition proceedings.

A European patent may be transferred during opposition proceedings (Rule 85 EPC). If a third party proves that it has initiated entitlement proceedings in a national court, the EPO will stay the opposition pending the court decision unless the third party consents to the opposition continuing (Rule 78 (1) EPC).

If the Opposition Division decides that none of the grounds prejudices the opposed patent, it will reject the opposition (Article 101 (2) EPC). If at least one of the grounds prejudices the patent, the patent is revoked (Article 101 (2) EPC).

Alternatively, the Opposition Division may find that amendments made by the proprietor overcome the objections raised, and may maintain the patent in amended form (Article 101 (3)(a) EPC).

Case law on the opposition procedure may be found in the Case Law of the Boards of Appeal of the European Patent Office, section IV – D, pages 876-927. The initial assessment of an opposition is discussed in the Guidelines for Examination in the European Patent Office, Part D, Chapter IV. The substantive assessment of oppositions is discussed in Part D, Chapters V to IX. Article 102 Revocation or maintenance of the European patent (deleted) Article 103 Publication of a new specification of the European patent If the European patent is maintained as amended under Article 101, paragraph 3 (a), the EPO shall publish a new specification of the European patent as soon as possible after the mention of the opposition new decision has been published in the European Patent Bulletin.

Article 101 (3)(a) – Decision to maintain patent in amended form Content and form specification – Rule 87

of

Related Rules Previously Rules 58 (4) – (8)

Rule 82 Maintenance of the European patent in amended form (1) Before the Opposition Division decides to maintain the European patent as amended, it shall inform the parties of the text in which it intends to maintain the patent, and shall invite them to file their observations within two months if they disapprove of that text.

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(2) If a party disapproves of the text communicated by the Opposition Division, examination of the opposition may be continued. Otherwise, the Opposition Division shall, on expiry of the period under paragraph 1, invite the proprietor of the patent to pay the prescribed fee and to file a translation of any amended claims in the official languages of the European Patent Office other than the language of the proceedings, within a period of three months.

(3) If the acts required under paragraph 2 are not performed in due time, they may still be performed within two months of a communication concerning the failure to observe the time limit, provided that a surcharge is paid within this period. Otherwise, the patent shall be revoked.

(4) The decision to maintain the European patent as amended shall state which text of the patent forms the basis for the decision.

Rule 87 Content and form of the new specification of the European patent

Previously Rules 62 and 62a

The new specification of the European patent shall include the Rules 73 (2) and (3) – Form and description, claims and drawings as amended. Rule 73, paragraphs content of patent Rule 74 – Issue and form of grant 2 and 3, and Rule 74 shall apply. certificate

Other Relevant Rules Rule 73 Content and form of the See Article 98, page 104 specification Rule 74 Certificate for a European patent See Article 98, page 104

Comment: If an Opposition Division decides to maintain a European patent in amended form, it will inform the parties and set a two-month deadline for comments (Rule 82 (1) EPC). There is no obligation on the parties to comment and if a proprietor or an opponent fails to reply, it is not precluded from subsequently filing an appeal (see G1/88).

If a proprietor disapproves the proposed text, the opposition is re-opened.

Otherwise, the Opposition Division will set a three-month period for filing translations of any amended claims and payment of a re-publication fee (Rule 82 (2) EPC). This fee is currently €75 (Article 2 (8) of the Rules Relating to Fees). The translations may be filed and the fee paid up to two months late on payment of a €120 surcharge (Rule 82 (3) EPC) and Article 2 (9) of the Rules Relating to Fees).

Failure to file the translations or pay the fee together with any surcharge in due time results in the patent being revoked (Rule 82 (3) EPC).

A decision to revoke a patent on this basis can be appealed if the revocation was made in error. A decision to revoke a patent for failure to file translations and pay the required fees may be taken by a formalities officer (see G1/90).

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Articles 104-105

A Guide to the EPC 2000 Article 104 Costs (1) Each party to the opposition proceedings shall bear the costs it has incurred, unless the Opposition Division, for reasons of equity, orders, in accordance with the Implementing Regulations, a different apportionment of costs.

Costs – Rule 88

(2) The procedure for fixing costs shall be laid down in the Implementing Regulations.

(3) Any final decision of the EPO fixing the amount of costs shall be dealt with, for the purpose of enforcement in the Contracting States, in the same way as a final decision given by a civil court of the State in which enforcement is to take place. Verification of such decision shall be limited to its authenticity.

Related Rule Rule 88 Costs

Previously Rule 63

(1) The apportionment of costs shall be dealt with in the decision on the opposition. Such apportionment shall only take into consideration the expenses necessary to assure proper protection of the rights involved. The costs shall include the remuneration of the representatives of the parties.

(2) The Opposition Division shall, on request, fix the amount of costs to be paid under a final decision apportioning them. A bill of costs, with supporting evidence, shall be attached to the request. Costs may be fixed once their credibility is established.

Fee for awarding costs is €75 – RRF Article 2 (16)

(3) A request for a decision by the Opposition Division may be filed within one month of the communication on the fixing of costs under paragraph 2. The request shall be filed in writing and state the grounds on which it is based. It shall not be deemed to be filed until the prescribed fee has been paid.

(4) The Opposition Division shall decide on the request under paragraph 3 without oral proceedings.

Comment: Case law on the assessment of costs may be found in the Case Law of the Boards of Appeal of the European Patent Office, section VII-C.7, pages 740-763.

Assessment of costs in oppositions is also discussed in the Guidelines for Examination in the European Patent Office, Part D, Chapter IX. In the case of an intervener, EPO may dispense with requirement to communicate notices of opposition and observations to all parties – Rule 79 (4) Notice of intervention must be filed within three months of start of court proceedings – Rule 89 (1)

Article 105 Intervention of the assumed infringer (1) Any third party may, in accordance with the Implementing Regulations, intervene in opposition proceedings after the opposition period has expired, if the third party proves that (a) proceedings for infringement of the same patent have been instituted against him, or 114

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(b) following a request of the proprietor of the patent to cease Form and content of notice of alleged infringement, the third party has instituted intervention same as for notice of proceedings for a ruling that he is not infringing the patent. opposition – Rule 89 (2) and Rules (2) An admissible intervention shall be treated as an opposition.

Related Rule Rule 89 Intervention of the assumed infringer

76 and 77

Notice checked and rejected if not compliant with rules – Rule 89 (2) and Rules 76 and 77

Previously elements of Article 105

(1) Notice of intervention shall be filed within three months of the Article 105 – Legal proceedings against assumed infringer date on which proceedings referred to in Article 105 are instituted.

(2) Notice of intervention shall be filed in a written reasoned statement; Rules 76 and 77 shall apply mutatis mutandis. The notice of intervention shall not be deemed to have been filed until the opposition fee has been paid.

Rule 76 – Form and content of opposition Rule 77 – Rejection of opposition as inadmissible

Other Relevant Rules Rule 76 Form and content of the opposition Rule 77 Rejection of the opposition as inadmissible Rule 79 Preparation of the examination of the opposition

See Article 99, page 105 See Article 101, page 109 See Article 101, page 109

Comment: Article 105 EPC provides a means for an alleged infringer to intervene in opposition proceedings after the nine-month opposition period has expired. To do so, the alleged infringer must supply the EPO with evidence that the patent proprietor has initiated court proceedings against him. The intervener must also file a notice of intervention and pay an opposition fee. All these steps must be taken within three months of the initiation of the court proceedings (Article 105 and Rule 89 EPC).

It is only possible for an alleged infringer to intervene while an opposition is pending.

Once the Opposition Division has issued a decision, intervention is only possible if an appeal is filed (see G4/91). If an intervention is filed during an appeal, the intervener may base the intervention on grounds not considered at first instance (see G1/94).

As the existence of proceedings is a requirement for filing an intervention, it is essential to know exactly when an opposition comes to an end. In G12/91, the Enlarged Board of Appeal held that in the case of a written decision, the decisionmaking process is completed on the date the decision is handed over to the EPO postal service. In G7/91, G8/91 and G8/93, the Enlarged Board held that the withdrawal of a sole appellant causes proceedings to end at the time the EPO receives notice of the withdrawal, such that a notice of intervention filed on the same day but received after a notice of a sole appellant’s withdrawal is deemed too late.

Case law on the intervention of an alleged infringer in opposition proceedings may be found in the Case Law of the Boards of Appeal of the EPO, section IV-C.3, pages 839--844.

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Article 105a Subject of proceedings is patent as granted or previously amended – Rule 90

A Guide to the EPC 2000 Article 105a Request for limitation or revocation (1) At the request of the proprietor, the European patent may be

Examining Division considers requests revoked or be limited by an amendment of the claims. The request for limitation or revocation – Rule 91

shall be filed with the European Patent Office in accordance with the Implementing Regulations. It shall not be deemed to have been filed until the limitation or revocation fee has been paid.

If request not in English, French or German, translation must be filed by (2) The request may not be filed while opposition proceedings in end of opposition period or within 1 respect of the European patent are pending.

Requirements for request for limitation or revocation – Rule 92)

month, whichever is later – Rule 6 (2)

Request for revocation or limitation deemed not filed and fees reimbursed if opposition pending – Rule 93

Related Rule Rule 90 Subject of proceedings Article 105a – Request for The subject of limitation or revocation proceedings under Article 105a limitation or revocation of European shall be the European patent as granted or as amended in opposition patent or limitation proceedings before the European Patent Office.

Rule 93 Precedence of opposition proceedings (1) The request for limitation or revocation shall be deemed not to have been filed if opposition proceedings in respect of the patent are pending at the time of filing the request.

(2) If, at the time of filing an opposition to a European patent, limitation proceedings in respect of that patent are pending, the Examining Division shall terminate the limitation proceedings and order the reimbursement of the limitation fee. The reimbursement shall also be ordered in respect of the fee referred to in Rule 95, Rule 95 (3) – Fee due on allowance paragraph 3, first sentence, if the requester has already paid this fee. of limitation

Other Relevant Rules Rule 6

Filing of translations and reduction of fees Rule 91 Responsibility for proceedings Rule 92 Requirements of the request Rule 95 Decision on the request

See Article 14, page 8 See Article 105b, page 118 See Article 105b, page 118 See Article 105b, page 119

Comment: Articles 105a-c EPC establish a post-grant limitation and revocation procedure.

Under it, a proprietor may apply to revoke its own European patent or reduce its scope through amendment of the claims.

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In order to request limitation or revocation, a proprietor must file a formal request and pay the associated fee. The fee for a request for limitation is currently €1155 (Article 2 (10) of the Rules Relating to Fees). For a request for revocation the current fee is €520 (Article 2 (10) of the Rules Relating to Fees). A request is not deemed filed until the fee is paid (Article 105a (1) EPC). The fees are reduced by 20% for nationals or residents of, and persons having a principal place of business in, Contracting States who file in an official language of that state other than English, French or German (Rule 6 (3) EPC and Article 14 (1) of the Rules Relating to Fees).

If the request is filed in a language other than English, French or German, a translation into one of those languages must be filed within a month (Rule 6 (2) EPC).

Failure to file the translation in due time results in the request being deemed not to have been made (Article 14 (4) EPC). Further processing is not available since its use is restricted to pre-grant time limits (see commentary on Article 121 EPC).

Article 105a (2) EPC governs the relationship between limitation, revocation and opposition proceedings. A request for limitation or revocation cannot be filed while an opposition is pending (Article 105a (2) EPC).

Rule 93 (2) EPC deals with limitation proceedings initiated during the nine-month opposition period, where an opposition is subsequently filed. In such cases, the limitation proceedings are terminated and all fees in respect of them are refunded.

The central revocation and limitation procedure does not automatically take precedence over corresponding national proceedings. Where parallel proceedings occur, national law determines whether the national proceedings are suspended pending the EPO’s decision. Further, the existence of the central limitation procedure does not preclude a proprietor from making further amendments in national proceedings.

Case law on the intervention of an alleged infringer in opposition proceedings may be found in the Case Law of the Boards of Appeal of the EPO, section IV-C.3, pages 846--848.

Article 105b Limitation or revocation of the European patent

Examining Divisions responsible for considering requests for limitation or revocation – Rule 91

(1) The European Patent Office shall examine whether the Requirements for request for limitation requirements laid down in the Implementing Regulations for limiting or revocation – Rule 92 or revoking the European patent have been met.

(2) If the European Patent Office considers that the request for limitation or revocation of the European patent meets these requirements, it shall decide to limit or revoke the European patent in accordance with the Implementing Regulations. Otherwise, it shall reject the request.

Rejection of request as inadmissible – Rule 94

Request for limitation checked for clarity and to ensure that it does not add matter or extend scope of protection – Rule 95 (2) If request for limitation allowed, claims

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due within three months – Rule 95 (3)

it has been granted. It shall take effect on the date on which the mention of the decision is published in the European Patent Bulletin.

Can file late claims translations within two months of notification by EPO with additional fee – Rule 95 (3)

Related Rules

Decisions on limitation and revocation subject to appeal – Article 106 (1) Limited or revoked European patent deemed not to have had effect from outset to extent limited or revoked – Article 68 Article 105a – Request for limitation or revocation Article 18 (2) – Membership of Examining Divisions Rule 6 (2) - Translation due within one month Part III comprises Rules 35 – 54 relating to form and content of application Rule 41(2)(c) – Name, address, nationality and state of residence or principal place of business

Rule 41 (2)(d) – Name and address of representative

Rule 91 Responsibility for proceedings Decisions on requests for limitation or revocation of the European patent under Article 105a shall be taken by the Examining Division.

Article 18, paragraph 2, shall apply mutatis mutandis.

Rule 92 Requirements of the request (1) The request for limitation or revocation of a European patent shall be filed in writing in one of the official languages of the European Patent Office. It may also be filed in an official language of a Contracting State, provided that a translation is filed in one of the official languages of the European Patent Office within the period specified in Rule 6, paragraph 2. Part III of the Implementing Regulations shall apply mutatis mutandis to documents filed in limitation or revocation proceedings.

(2) The request shall contain: (a) particulars of the proprietor of the European patent making the request (the requester) as provided in Rule 41, paragraph 2 (c), and an indication of the Contracting States for which the requester is the proprietor of the patent; (b) the number of the patent whose limitation or revocation is requested, and a list of the Contracting States in which the patent has taken effect; (c) where appropriate, the names and addresses of the proprietors of the patent for those Contracting States in which the requester is not the proprietor of the patent, and evidence that the requester is entitled to act on their behalf in the proceedings; (d) where limitation of the patent is requested, the complete version of the amended claims and, as the case may be, of the amended description and drawings; (e) where the requester has appointed a representative, particulars as provided in Rule 41, paragraph 2 (d).

Rule 94 Rejection of the request as inadmissible

Rule 92 – Form and content of request for limitation or revocation Time periods set by EPO must be at least two months and may be extended on request – Rule 132 (2)

If the Examining Division finds that the request for limitation or revocation fails to comply with the requirements of Rule 92, it shall invite the requester to correct the deficiencies noted, within a period to be specified. If the deficiencies are not corrected in due time, the Examining Division shall reject the request as inadmissible.

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Article 105b

Rule 95 Decision on the request (1) If a request for revocation is admissible, the Examining Division shall Article 84 – Claims must be clear, concise and supported revoke the patent and communicate this to the requester. by description

(2) If a request for limitation is admissible, the Examining Division shall examine whether the amended claims constitute a limitation vis à vis the claims as granted or amended in opposition or limitation proceedings and comply with Article 84 and Article 123, paragraphs 2 and 3. If the request does not comply with these requirements, the Examining Division shall give the requester one opportunity to correct any deficiencies noted, and to amend the claims and, where appropriate, the description and drawings, within a period to be specified.

Article 123 (2) – Amendments must not add matter Article 123 (3) – Amendments must not extend scope of protection

Time periods set by EPO must be at least two months and may be extended on (3) If a request for limitation is allowable under paragraph 2, the Examining request – Rule 132 (2)

Division shall communicate this to the requester and invite him to pay the prescribed fee and to file a translation of the amended claims in the official languages of the European Patent Office other than the language of the proceedings, within a period of three months; Rule 82, paragraph 3, first sentence, shall apply mutatis mutandis. If the requester performs these acts in due time, the Examining Division shall limit the patent.

(4) If the requester does not respond in due time to the communication issued under paragraph 2, or if the request for limitation is not allowable, or if the requester fails to perform the acts required under paragraph 3 in due time, the Examining Division shall reject the request.

Other Relevant Rules Rule 6

Filing of translations and reduction of fees Rule 35 General provisions Rule 41 Request for grant Rule 42 Content of the description Rule 43 Form and content of claims Rule 46 Form of the drawings Rule 48 Prohibited matter Rule 49 General provisions governing the presentation of the application documents Rule 50 Documents filed subsequently Rule 82 Maintenance of the European patent in amended form Rule 93 Precedence of opposition proceedings Rule 132 Periods specified by the European Patent Office Rule 138 Different claims, description and drawings for different States

See Article 14, page 8 See Article 75, page 50 See Article 78, page 56 See Article 78, page 57 See Article 84, page 75 See Article 78, page 58 See Article 78, page 59 See Article 78, page 59

See Article 94, page 98 See Article 103, page 112 See Article 105a, page 116 See Article 120, page 146 See Article 123, page 153

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Article 105b

A Guide to the EPC 2000

Comment: Article 105b deals with the examination of requests for revocation and limitation.

Such a request must identify the name, address and nationality of the requester and the requester’s state of residence or principal place of business. It must also identify the Contracting States for which the requester is the proprietor of the patent (Rule 92 (2)(a) EPC), the number of the granted patent and the Contracting States where the patent has been brought into effect (Rule 92 (2)(b) EPC). If a requester is not the proprietor in all the Contracting States where the patent has effect, the names and addresses of the proprietors in the other Contracting States must also be provided together with evidence that the requester is entitled to act on their behalf (Rule 92 (2)(c) EPC). Where a requester acts through a representative, the representative’s name and address must also be provided (Rule 92 (2)(e) EPC).

A request for limitation must include a complete version of amended claims and, if appropriate, an amended description and drawings (Rule 92 (2)(d) EPC).

These amended pages must fulfil the usual requirements as to margins and form for European patent application documents (Rule 92 (1) EPC). If relevant prior national rights exist, different claim sets may be filed in respect of different Contracting States (Rule 138 EPC).

A request for limitation or revocation is checked on receipt for compliance with the formalities as to content set out in Rule 92 EPC. If there are any deficiencies, the Examining Division will set a period for the requester to correct them (Rule 94 EPC).

If a request for revocation is admissible, the Examining Division will revoke the patent (Rule 95 (1) EPC).

In contrast, where a request for limitation is admitted, the Examining Division goes on to consider whether the amended claims are allowable and whether they do in fact limit the scope of the patent as currently in force (Rule 95 (2) EPC). As part of this, the Examining Division checks that the amended claims fulfil the requirements of the EPC in respect of clarity and that they do not extend the scope of protection or add matter (Rule 95 (2) and Articles 84 and 123 (2) and (3) EPC).

The Examining Division does not, however, check whether the limitation renders the amended application patentable in the sense of Articles 52 – 57 EPC. It should be noted that since requests for limitation are only examined as to clarity and added matter rather than substantive patentability, it is not possible for third parties to file observations under Article 115 during limitation proceedings since such observations may only relate to substantive patentability.

If the proposed amendments are not clear, or if they extend the scope of protection or add matter, the Examining Division will give the requester a single opportunity to correct the deficiencies and to further amend the claims (Rule 95 (2) EPC). Failure to comply within the period set by the EPO results in the request for limitation being rejected (Rule 95 (4) EPC). Further processing is not available since its use is restricted to pre-grant time limits (see commentary on Article 121).

Like all Examining Division decisions, a decision to reject or disallow a request

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Part V: Opposition and Limitation Procedure Articles 105b-105c for limitation is subject to review by the Boards of Appeal (Article 106 (1) EPC).

If a request for limitation is allowable, the Examining Division invites the requester to pay a publication fee and to file translations of the amended claims into the other languages of the EPO within three months. These steps may be taken up to two months after notification of their omission provided an additional fee is paid (Rule 95 (3) EPC). No substantive amendments are allowed at this stage. However, obvious mistakes or typing errors may be rectified on request.

Further processing is not available (see commentary on Article 121).

When a decision to revoke is published, the patent is revoked ab initio. Similarly, a limitation is considered always to have had effect in all Contracting States (Article 105b (3) EPC and Article 68 EPC).

The procedures for examining requests for limitation and revocation are discussed in the Guidelines for Examination in the European Patent Office, Part D, Chapter X.

Article 105c Publication of the amended specification of the European patent

Article 105b (2) – Limitation of European patent at proprietor’s request

If the European patent is limited under Article 105b, paragraph 2, the European Patent Office shall publish the amended specification of the European patent as soon as possible after the mention of the limitation has been published in the European Patent Bulletin.

Content and form of amended patent – Rule 96

Related Rule Rule 96 Content and form of the amended European patent specification

Requirements to file translations into national languages in certain Contracting States – Article 65

Rules 73 (2) and (3) – Form and

The amended European patent specification shall include the content of patent description, claims and drawings as amended. Rule 73, paragraphs Rule 74 – Issue and form of grant certificate 2 and 3, and Rule 74 shall apply.

Other Relevant Rules See Article 98, page 104 Rule 73 Content and form of the specification Rule 74 Certificate for a European patent See Article 98, page 104

Comment: When the EPO publishes a decision allowing the limitation of a patent, it will also issue a revised specification containing the description, claims and drawings as amended. The revised specification is published in the same format as a normal granted European patent (Rule 96 EPC).

If an amended patent is not in an official language of an EPC Contracting State, national laws may require that in order for the patent to be recognised there, a translation into a national language must be filed within a time limit which is not less than three months from the date on which the limited patent is published by the EPO (Article 65 EPC).

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Article 106

A Guide to the EPC 2000

PART VI APPEALS PROCEDURE Article 106 Decisions subject to appeal (1) An appeal shall lie from decisions of the Receiving Section, Examining Divisions, Opposition Divisions and the Legal Division. It shall have suspensive effect.

(2) A decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final No appeal on costs if costs are less than decision, unless the decision allows a separate appeal. appeal fee – Rule 97 (2) No appeals solely on costs – Rule 97 (1)

Decision of Opposition Division may be appealed even if patent has been surrendered or has lapsed in all Contracting States – Rule 98

(3) The right to file an appeal against decisions relating to the apportionment or fixing of costs in opposition proceedings may be restricted in the Implementing Regulations.

Related Rules

Previously Articles 106 (4) and (5)

Rule 97 Appeal against apportionment and fixing of costs (1) The apportionment of costs of opposition proceedings cannot be the sole subject of an appeal.

(2) A decision fixing the amount of costs of opposition proceedings cannot be appealed unless the amount exceeds that of the fee for appeal.

Previously Article 106 (2)

Rule 98 Surrender or lapse of the patent The decision of an Opposition Division may be appealed even if the European patent has been surrendered in all the designated Contracting States or has lapsed in all those States.

Comment: Article 106 (1) EPC provides that all decisions at first instance are subject to appeal except decisions by the Search Division. This is because the Search Division merely generates search reports and in the course of doing so does not make any decisions affecting the grant or refusal of an application. Where the Search Division considers that a European patent application lacks unity, an applicant who wishes to challenge that view must pay any additional search fees imposed and then ask the Examining Division to review whether the request for additional fees was justified (Rule 64 (2) EPC). If the Examining Division refuses to refund those fees, the applicant can appeal (Article 106 (1) EPC).

Article 106 (3) EPC permits restriction of the right to appeal against an

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Part VI: Appeals Procedure

Articles 106-108

apportionment of costs. This is achieved through Rule 97 EPC, which provides that the apportionment of costs cannot be the sole subject of an appeal (Rule 97 (1) EPC) and that a decision fixing costs can only be challenged if the costs exceed the amount of the appeal fee, currently set at €1,860 (Rule 97 (2) EPC and Article 2 (11) of the Rules Relating to Fees).

The appeals procedure is discussed in the Guidelines for Examination in the European Patent Office, Part E, Chapter X.

Article 107 Persons entitled to appeal and to be parties to appeal proceedings Any party to proceedings adversely affected by a decision may appeal. Any other parties to the proceedings shall be parties to the appeal proceedings as of right.

Article 108 Time limit and form Notice of appeal shall be filed, in accordance with the Implementing Regulations, at the European Patent Office within two months of notification of the decision. Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid. Within four months of notification of the decision, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations.

These two-month and four-month periods cannot be extended using further processing – Article 121 (4) Content of notice and grounds of appeal – Rule 99 Rejection of appeal as inadmissible – Rule 101

Related Rule Rule 99 Content of the notice of appeal and the statement of grounds (1) The notice of appeal shall contain: (a) the name and the address of the appellant as provided in Rule 41, paragraph 2 (c); (b) an indication of the decision impugned; and (c) a request defining the subject of the appeal.

Previously Rule 64

Rule 41 (2)(c) – Form of name and address of appellant If appellant fails to comply with Rule 99 (1)(a), EPO will set term for remedying deficiencies – Rule 101 (2)

(2) In the statement of grounds of appeal the appellant shall indicate If appellant fails to comply with Rule the reasons for setting aside the decision impugned, or the extent to 99 (1)(b) or (c) within appeal term, which it is to be amended, and the facts and evidence on which the appeal rejected – Rule 101 (1) appeal is based.

(3) Part III of the Implementing Regulations shall apply mutatis Part III comprises Rules 35 – 54 mutandis to the notice of appeal, the statement of grounds and the relating to form and content of application documents filed in appeal proceedings.

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Article 108

A Guide to the EPC 2000 Other Relevant Rules

Rule 6 Rule 35 Rule 41 Rule 42 Rule 43 Rule 46 Rule 48 Rule 49

Filing of translations and reduction of fees General provisions Request for grant Content of the description Form and content of claims Form of the drawings Prohibited matter General provisions governing the presentation of the application documents Rule 50 Documents filed subsequently Rule 101 Rejection of the appeal as inadmissible

See Article 14, page 8 See Article 75, page 50 See Article 78, page 56 See Article 78, page 57 See Article 84, page 75 See Article 78, page 58 See Article 78, page 59 See Article 78, page 59 See Article 94, page 98 See Article 110, page 126

Comment: Article 108 and Rule 99 EPC provide for the time limit and form of an appeal.

A notice of appeal must be filed within two months of notification of the decision (Article 108 EPC). This term cannot be extended using further processing (Article 121 (4) EPC).

The notice of appeal must include the name and address of the appellant, an indication of the decision being challenged and a request that the decision be set aside (Rule 99 (1) EPC). Failure to indicate the decision being challenged or request that the decision be set aside within the period for filing a notice of appeal results in the appeal being rejected. If a notice of appeal does not identify the name and address of the appellant in the correct form, the Board will set a deadline for remedying the deficiency (Rule 101 (2) EPC). Failure to comply in due time results in the appeal being rejected.

A notice of appeal is only deemed to have been filed when the appeal fee is paid. If the appeal fee is not paid within the two-month term for filing a notice of appeal, the appeal is deemed never to have been filed (Article 108 EPC). There is no obligation on the part of the EPO to notify an appellant that an appeal fee has not been paid when a notice of appeal is filed, particularly where there is still time for the omission to be remedied (see G2/97). The appeal fee at present is €1,860 (Article 2 (11) of the Rules Relating to Fees). This fee is reduced by 20% for residents or nationals of, or persons having a principal place of business in, a Contracting State having an official language other than English, French or German who file the notice of appeal in that language (Article 14 (4) EPC; see commentary on Article 14 EPC).

Where there are multiple parties, each must pay a separate appeal fee if it is to have the status of an appellant (see G2/91). A party lacking that status is restricted to submitting arguments in favour of maintaining the decision being challenged (see G9/92 and G4/93). An exception to this general rule was noted in G1/99, where a patent was maintained in amended form by an Opposition Division despite including an inadmissible amendment. In that case, the opponent was

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Articles 108-110

permitted to argue in favour of the complete revocation of the patent despite the fact that only the proprietor had filed an appeal.

If it is alleged that the identification of the appellant on the notice of appeal is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, it is possible to correct this error under Rule 101(2) EPC by a request for substitution by the name of the true appellant, provided the requirements of Rule 101(1) EPC have been met (see G1/12).

Within four months of notification of the decision being challenged, substantive grounds of appeal must be filed identifying why the decision should be set aside (Article 108 and Rule 99 (2) EPC). The statement of grounds must identify the facts and evidence on which the appeal is based. The deadline for filing the grounds of appeal cannot be extended and further processing is not available (Article 121 (4) EPC).

Article 109 Interlocutory revision

Appeal fee reimbursed if decision

(1) If the department whose decision is contested considers the rectified by way of interlocutory revision – Rule 103 (1)(a) appeal to be admissible and well founded, it shall rectify its decision.

This shall not apply where the appellant is opposed by another party to the proceedings.

(2) If the appeal is not allowed within three months of receipt of the statement of grounds, it shall be remitted to the Board of Appeal without delay, and without comment as to its merit.

Other Relevant Rules Rule 103 Reimbursement of the appeal fee

See Article 111, page 127

Comment: In G3/03 the Enlarged Board of Appeal held that if a department of first instance corrects its own decision by way of interlocutory revision, that department is obliged to refund the appeal fee.

Case law relating to interlocutory revision may be found in the Case Law of the Boards of Appeal of the European Patent Office, section IV – E.2.9, pages 969-970.

Article 110 Examination of appeals Examination of appeals – Rule 100

If the appeal is admissible, the Board of Appeal shall examine whether the appeal is allowable. The examination of the appeal shall Rejection of appeal as inadmissible – Rule 101 be conducted in accordance with the Implementing Regulations.

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Article 110

A Guide to the EPC 2000

Related Rules Rule 100 (1) previously Rule 66 (1) Rules 100 (2) and (3) previously Articles 110 (2) and (3)

Rule 100 Examination of appeals

(1) Unless otherwise provided, the provisions relating to proceedings Time periods set by EPO must be at before the department which has taken the decision impugned shall least two months and may be apply to appeal proceedings. extended on request – Rule 132 (2)

Previously Rule 65 Article 106 – Decisions subject to appeal

(2) In the examination of the appeal, the Board of Appeal shall invite the parties, as often as necessary, to file observations, within a period to be specified, on communications issued by itself or observations submitted by another party.

(3) If the applicant fails to reply in due time to an invitation under paragraph 2, the European patent application shall be deemed to be withdrawn, unless the decision impugned was taken by the Legal Division.

Rule 101 Rejection of the appeal as inadmissible

Article 107 – Any party adversely affected by decision may appeal

(1) If the appeal does not comply with Articles 106 to 108, Rule 97 or Rule 99, paragraph 1 (b) or (c) or paragraph 2, the Board of Appeal Article 108 – Notice of appeal must shall reject it as inadmissible, unless any deficiency has been be filed within two months of remedied before the relevant period under Article 108 has expired. notification of decision; grounds of appeal must be filed within four months of notification of decision

(2) If the Board of Appeal notes that the appeal does not comply with Rule 99, paragraph 1 (a), it shall communicate this to the appellant Rule 97 – Restrictions on appeals and shall invite him to remedy the deficiencies noted within a period against costs to be specified. If the deficiencies are not remedied in due time, the Rule 99 (1)(b) – Indication of Board of Appeal shall reject the appeal as inadmissible. decision being appealed

Other Relevant Rules

Rule 99 (1)(c) – Request defining subject of appeal Rule 97 Appeal against apportionment Rule 99 (1)(a) – Name and address and fixing of costs of appellant Rule 99 Content of the notice of appeal Time periods set by EPO must be at and the statement of grounds least two months and may be Rule 132 Periods specified by the extended on request – Rule 132 (2)

European Patent Office

See Article 106, page 122 See Article 108, page 123 See Article 120, page 146

Comment: Article 110 and Rules 100 and 101 EPC deal with the examination of appeals.

When a notice of appeal is filed, the Board of Appeal checks that it identifies an EPO decision that can be appealed, that the notice and grounds of appeal have been filed, that the appeal fee has been paid and that the appellant is a party adversely affected by the decision. If any of these criteria are not met, the appeal is rejected as inadmissible unless the deficiencies are remedied during the appeal

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Articles 110-111

term (Rule 101 (1) EPC). There is no obligation on the part of the EPO to notify an appellant that an appeal fee has not been paid when a notice of appeal is filed, particularly where there is still time for the omission to be remedied (see G2/97).

If a notice of appeal does not identify the name and address of the appellant in the correct form, the Board will set a deadline for remedying the deficiency (Rule 101 (2) EPC). Failure to comply in due time results in the appeal being rejected.

If the appeal is admissible, the Board will examine its substance. In doing so, the Board may invite the parties to file observations as often as necessary (Rule 100 (2) EPC) and may exercise any powers of the department whose decision is being challenged (Rule 100 (1) and Article 111 (1) EPC).

In appeals against decisions of the Opposition Division, the examination of a patent’s validity is restricted to the grounds of opposition considered at first instance. Fresh grounds may only be considered with the consent of the proprietor (see G10/91). A Board of Appeal is, however, entitled to consider the validity of dependent claims if a main independent claim falls and the validity of the dependent claims is in doubt (see G10/91). In addition, if an intervention is filed during an appeal, the intervener may base the intervention on grounds not considered at first instance (see G1/94).

In ex parte proceedings, Boards of Appeal have greater discretion to consider issues not raised at first instance. Although the main aim of such proceedings is reconsideration of the decision being challenged, there is no bar on the Board of Appeal itself introducing new grounds, facts or evidence (see G10/93).

Case law relating to appeals may be found in the Case Law of the Boards of Appeal of the European Patent Office, section IV – E, pages 928-1060. The appeal procedure is discussed in the Guidelines for Examination in the European Patent Office, Part E, Chapter X. Article 111 Decision in respect of appeals (1) Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

(2) If the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same. If the decision under appeal was taken by the Receiving Section, the Examining Division shall also be bound by the ratio decidendi of the Board of Appeal.

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Articles 111-112

A Guide to the EPC 2000 Related Rules

Previously Rule 66 (2)

Rule 102 Form of decision of the Board of Appeal The decision shall be authenticated by the Chairman of the Board of Appeal and by the competent employee of the registry of the Board of Appeal, either by their signature or by any other appropriate means. The decision shall contain: (a) a statement that it was delivered by the Board of Appeal; (b) the date when the decision was taken; (c) the names of the Chairman and of the other members of the Board of Appeal taking part; (d) the names of the parties and their representatives; (e) the requests of the parties; (f) a summary of the facts; (g) the reasons; (h) the order of the Board of Appeal, including, where appropriate, a decision on costs.

Previously Rule 67

Rule 103 Reimbursement of the appeal fee (1) The appeal fee shall be reimbursed in full: (a) in the event of interlocutory revision or where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation, or (b) if the appeal is withdrawn before the filing of the statement of grounds of appeal and before the period for filing that statement has expired.

(2) The appeal fee shall be reimbursed at 50% if the appeal is withdrawn after expiry of the period under paragraph 1(b), provided withdrawal occurs: (a) if a date for oral proceedings has been set, at least four weeks before that date; (b) if no date for oral proceedings has been set, and the Board of Appeal has issued a communication inviting the appellant to file observations, before expiry of the period set by the Board for filing observations; (c) in all other cases, before the decision is issued.

(3) The department whose decision is impugned shall order the reimbursement if it revises its decision and considers reimbursement equitable by reason of a substantial procedural violation. In all other cases, matters of reimbursement shall be decided by the Board of Appeal.

Other Relevant Rules Rule 100 Examination of appeals

Comment: In issuing its decision, a Board of Appeal may exercise any power of the department whose decision is being challenged or may remit the case back to the department of first instance for further consideration (Article 111 (1) EPC). If a case is remitted, the department of first instance may not depart from the ratio decidendi of the Board of Appeal (Article 111 (2) EPC).

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Article 112

In addition to deciding substantive issues, a Board of Appeal also has the power to refund an appeal fee where an appeal arises from a substantial procedural violation on the part of the EPO (Rule 103(1)(a)EPC).

The appeal fee will also be refunded in full if the appeal is withdrawn prior to the filing of the statement of grounds of appeal provided the withdrawal occurs before the deadline for filing such grounds (Rule 103(1)(b) EPC). Half of the appeal fee is refunded if the appeal is withdrawn after that date provided the withdrawal is: at least four weeks before any date for oral proceedings, if such a date has been set; before the date for filing observations prior to oral proceedings, if no date for oral proceedings has yet been set; or prior to a decision being issued, if no oral proceedings have been requested (Rule 103(1)EPC).

Article 112 Decision or opinion of the Enlarged Board of Appeal (1) In order to ensure uniform application of the law, or if a point of law of fundamental importance arises: (a) the Board of Appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the Enlarged Board of Appeal if it considers that a decision is required for the above purposes. If the Board of Appeal rejects the request, it shall give the reasons in its final decision; (b) the President of the European Patent Office may refer a point of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on that question.

(2) In the cases referred to in paragraph 1 (a) the parties to the appeal proceedings shall be parties to the proceedings before the Enlarged Board of Appeal.

(3) The decision of the Enlarged Board of Appeal referred to in paragraph 1 (a) shall be binding on the Board of Appeal in respect of the appeal in question.

Comment: Article 112 EPC sets out the basis on which points of law may be referred to the Enlarged Board of Appeal.

A Board of Appeal must refer questions arising from appeal proceedings, either at the request of one of the parties or at the Board’s own motion, if it considers that an answer is required to ensure the uniform application of law or if the point of law is of fundamental importance (Article 112 (1)(a) EPC). The parties to the appeal then become parties to the proceedings before the Enlarged Board of Appeal (Article 112 (2) EPC). The Enlarged Board’s decision is binding on the Board of Appeal making the reference (Article 112 (3) EPC).

The President of the EPO may also refer points of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on a matter (Article 112 (1)(b) EPC). If the EPO President exercises this power, the Enlarged Board of Appeal may reject the request if it considers that the earlier Board of Appeal decisions are not in conflict (see G3/95 and G3/08).

Case law relating to referral to the Enlarged Board of Appeal may be found in the Case Law of the Boards of Appeal of the EPO, section IV - E.9.1, pages 1060-1063.

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Article 112a

A Guide to the EPC 2000 Article 112a Petition for review by the Enlarged Board of Appeal

(1) Any party to appeal proceedings adversely affected by the decision of the Board of Appeal may file a petition for review of Article 24 (1) – Board member may not take part in case in which he has a personal the decision by the Enlarged Board of Appeal. interest or in respect of which he previously (2) The petition may only be filed on the grounds that: acted as a representative, participated in (a) a member of the Board of Appeal took part in the decision the earlier decision or was excluded from in breach of Article 24, paragraph 1, or despite being the relevant Board of Appeal Article 24 (4) – Decision on exclusion of Board member Article 113 – Decisions may only be based on facts and evidence on which parties have had an opportunity to comment Failure to hold oral proceedings when requested is a fundamental procedural defect – Rule 104 (a) Failure to decide on relevant request is a fundamental procedural defect – Rule 104 (b)

excluded pursuant to a decision under Article 24, paragraph 4; (b) the Board of Appeal included a person not appointed as a member of the Boards of Appeal; (c) a fundamental violation of Article 113 occurred; (d) any other fundamental procedural defect defined in the Implementing Regulations occurred in the appeal proceedings; or (e) a criminal act established under the conditions laid down in the Implementing Regulations may have had an impact on the decision.

Sufficient that a court establishes that a criminal act occurred; conviction is not (3) The petition for review shall not have suspensive effect. required – Rule 105

(4) The petition for review shall be filed in a reasoned statement,

Obligation to raise objections during appeal in accordance with the Implementing Regulations. If based on proceedings – Rule 106

paragraph 2 (a) to (d), the petition shall be filed within two

Two-month period for filing petition for review cannot be extended using further processing – months of notification of the decision of the Board of Appeal. If based on paragraph 2 (e), the petition shall be filed within two Article 121 (4)

Application for re-establishment of rights months of the date on which the criminal act has been must be filed within two months of missed established and in any event no later than five years from deadline – Rule 136 (1) notification of the decision of the Board of Appeal. The petition IIf petition for review not filed in English, shall not be deemed to have been filed until after the prescribed French or German, translation must be filed fee has been paid. within 1 month or by end of period for filing (5) The Enlarged Board of Appeal shall examine the petition for petition for review, if later – Rule 6 (2)

review in accordance with the Implementing Regulations. If the Examination of petition for review – Rule 108 petition is allowable, the Enlarged Board of Appeal shall set aside the decision and shall re-open proceedings before the Procedure for dealing with petition for review Boards of Appeal in accordance with the Implementing – Rule 109 Reimbursement of fee for petition for review – Regulations.

Rule 110 (6) Any person who, in a designated Contracting State, has in If proceedings re-opened, proprietor must pay good faith used or made effective and serious preparations for any renewal fees that have fallen due since using an invention which is the subject of a published European date of original decision – Rule 51 (5) patent application or a European patent in the period between the decision of the Board of Appeal and publication in the European Patent Bulletin of the mention of the decision of the Enlarged Board of Appeal on the petition, may without payment continue such use in the course of his business or for the needs thereof.

Content of petition for review – Rule 107

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Part VI: Appeals Procedure

Article 112a

Related Rules Rule 104 Further fundamental procedural defects A fundamental procedural defect under Article 112a, paragraph 2 (d), may have occurred where the Board of Appeal, (a) contrary to Article 116, failed to arrange for the holding of oral proceedings requested by the petitioner, or (b) decided on the appeal without deciding on a request relevant to that decision.

Article 112a (2)(d) – Further fundamental procedural defects laid down by Implementing Regulations Article 116 – Oral proceedings must be held on request of any party

Rule 105 Criminal acts A petition for review may be based on Article 112a, paragraph 2 (e), if a competent court or authority has finally established Article 112a (2)(e) – A criminal act may have that the criminal act occurred; a conviction is not necessary. had an impact on decision Rule 106 Obligation to raise objections A petition under Article 112a, paragraph 2 (a) to (d), is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal, except where such objection could not be raised during the appeal proceedings.

Article 112a (2)(a) – Participation of Board of Appeal member in a case in which he has a personal interest or in respect of which he previously acted as a representative, participated in the earlier decision or was excluded from the relevant Board of Appeal Article 112a (2)(b) – Participation of nonBoard member Article 112a (2)(c) – Decision based on facts or evidence on which parties have not been given opportunity to comment

Rule 107 Contents of the petition for review

Article 112a (2)(d) – Failure to hold oral proceedings on request or to decide on relevant request

(1) The petition shall contain: (a) the name and the address of the petitioner as provided in Rule 41, paragraph 2 (c); (b) an indication of the decision to be reviewed.

(2) The petition shall indicate the reasons for setting aside Rule 41 (2)(c) – Form of name and address the decision of the Board of Appeal, and the facts and evidence on which the petition is based.

(3) Part III of the Implementing Regulations shall apply mutatis mutandis to the petition for review and the documents filed in the proceedings.

Part III comprises Rules 35 – 54 relating to form and content of application

Rule 108 Examination of the petition (1) If the petition does not comply with Article 112a, paragraphs 1, 2 or 4, Rule 106 or Rule 107, paragraph 1 (b) or

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Article 112a Article 112a (1) – Petition can only be brought by a party adversely affected by decision Article 112a (2) – Petition must state allowable grounds Article 112a (4) – Petition must be filed within two months of notification of decision or of date on which criminal act established Rule 106 – Obligation to raise objections during appeal proceedings Rule 107 (1)(b) – Indication of decision Rule 107 (2) – Statement of reasons for setting aside decision of Board of Appeal Rule 107 (1)(a) – Name and address of appellant Time periods set by EPO must be at least two months and may be extended on request – Rule 132 (2) Rule 12 (4) – Allocation of duties to Boards of Appeal

A Guide to the EPC 2000 2, the Enlarged Board of Appeal shall reject it as inadmissible, unless any defect has been remedied before the relevant period under Article 112a, paragraph 4, expires.

(2) If the Enlarged Board of Appeal notes that the petition does not comply with Rule 107, paragraph 1 (a), it shall communicate this to the petitioner and shall invite him to remedy the deficiencies noted within a period to be specified. If the deficiencies are not remedied in due time, the Enlarged Board of Appeal shall reject the petition as inadmissible.

(3) If the petition is allowable, the Enlarged Board of Appeal shall set aside the decision of the Board of Appeal and order the reopening of the proceedings before the Board of Appeal responsible under Rule 12, paragraph 4. The Enlarged Board of Appeal may order that members of the Board of Appeal who participated in taking the decision set aside shall be replaced.

Rule 109 Procedure in dealing with petitions for review

(1) In proceedings under Article 112a, the provisions relating to proceedings before the Boards of Appeal shall apply, unless New Rule otherwise provided. Rule 115, paragraph 1, second sentence, Rule 118, paragraph 2, first sentence, and Rule 132, paragraph 2, Article 112a – Petitions for review shall not apply. The Enlarged Board of Appeal may specify a Rule 115 (1) – Parties given two months period deviating from Rule 4, paragraph 1, first sentence. notice of oral proceedings

(2) The Enlarged Board of Appeal (a) consisting of two legally qualified members and one technically qualified member shall examine all petitions for Rule 132 (2) – Other time limits at least review and shall reject those which are clearly inadmissible two months or unallowable; such decision shall require unanimity; Rule 4 (1) – At least one month’s notice (b) consisting of four legally qualified members and one required for use of language other than language of proceedings technically qualified member shall decide on any petition not rejected under subparagraph (a).

Rule 118 (2) – Parties given two months notice of summons to give evidence

(3) The Enlarged Board of Appeal composed according to paragraph 2 (a) shall decide without the involvement of other parties and on the basis of the petition.

Rule 110 Reimbursement of the fee for petitions for review The Enlarged Board of Appeal shall order the reimbursement of the fee for a petition for review if the proceedings before the Boards of Appeal are re-opened.

Other Relevant Rules Rule 4 Rule 6 Rule 12 Rule 35 Rule 41

Language in oral proceedings Filing of translations and reduction of fees Presidium of the Boards of Appeal General provisions Request for grant 132

See Article 14, page 7 See Article 14, page 8 See Article 21, page 15 See Article 75, page 50 See Article 78, page 56

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Part VI: Appeals Procedure Rule 42 Rule 43 Rule 46 Rule 48 Rule 49

Content of the description Form and content of claims Form of the drawings Prohibited matter General provisions governing the presentation of the application documents Rule 50 Documents filed subsequently Rule 51 Payment of renewal fees Rule 115 Summons to oral proceedings Rule 118 Summons to give evidence before the European Patent Office Rule 132 Periods specified by the European Patent Office Rule 136 Re-establishment of rights

Article 112a See Article 78, page 57 See Article 84, page 75 See Article 78, page 58 See Article 78, page 59 See Article 78, page 59 See Article 94, page 98 See Article 86, page 79 See Article 116, page 138 See Article 117, page 140 See Article 120, page 146 See Article 122, page 151

Comment: Article 112a provides for limited judicial review of Board of Appeal decisions where a fundamental procedural defect or criminal act is alleged to have occurred. Such review by the Enlarged Board of Appeal is intended to remedy intolerable deficiencies occurring in individual appeal proceedings. This overcomes the legislative limitation identified in G1/97, in which the Enlarged Board of Appeal held that the EPC provided no means for reviewing a final decision of a Board of Appeal.

The grounds for a petition for review by the Enlarged Board are set out in Article 112a (2) and Rule 104 EPC as follows: • involvement of a Board of Appeal member in a decision in which the Board member has a personal interest or where the Board member previously acted as a representative or was involved in the decision at first instance (Article 112a (2)(a) EPC); • participation of an excluded Board member or a non-Board member in a Board of Appeal decision (Article 112a (2)(a) and (b) EPC); • a fundamental violation of the right of a party to comment on grounds or evidence forming the basis of a decision by a Board of Appeal (Article 112a (2)(c) EPC); • failure to hold oral proceedings when requested by a party (Article 112a (2)(d) and Rule 104 (a) EPC); • failure to decide on a relevant request (Article 112a (2)(d) and Rule 104 (b) EPC); or • a criminal act may have had an impact on a Board of Appeal decision (Article 112a (2)(e) EPC).

Other than where a criminal act has occurred, a petition for review is only admissible if an objection to the defect was raised during the appeal proceedings but rejected by the Board of Appeal, unless it was not possible for such an objection to be raised (Rule 106 EPC).

Article 112a (4) EPC sets the time limit for filing a petition for review as two months from the date of notification of the decision. This applies in all cases except those based on a claim that a criminal act has occurred. For the latter, the time limit is two months from the date on which a court establishes that a criminal act took place, regardless whether a conviction results (Rule 105 EPC), subject to an absolute limit of five years from the date of notification of the decision being challenged. These time limits cannot be extended using further processing (Article 121 (4) EPC). In the event that the deadline for filing a petition for review is missed despite all due care having been taken, re-establishment of rights under Article 122 EPC is possible. However, an application for re-establishment of

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Article 112a

A Guide to the EPC 2000

rights must be filed within two months of the missed deadline (Rule 136 (1) EPC).

A petition for review is only considered filed when the petition fee has been paid (Article 112a (4) EPC). This fee is currently €2,880 (Article 2 (11a) of the Rules Relating to Fees). The fee is reduced by 20% for nationals or residents of, and persons with a principal place of business in, a Contracting State having an official language other than English, French or German who initially file a petition for review in that language (Rule 6 (3) EPC and Article 14 (1) of the Rules Relating to Fees). If a petition is filed in a language other than English, French or German, a translation into one of those languages must be filed within a month or before the end of the two-month period for filing a petition for review, whichever is later (Article 14 (4) and Rule 6 (2) EPC).

Unlike an appeal against a decision at first instance, a petition for review does not cause the Board of Appeal’s decision to be suspended (Article 112a (3) EPC). Rather, the decision remains in force and only ceases to have effect if the Enlarged Board of Appeal decides to allow the petition for review (Rule 108 (3) EPC).

Rule 107 EPC provides that a petition for review must contain the name and address of the petitioner; an indication of the decision to be reviewed; a statement of the grounds on which the petition is based; and an indication of the facts, evidence and arguments that support those grounds. Formal compliance is checked by a three-member board consisting of two legally qualified members and one technically qualified member.

Decisions to reject a petition by the three-member board must be unanimous (Rule 109 (2)(a) EPC).

If a petitioner is not a party adversely affected by the challenged decision, or if he fails to state a suitable basis for review or fails to pay the petition fee, the petition is rejected unless it is amended or the petition fee is paid within the usual term for filing a petition for review (Rule 108 (1) EPC).

If a petition does not include the petitioner’s name and address in the correct form, the petitioner is given an opportunity to remedy the deficiency. Failure to correct in due time when requested results in the petition for review being rejected as inadmissible (Rule 108 (2) EPC).

If the petition is formally allowable, its substance is considered by a five-member board consisting of four legally qualified members and one technically qualified member (Rule 109 (2)(b) EPC). The board may issue a summons for oral proceedings and/or a summons to give evidence. When doing so the board is not required to provide the usual two months notice of the date of any hearing (Rule 109 (1) EPC).

If the Enlarged Board allows the petition, the Board of Appeal decision is set aside and proceedings are re-opened, if necessary with members of the earlier Board of Appeal having been replaced (Rule 108 (3) EPC). If the Enlarged Board orders proceedings to be re-opened, the fee for the petition for review is reimbursed (Rule 110 EPC). At the same time, if any renewal fees have fallen due since the original decision of the Board of Appeal, those fees become payable (Rule 51 (5) EPC).

If a patent or application is restored as a result of a successful review, third parties who have used or made good faith preparations to use the claimed invention in the period between the original Board of Appeal decision and the re-opening of proceedings following the petition for review can continue such use without having to make any payment to the patent proprietor (Article 112a (6) EPC).

Case law relating to petitions to review may be found in the Case Law of the Boards of Appeal of the European Patent Office, section IV - E.9.2, pages 1064-1083.

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Part VII: Common Provisions

Article 113

PART VII COMMON PROVISIONS Chapter I Common provisions governing procedure

Article 113 Right to be heard and basis of decisions (1) The decisions of the European Patent Office may only be based Fundamental violation of Article on grounds or evidence on which the parties concerned have had an 113 by Board of Appeal is ground for opportunity to present their comments. filing petition for review – Article (2) The European Patent Office shall examine, and decide upon, the 112a (2)(c) European patent application or the European patent only in the text submitted to it, or agreed, by the applicant or the proprietor of the patent.

Related Rules Rule 111 Form of decisions

Previously Rule 68

(1) Where oral proceedings are held before the European Patent Office, the decision may be given orally. The decision shall subsequently be put in writing and notified to the parties.

(2) Decisions of the European Patent Office which are open to appeal shall be reasoned and shall be accompanied by a communication pointing out the possibility of appeal and drawing the attention of the parties to Articles 106 to 108, the text of which shall be attached.

The parties may not invoke the omission of the communication.

Rule 112 Noting of loss of rights

Article 106 – Decisions subject to appeal Article 107 – Persons entitled to appeal Article 108 – Time limits and form of appeal

Previously Rule 69

(1) If the European Patent Office notes that a loss of rights has occurred, without any decision concerning the refusal of the European patent application or the grant, revocation or maintenance of the European patent, or the taking of evidence, it shall communicate this to the party concerned.

(2) If the party concerned considers that the finding of the European Patent Office is inaccurate, it may, within two months of the communication under paragraph 1, apply for a decision on the matter. The European Patent Office shall take such decision only if it does not share the opinion of the party requesting it; otherwise, it shall inform that party.

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Time limit cannot be extended using further processing – Rule 135 (2) Rule 112 (2) also applies to withdrawal of designated states in Euro-PCT applications – Rule 160

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Articles 113-114

A Guide to the EPC 2000 Rule 113 Signature, name, seal

Previously Rule 70

(1) Any decisions, summonses, notices and communications from the European Patent Office shall be signed by, and state the name of, the employee responsible.

(2) Where a document referred to in paragraph 1 is produced by the employee responsible using a computer, a seal may replace the signature. Where the document is produced automatically by a computer, the employee’s name may also be dispensed with. The same shall apply to pre-printed notices and communications.

Other Relevant Rules See Article 121, page 148 Rule 135 Further processing Rule 160 Consequences of non-fulfilment See Article 153, page 183 of certain requirements

Comment: Article 113 EPC restricts the EPO’s decision-making power to decisions based on grounds and evidence on which parties have been given an opportunity to comment.

Where a Board of Appeal violates this fundamental right to be heard, a party adversely affected may file a petition for review (see commentary on Article 112a).

In G4/92, the Enlarged Board of Appeal distinguished between mere new arguments on the one hand, and new grounds and evidence on the other. It held that no breach of Article 113 EPC occurs if a decision at oral proceedings is based on new arguments presented in a party’s absence, but that a decision would not be permitted where based on new facts or evidence raised for the first time at such a hearing.

Case law on the parties’ right to be heard may be found in the Case Law of the Boards of Appeal of the European Patent Office, section VI – B, pages 438-453.

Case law on decisions in general may be found in section VI – J, pages 590-625.

The content of decisions and the requirement that they be based on facts and evidence on which the parties have had an opportunity to comment is also discussed in the Guidelines for Examination in the European Patent Office, Part E, Chapter IX, section 1.

Article 114 Examination by the European Patent Office of its own motion (1) In proceedings before it, the European Patent Office shall examine the facts of its own motion; it shall not be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

(2) The European Patent Office may disregard facts or evidence which are not submitted in due time by the parties concerned.

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Part VII: Common Provisions

Articles 114-115

Comment: The power of the European Patent Office to examine matters of its own motion including its powers to consider or disregard late filed evidence is discussed in the Guidelines for Examination in the European Patent Office, Part E, Chapter V. Case law relating to late submissions and the EPO’s power to disregard them may be found in the Case Law of the Boards of Appeal of the European Patent Office, section VII – C.1, pages 700-718.

Article 115 Observations by third parties In proceedings before the European Patent Office, following the publication of the European patent application, any third party may, in accordance with the Implementing Regulations, present observations concerning the patentability of the invention to which the application or patent relates. That person shall not be a party to the proceedings.

Third-party observations must be in English, French or German – Rule 114 (1) Third-party observations communicated to applicant for comment – Rule 114 (2)

Related Rule Rule 114 Observations by third parties

Previously elements of Article 115

(1) Any observations by a third party shall be filed in writing in an Rule 3 (3) – Third parties can file official language of the European Patent Office and state the grounds documentary evidence in non-EPO languages, but EPO may disregard if on which they are based. Rule 3, paragraph 3, shall apply.

translation not provided upon

(2) Any such observations shall be communicated to the applicant request within term set by EPO for or proprietor of the patent, who may comment on them.

Other Relevant Rules Rule 3

Language in written proceedings

See Article 14, page 6

Comment: Article 115 and Rule 114 EPC establish the procedures for filing third-party observations at the EPO. Since requests for limitation are examined only for clarity and added matter rather than substantive patentability (Rule 95 (2) EPC; see commentary under Article 105b EPC), it is not possible for third parties to file observations during limitation proceedings. Under Article 115 EPC, such observations may only concern substantive patentability.

A decision of the President dated 10 May 2011, permits third-party observations to be filed using an online form available on the EPO website.

Third-party observations filed during examination are discussed in the Guidelines for Examination in the European Patent Office, Part C, Chapter VII, section 5 and generally in Part E, Chapter V, section 3.

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Article 116

A Guide to the EPC 2000 Article 116 Oral proceedings

(1) Oral proceedings shall take place either at the instance of the European Patent Office if it considers this to be expedient or at the Summons issued at least two request of any party to the proceedings. However, the European Patent Office may reject a request for further oral proceedings before months before hearing – Rule 115 Preparation of oral proceedings – the same department where the parties and the subject of the Rule 116 proceedings are the same.

Languages in oral proceedings – Rule 4

Minutes of oral proceedings – Rule 124

(2) Nevertheless, oral proceedings shall take place before the Receiving Section at the request of the applicant only where the Failure of Board of Appeal to hold Receiving Section considers this to be expedient or where it intends oral proceedings when requested by a party is ground for filing petition to refuse the European patent application. for review – Article 112a (2)(c)

(3) Oral proceedings before the Receiving Section, the Examining Divisions and the Legal Division shall not be public.

(4) Oral proceedings, including delivery of the decision, shall be public, as regards the Boards of Appeal and the Enlarged Board of Appeal, after publication of the European patent application, and also before the Opposition Divisions, in so far as the department before which the proceedings are taking place does not decide otherwise in cases where admission of the public could have serious and unjustified disadvantages, in particular for a party to the proceedings.

Related Rules Previously Rule 71

Rule 115 Summons to oral proceedings

(1) The parties shall be summoned to oral proceedings under Article 116, drawing their attention to paragraph 2 of this Rule. At least two months’ notice of the summons shall be given, unless the parties Two-month minimum notice period agree to a shorter period.

Article 116 – Oral proceedings to be held if EPO considers expedient or if requested by any party

does not apply to oral proceedings following petition for review – Rule 109 (1)

Previously Rule 71a

(2) If a party duly summoned to oral proceedings before the European Patent Office does not appear as summoned, the proceedings may continue without that party.

Rule 116 Preparation of oral proceedings

(1) When issuing the summons, the European Patent Office shall draw attention to the points which in its opinion need to be discussed for the purposes of the decision to be taken. At the same time a final date for making written submissions in preparation for the oral proceedings Rule 132 – Time limits to be at least shall be fixed. Rule 132 shall not apply. New facts and evidence two months presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed.

(2) If the applicant or patent proprietor has been notified of the grounds prejudicing the grant or maintenance of the patent, he may be invited to submit, by the date specified in paragraph 1, second

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Part VII: Common Provisions

Articles 116-117

sentence, documents which meet the requirements of the Convention.

Paragraph 1, third and fourth sentences, shall apply mutatis mutandis.

Rule 124 Minutes of oral proceedings and of taking of evidence

Previously Rule 76

(1) Minutes of oral proceedings and of the taking of evidence shall be drawn up, containing the essentials of the oral proceedings or of the taking of evidence, the relevant statements made by the parties, the testimony of the parties, witnesses or experts and the result of any inspection.

(2) The minutes of the testimony of a witness, expert or party shall be read out, submitted to him, so that he may examine them or, where they are recorded by technical means, played back to him, unless he waives this right. It shall be noted in the minutes that this formality has been carried out and that the person who gave the testimony approved the minutes. If his approval is not given, his objections shall be noted. It is not necessary to play back the minutes or to obtain approval of them if the testimony has been recorded verbatim and directly using technical means.

(3) The minutes shall be signed by the employee responsible for drawing them up and by the employee who conducted the oral proceedings or taking of evidence.

(4) The parties shall be provided with a copy of the minutes.

Other Relevant Rules See Article 14, page 7 Rule 4 Language in oral proceedings See Article 112a, page 132 Rule 109 Procedure in dealing with petitions for review Rule 132 Periods specified by the European See Article 120, page 146 Patent Office

Comment: Case law relating to oral proceedings may be found in the Case Law of the Boards of Appeal of the European Patent Office, section VI – C, pages 453-477. Oral proceedings are also discussed in the Guidelines for Examination in the European Patent Office, Part E, Chapter II. Article 117 Means and taking of evidence (1) In proceedings before the European Patent Office the means of giving or obtaining evidence shall include the following: (a) hearing the parties; (b) requests for information; (c) production of documents; (d) hearing witnesses; 139

Documentary evidence in nonEPO languages – Rule 3 (3) Decision on taking of evidence

by EPO – Rule 117 Summons to give evidence – Rule 118 Examination of evidence by EPO – Rule 119

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Article 117

A Guide to the EPC 2000

Hearing of party, witness or expert by competent national court – Rule 120

(e) opinions by experts; (f) inspection; (g) sworn statements in writing.

Commissioning of experts – Rule 121 Costs of taking evidence – Rule 122 Conservation of evidence – Rule 123

(2) The procedure for taking such evidence shall be laid down in the Implementing Regulations.

Minutes of evidence given orally – Rule 124

Previously Rule 72 (1)

Related Rules Rule 117 Decision on taking of evidence Where the European Patent Office considers it necessary to hear a party, witness or expert, or to carry out an inspection, it shall take a decision to this end, setting out the investigation which it intends to carry out, relevant facts to be proved and the date, time and place of the investigation. If the hearing of a witness or expert is requested by a party, the decision shall specify the period within which the requester must make known the name and address of any witness or expert concerned.

Previously Rule 72 (2)

Rule 118 Summons to give evidence before the European Patent Office (1) A summons to give evidence before the European Patent Office shall be issued to the parties, witnesses or experts concerned.

Time periods set by EPO must be at least two months and may be extended on request – Rule 132 (2)

(2) At least two months’ notice of a summons issued to a party, witness or expert to testify shall be given, unless they agree to a shorter period. The summons shall contain: (a) an extract from the decision under Rule 117, indicating the date, time and place of the investigation ordered and stating the facts in respect of which parties, witnesses or experts are to be heard; (b) the names of the parties and particulars of the rights which the witnesses or experts may invoke under Rule 122, paragraphs 2 to 4; (c) an indication that the party, witness or expert may request to be heard by a competent court of his country of residence under Rule 120, and an invitation to inform the European Patent Office, within a period to be specified, whether he is prepared to appear before it.

Previously Article 117 (2) and Rules 72 (3) and (4)

Rule 119 Examination of evidence before the European Patent Office

Two-month minimum notice period does not apply to summons to give evidence following petition for review – Rule 109 (1) Rule 117 – Decision on taking of evidence by EPO Rule 122 (2) – (4) Costs for taking evidence from witnesses and experts Rule 120 – Hearing of party, witness or expert by competent national court

(1) The Examining Division, Opposition Division or Board of Appeal may commission one of its members to examine the evidence adduced.

(2) Before a party, witness or expert may be heard, he shall be informed that the European Patent Office may request the competent court in the country of residence of the person concerned to reexamine his testimony under oath or in an equally binding form.

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Part VII: Common Provisions

Article 117

(3) The parties may attend an investigation and may put relevant questions to the testifying party, witness or expert.

Rule 120 Hearing by a competent national court

Previously Articles 117 (4) – (6)

(1) A party, witness or expert who is summoned before the European Patent Office may request the latter to allow him to be heard by a competent court in his country of residence. If this is requested, or if no reply is received within the period specified in the summons, the Article 131 (2) – National European Patent Office may, in accordance with Article 131, paragraph authorities must assist EPO on 2, request the competent court to hear the person concerned. request (2) If a party, witness or expert has been heard by the European Patent Office, the latter may, if it considers it advisable for the testimony to be given under oath or in an equally binding form, issue a request under Article 131, paragraph 2, to the competent court in the country of residence of the person concerned to re-examine his testimony under such conditions.

(3) When the European Patent Office requests a competent court to take evidence, it may request the court to take the evidence under oath or in an equally binding form and to permit a member of the department concerned to attend the hearing and question the party, witness or expert, either through the intermediary of the court or directly.

Rule 121 Commissioning of experts

Previously Rule 73

(1) The European Patent Office shall decide in what form the opinion of an expert whom it appoints shall be submitted.

(2) The terms of reference of the expert shall include: (a) a precise description of his task; (b) the period specified for the submission of his opinion; (c) the names of the parties to the proceedings; (d) particulars of the rights which he may invoke under Rule 122, Rule 122 (2) – (4) – Reimbursement paragraphs 2 to 4. of costs for taking evidence from (3) A copy of any written opinion shall be submitted to the parties.

witnesses and experts

(4) The parties may object to an expert. The department of the European Patent Office concerned shall decide on the objection.

Rule 122 Costs of taking of evidence (1) The taking of evidence by the European Patent Office may be made conditional upon deposit with it, by the party requesting the evidence to be taken, of an amount to be fixed by reference to an estimate of the costs.

(2) Witnesses or experts who are summoned by and appear before the European Patent Office shall be entitled to appropriate reimbursement of expenses for travel and subsistence. An advance

141

Previously Rule 74

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Article 117

A Guide to the EPC 2000 for these expenses may be granted to them. This shall also apply to persons who appear before the European Patent Office without being summoned by it and are heard as witnesses or experts.

(3) Witnesses entitled to reimbursement under paragraph 2 shall also be entitled to appropriate compensation for loss of earnings, and experts to fees for their work. These payments shall be made to the witnesses and experts after they have fulfilled their duties or tasks.

(4) The Administrative Council shall lay down the details implementing paragraphs 2 and 3. Any amounts due under these provisions shall be paid by the European Patent Office.

Previously Rule 75

Rule 123 Conservation of evidence (1) On request, the European Patent Office may, without delay, take measures to conserve evidence of facts liable to affect a decision which it may be called upon to take with regard to a European patent application or a European patent, where there is reason to fear that it might subsequently become more difficult or even impossible to take evidence. The date on which the measures are to be taken shall be communicated to the applicant for or proprietor of the patent in sufficient time to allow him to attend. He may ask relevant questions.

Rule 41 (2)(c) – Name, address, nationality and state of residence or principal place of business

Fee for conservation of evidence is €75 – RRF Article 2 (17)

(2) The request shall contain: (a) particulars of the requester as provided in Rule 41, paragraph 2 (c); (b) sufficient identification of the European patent application or European patent in question; (c) an indication of the facts in respect of which evidence is to be taken; (d) particulars of the means of giving or obtaining evidence; (e) a statement establishing a prima facie case for fearing that it might subsequently become more difficult or impossible to take evidence.

(3) The request shall not be deemed to have been filed until the prescribed fee has been paid.

(4) The decision on the request and any resulting taking of evidence shall be incumbent upon the department of the European Patent Office which would have to take the decision liable to be affected by the facts to be established. The provisions with regard to the taking of evidence in proceedings before the European Patent Office shall apply.

Other Relevant Rules Rule 3 Language in written proceedings See Article 14, page 6 See Article 78, page 56 Rule 41 Request for grant See Article 112a, page 132 Rule 109 Procedure in dealing with petitions for review Rule 124 Minutes of oral proceedings and See Article 116, page 139 of taking of evidence See Article 120, page 146 Rule 132 Periods specified by the EPO 142

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Part VII: Common Provisions

Articles 117-119

Comment: Case law relating to the rules of evidence in proceedings before the EPO may be found in the Case Law of the Boards of Appeal of the European Patent Office, section VI – H, pages 545-571. The taking and conservation of evidence is discussed in the Guidelines for Examination in the European Patent Office, Part E, Chapter III. Article 118 Unity of the European patent application or European patent Where the applicants for or proprietors of a European patent are not the same in respect of different designated Contracting States, they shall be regarded as joint applicants or proprietors for the purposes of proceedings before the European Patent Office. The unity of the application or patent in these proceedings shall not be affected; in particular the text of the application or patent shall be uniform for all designated Contracting States, unless this Convention provides otherwise.

Article 119 Notification

General provisions on notification – Rule 125

Decisions, summonses, notices and communications shall be notified by the European Patent Office of its own motion in accordance with the Implementing Regulations. Notification may, where exceptional circumstances so require, be effected through the intermediary of the central industrial property offices of the Contracting States.

Notification by post – Rule 126 Notification by technical means – Rule 127 Notification by hand delivery – Rule 128 Public notification – Rule 129 Notification to representatives – Rule 130

Related Rules Rule 125 General provisions

Rules 125 (1) – (3) previously Rule 77 (1) In proceedings before the European Patent Office, any notification Rule 125 (4) previously Rule 82 to be made shall take the form of the original document, a copy thereof certified by or bearing the seal of the European Patent Office, or a computer printout bearing such seal. Copies of documents emanating from the parties themselves shall not require such certification.

(2) Notification shall be made: (a) by post in accordance with Rule 126; (b) by technical means of communication in accordance with Rule 127; (c) by delivery on the premises of the European Patent Office in accordance with Rule 128; or (d) by public notice in accordance with Rule 129.

(3) Notification through the central industrial property office of a Contracting State shall be made in accordance with the law applicable to that office in national proceedings.

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Rule 126 – Notification by post Rule 127 – Notification by technical means Rule 128 – Notification by hand delivery Rule 129 – Public notification

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Article 119

A Guide to the EPC 2000 (4) Where a document has reached the addressee, if the European Patent Office is unable to prove that it has been duly notified, or if provisions relating to its notification have not been observed, the document shall be deemed to have been notified on the date established by the European Patent Office as the date of receipt.

Rule 126 Notification by post

Previously Rule 78

(1) Decisions incurring a period for appeal or a petition for review, summonses and other such documents as determined by the President of the European Patent Office shall be notified by registered letter with advice of delivery. All other notifications by post shall be by registered letter.

(2) Where notification is effected by registered letter, whether or not with advice of delivery, such letter shall be deemed to be delivered to the addressee on the tenth day following its posting, unless it has failed to reach the addressee or has reached him at a later date; in the event of any dispute, it shall be incumbent on the European Patent Office to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be.

(3) Notification by registered letter, whether or not with advice of delivery, shall be deemed to have been effected even if acceptance of the letter has been refused.

(4) To the extent that notification by post is not covered by paragraphs 1 to 3, the law of the State in which the notification is made shall apply.

Rule 127 Notification by technical means of communication Notification may be effected by such technical means of communication as are determined by the President of the European Patent Office and under the conditions laid down by him.

Previously Rule 79

Rule 128 Notification by delivery by hand Notification may be effected on the premises of the European Patent Office by delivery by hand of the document to the addressee, who shall on delivery acknowledge its receipt. Notification shall be deemed to have been effected even if the addressee refuses to accept the document or to acknowledge receipt thereof.

Rule 129 Public notification

Previously Rule 80

Rule 126 (1) – Notification by registered letter

(1) If the address of the addressee cannot be established, or if notification in accordance with Rule 126, paragraph 1, has proved to be impossible even after a second attempt, notification shall be effected by public notice.

(2) The President of the European Patent Office shall determine how the public notice is to be given and the beginning of the period of one month on expiry of which the document shall be deemed to have been notified.

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Part VII: Common Provisions Rule 130 Notification to representatives

Articles 119-120 Previously Rule 81

(1) If a representative has been appointed, notifications shall be addressed to him.

(2) If several representatives have been appointed for a single party, notification to any one of them shall be sufficient.

(3) If several parties have a common representative, notification to the common representative shall be sufficient.

Comment: Case law on notification may be found in the Case Law of the Boards of Appeal of the European Patent Office, section VI – K.5, pages 635-638. Communications and notifications in general are also discussed in the Guidelines for Examination in the European Patent Office, Part E, Chapter I.

Article 120 Time limits

Calculation of time limits – Rule 131

The Implementing Regulations shall specify: (a) the time limits which are to be observed in proceedings before the European Patent Office and are not fixed by this Convention; (b) the manner of computation of time limits and the conditions under which time limits may be extended; (c) the minima and maxima for time limits to be determined by the European Patent Office.

Time limits specified by EPO – Rule 132 Late receipt of documents – Rule 133 Automatic extension of time limits – Rule 134 Further processing – Article 121 Re-establishment of rights – Article 122

Related Rules Rule 131 Calculation of periods (1) Periods shall be laid down in terms of full years, months, weeks or days.

(2) Computation shall start on the day following the day on which the relevant event occurred, the event being either a procedural step or the expiry of another period. Where the procedural step is a notification, the relevant event shall be the receipt of the document notified, unless otherwise provided.

(3) When a period is expressed as one year or a certain number of years, it shall expire in the relevant subsequent year in the month having the same name and on the day having the same number as the month and the day on which the said event occurred; if the relevant subsequent month has no day with the same number, the period shall expire on the last day of that month.

(4) When a period is expressed as one month or a certain number of months, it shall expire in the relevant subsequent month on the day which has the same number as the day on which the said event occurred; 145

Previously Rule 83

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A Guide to the EPC 2000 if the relevant subsequent month has no day with the same number, the period shall expire on the last day of that month.

(5) When a period is expressed as one week or a certain number of weeks, it shall expire in the relevant subsequent week on the day having the same name as the day on which the said event occurred.

Previously Rule 84

Rule 132 Periods specified by the European Patent Office

(1) Where the Convention or these Implementing Regulations refer to “a period to be specified”, this period shall be specified by the Two-month minimum notice period European Patent Office. does not apply to time limits in petition for review proceedings – Rule 109 (1)

(2) Unless otherwise provided, a period specified by the European Patent Office shall be neither less than two months nor more than Two-month minimum notice period four months; in certain circumstances it may be up to six months. In does not apply to deadline for written special cases, the period may be extended upon request, presented submissions in advance of hearing – before the expiry of such period.

Rule 116 (1)

Previously Rule 84a

Rule 133 Late receipt of documents (1) A document received late at the European Patent Office shall be deemed to have been received in due time if it was posted, or delivered to a recognised delivery service, in due time before expiry of the period in accordance with the conditions laid down by the President of the European Patent Office, unless the document was received later than three months after expiry of the period.

Article 75 (1)(b) and (2)(b) – Filing of European patent applications with national offices

(2) Paragraph 1 shall apply mutatis mutandis to any period where transactions are carried out with the competent authority in accordance with Article 75, paragraphs 1 (b) or 2 (b).

Previously Rule 85

Rule 134 Extension of periods (1) If a period expires on a day on which one of the filing offices of the

Rule 35 (1) – EPO offices in Munich, European Patent Office under Rule 35, paragraph 1, is not open for The Hague and Berlin

receipt of documents or on which, for reasons other than those referred to in paragraph 2, mail is not delivered there, the period shall extend to the first day thereafter on which all the filing offices are open for receipt of documents and on which mail is delivered. The first sentence shall apply mutatis mutandis if documents filed by one of the technical Rule 2 (1) – Methods of filing means of communication permitted by the President of the European documents Patent Office under Rule 2, paragraph 1, cannot be received.

(2) If a period expires on a day on which there is a general dislocation in the delivery or transmission of mail in a Contracting State, the period shall extend to the first day following the end of the interval of dislocation for parties which are resident in the State concerned or have appointed representatives with a place of business in that State.

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representatives. This paragraph shall apply mutatis mutandis to the Rule 37 (2) – Period allowed for national offices to forward European period referred to in Rule 37, paragraph 2. patent applications to EPO

(3) Paragraphs 1 and 2 shall apply mutatis mutandis where acts are performed with the competent authority in accordance with Article Article 75 (1)(b) and (2)(b) – Filing 75, paragraphs 1 (b) or 2 (b).

of European patent applications with

(4) The date of commencement and the end of any dislocation under national offices paragraph 2 shall be published by the European Patent Office.

(5) Without prejudice to paragraphs 1 to 4, a party concerned may produce evidence that on any of the ten days preceding the day of expiry of a period the delivery or transmission of mail was dislocated due to an exceptional occurrence such as a natural disaster, war, civil disorder, a general breakdown in any of the technical means of communication permitted by the President of the European Patent Office under Rule 2, paragraph 1, or other like reasons affecting the locality where the party or his representative resides or has his place of business. If the evidence produced satisfies the European Patent Office, a document received late shall be deemed to have been received in due time, provided that the mailing or the transmission was effected at the latest on the fifth day after the end of the dislocation.

Other Relevant Rules Rule 2

Filing of and formal See Article 94, page 98 requirements for documents Rule 35 General provisions See Article 75, page 50 Rule 37 Forwarding of European patent See Article 77, page 54 applications Rule 109 Procedure in dealing with See Article 112a, page 132 petitions for review Rule 116 Preparation of oral proceedings See Article 116, page 138

Comment: A list of the dates on which the filing offices of the EPO are closed is published annually in the Official Journal. The Official Journal also publishes a notice whenever a general interruption in the delivery of mail results in deadlines being extended under Rule 134 EPC. A decision of the President dated 14 July 2007 recognises late delivery by the following as equivalent to late delivery by national post services for the purposes of Rule 133 EPC: Chronopost, DHL, Federal Express, flexpress, TNT, SkyNet and UPS. Case law relating to time limits may be found in the Case Law of the Boards of Appeal of the European Patent Office, section VI – D, pages 478-490. Time limits are also discussed in the Guidelines for Examination in the European Patent Office, Part E, Chapter VII, section 1.

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Article 121

A Guide to the EPC 2000

Article 121 Further processing of the European patent application Notification of loss of rights without decision – Rule 112 (1) Further processing – Rule 135

(1) If an applicant fails to observe a time limit vis à vis the European Patent Office, he may request further processing of the European patent application.

(2) The EPO shall grant the request, provided that the requirements laid down in the Implementing Regulations are Article 108 – Two-month period for filing met. Otherwise, it shall reject the request.

Article 87 (1) – 12-month priority period

notice of appeal and four-month period for (3) If the request is granted, the legal consequences of the filing grounds of appeal

failure to observe the time limit shall be deemed not to have

Article 112a (4) – Two-month period for filing ensued. petition for review

(4) Further processing shall be ruled out in respect of the time limits in Article 87, paragraph 1, Article 108 and Article 112a, paragraph 4, as well as the time limits for requesting further Article 121 – Further processing processing or re-establishment of rights. The Implementing Rule 6 (1) – Two-month period for filing Regulations may Rule out further processing for other time translation of new application limits.

Previously Articles 121 (2) and (3)

Rule 16 (1)(a) – Three-month period for filing Related Rule replacement application, taking over prosecution of existing application or Rule 135 requesting that existing application be Further processing refused following court decision on (1) Further processing under Article 121, paragraph 1, shall be entitlement Rule 31 (2) – Time limit for submitting requested by payment of the prescribed fee within two months of the communication concerning either the failure to biological material Rule 36 (2) – Two-month period for filing a observe a time limit or a loss of rights. The omitted act shall be translation of a divisional completed within the period for making the request.

Rule 40 (3) – Two-month time limit for filing (2) Further processing shall be ruled out in respect of the certified copy and translation in support of periods referred to in Article 121, paragraph 4, and of the application based on reference

periods under Rule 6, paragraph 1, Rule 16, paragraph 1(a),

Rule 51 (2) – (5) – Time limits for paying Rule 31,paragraph 2, Rule 36, paragraph 2, Rule 40, paragraph renewal fees

3, Rule 51, paragraphs 2 to 5, Rule 52, paragraphs 2 and 3,

Rule 52 (2) – Sixteen-month time limit for Rules 55, 56, 58, 59, 62a, 63, 64, Rule 112, paragraph 2, and Rule adding a priority claim

164, paragraphs 1 and 2.

Rule 52 (3) – Sixteen-month time limit for correcting a priority claim (3) The department competent to decide on the omitted act Rules 55, 56, 58 – Two-month time limit for shall decide on the request for further processing. remedying deficiencies in application

Other Relevant Rules

Rule 59 – Time limit for remedying deficiencies in priority claim Rule 6 Rule 62a – Two-month time limit for electing independent claims to be searched

Filing of translations and reduction of fees Rule 16 Procedure under Article 61, Rule 63 – Two-month time limit for submitting paragraph 1 statement of subject-matter to be searched Rule 31 Deposit of biological material Rule 64 – Time limit for paying extra search Rule 36 European divisional fees following partial search applications Rule 112 (2) – Two-month period for requesting decision following notification of Rule 40 Date of filing loss of rights Rule 164 (1) & (2) – Two-month time limits for paying extra search fees for a Euro PCT

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See Article 14, page 8 See Article 61, page 39 See Article 83, page 70 See Article 76, page 52 See Article 80, page 64

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Other Relevant Rules (continued) Rule 51 Rule 55 Rule 56 Rule 58 Rule 59

Payment of renewal fees Examination on filing Missing parts of the description or missing drawings Correction of deficiencies in the application documents Deficiencies in claiming priority

See Article 86, page 79 See Article 90, page 87 See Article 90, page 87 See Article 90, page 89 See Article 90, page 89

Rule 62a Applications containing a plurality of independent claims

See Article 92, page 93

Rule 63 Incomplete search

See Article 92, page 93

Rule 64 European search report where the invention lacks unity

See Article 92, page 94

Rule 112 Noting of loss of rights

See Article 113, page 135

Comment: Following the changes made by the EPC 2000, further processing under Article 121 is the standard legal remedy whenever a deadline is missed during prosecution of a European patent application.

In contrast to the position under the old law, further processing may be used to extend the time limits for payment of filing, search and designation fees, as well as the national basic fee and the examination fee. It may also be used to extend the time limit for filing a request for examination. Further processing is not, however, available in post-grant proceedings such as limitation, opposition or revocation proceedings, since Article 121 (1) EPC expressly limits its use to time limits missed by an “applicant”.

Rule 135 (1) EPC provides that in order to obtain further processing, a fee must be paid and the omitted act must be completed within two months of notification of loss of rights or failure to observe a time limit. The fee is set by Article 2 (12) of the Rules Relating to Fees and is currently either €250 in the case of an omitted act or 50% of a relevant omitted fee. The sole exception is where further processing is sought in respect of the four-month deadline for filing claims translations or for the payment of grant and publication fees, in which case the fee for further processing is fixed at €250, regardless of the level of the publication and grant fees.

Article 121 (4) and Rule 135 (2) EPC exclude further processing in respect of the following time limits: • the 12-month priority period under Article 87 (1) EPC; • the time limits for filing a notice and grounds of appeal under Article 108 EPC; • the time limit in Article 112a (4) EPC for filing a petition for review; • the time limit for further processing itself; • the time limit for re-establishment of rights under Article 122 EPC; • the two-month period under Rule 6 (1) EPC for filing a translation of a new application not filed in English, French or German; • the three-month period under Rule 16 (1) EPC for filing a replacement application or taking over prosecution of an existing patent application following a court decision on entitlement; • the time limit under Rule 31 (2) EPC for depositing biological material; • the two-month period under Rule 36 (2) EPC for filing a translation of a

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divisional application not filed in English, French or German; • the two-month time limit under Rule 40 (3) EPC for filing a certified copy and translation in support of an application based on a reference to an earlier application; • the time limits under Rules 51 (2) – (5) EPC for paying renewal fees; • the 16 month time limits under Rules 52 (2) & (3) EPC for adding or correcting a declaration of priority; • the two-month time limits under Rules 55, 56 and 58 EPC for correcting formal deficiencies in documents forming a patent application and for dealing with missing drawings or sections of description; • the time limits under Rule 59 EPC for correcting deficiencies in priority claims; • the two-month time limit under Rule 62a EPC for electing independent claims to be searched if the Search Division considers that the application contains too many multiple independent claims; • the two-month time limit under Rule 63 EPC for providing the Search Division with a statement of the subject-matter to be searched when the Search Division considers the claims to be too unclear to search; • the time limit for paying extra search fees under Rule 64 EPC following a partial search; • the two-month period under Rule 112 (2) EPC for requesting a decision following notification of loss of rights; and • the two-month time limits for paying extra search fees under Rules 164 (1) & (2) EPC for Euro-PCT patent applications lacking unity.

Case law relating to further processing may be found in the Case Law of the Boards of Appeal of the European Patent Office, section VI – D.2, pages 484-485.

Further processing is also discussed in the Guidelines for Examination in the European Patent Office, Part E, Chapter VII, section 2.1.

Request must be made within two months of removal of cause of non-compliance and within one year of missed deadline. Reduced to two months in case of missed priority year or missed deadline for petition for review – Rule 136 (1)

Article 122 Re-establishment of rights

(1) An applicant for or proprietor of a European patent who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis à vis the European Patent Office shall have his rights re-established upon request if the non-observance of this time limit Request must state grounds, and has the direct consequence of causing the refusal of the European patent omitted act must be completed application or of a request, or the deeming of the application to have been within period for filing request – withdrawn, or the revocation of the European patent, or the loss of any Rule 136 (2) other right or means of redress.

Must pay renewal fees falling due (2) The European Patent Office shall grant the request, provided that the since lapse – Rule 51 (4)

conditions of paragraph 1 and any other requirements laid down in the

No re-establishment of rights if Implementing Regulations are met. Otherwise, it shall reject the further processing available – request.

Rule 136 (3)

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observe the time limit shall be deemed not to have ensued.

(4) Re-establishment of rights shall be ruled out in respect of the time limit for requesting re-establishment of rights. The Implementing Regulations may rule out re-establishment for other time limits.

(5) Any person who, in a designated Contracting State, has in good faith used or made effective and serious preparations for using an invention which is the subject of a published European patent application or a European patent in the period between the loss of rights referred to in paragraph 1 and publication in the European Patent Bulletin of the mention of re-establishment of those rights, may without payment continue such use in the course of his business or for the needs thereof.

(6) Nothing in this Articles hall limit the right of a Contracting State to grant re-establishment of rights in respect of time limits provided for in this Convention and to be observed vis à vis the authorities of such State.

Related Rule Rule 136 Re-establishment of rights (1) Any request for re-establishment of rights under Article 122, paragraph 1, shall be filed in writing within two months of the removal of the cause of non-compliance with the period, but at the latest within one year of expiry of the unobserved time limit. However, a request for reestablishment of rights in respect of any of the periods specified in Article 87, paragraph 1, and in Article 112a, paragraph 4, shall be filed within two months of expiry of that period. The request for re-establishment of rights shall not be deemed to have been filed until the prescribed fee has been paid.

(2) The request shall state the grounds on which it is based and shall set out the facts on which it relies. The omitted act shall be completed within the relevant period for filing the request according to paragraph 1.

(3) Re-establishment of rights shall be ruled out in respect of any period for which further processing under Article 121 is available and in respect of the period for requesting re-establishment of rights.

Previously Articles 122 (2) – (5) Article 122 (1) – Request for re-establishment of rights Article 87 (1) – Priority period lasts 12 months from first filing in Paris Convention or WTO country or other recognised patent office Article 112a (4) – Petition for review must be filed within two months of notification of decision Article 121 – Further processing

(4) The department competent to decide on the omitted act shall decide on the request for re-establishment of rights.

Other Relevant Rules Rule 51 Payment of renewal fees

See Article 86, page 79

Comment: As with further processing, the EPC 2000 also liberalised the scope of reestablishment of rights under Article 122.

Formerly, re-establishment of rights was ruled out in respect of deadlines for payment of the fees on a European patent application, as well as for the provision of priority details and the filing of a request for examination. That list of exclusions

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has now been deleted and under the EPC 2000 re-establishment of rights is available in appropriate cases. The amendment of Article 122 EPC also implicitly overruled the finding of the Enlarged Board of Appeal in G3/91 that the previous exclusions also applied to Euro-PCT applications.

In accordance with Rule 136 (1) EPC, any request for re-establishment of rights must be filed within two months of removal of the cause of non-compliance and at the latest within a year of the original missed deadline. This term is shortened to two months from expiry of the relevant period where rights were lost due to missing the end of the priority year set out in Article 87 (1) EPC or the deadline for filing a petition for review under Article 112a (4).

A request for re-establishment of rights must state the facts and grounds on which it is based (Rule 136 (2) EPC) and is only deemed to have been filed once the required fee is paid (Rule 136 (1) EPC). The fee for re-establishment of rights is currently €635 (Article 2 (13) of the Rules Relating to Fees).

Re-establishment of rights is ruled out in respect of any time period for which further processing is available (Rule 136 (3) EPC). However, re-establishment of rights is not ruled out in respect of the time limit for requesting further processing itself. Therefore, if a time limit is missed and despite all due care a request for further processing is not filed within two months of notification of loss of rights, rights can still be restored using the procedure under Article 122 EPC. Unlike Article 121 (1) EPC, which refers solely to acts of an “applicant”, Article 122 (1) EPC refers to an “applicant for or proprietor of a European patent”, which means that re-establishment of rights under Article 122 EPC is available in both pre-grant and post-grant proceedings. In G1/86, the Enlarged Board of Appeal held that on the basis of equality between the parties, re-establishment of rights in relation to the time limit for filing grounds of appeal applied equally to a proprietor and an opponent, even though this is not explicit from the wording of Article 122 EPC. Case law relating to re-establishment of rights under Article 122 EPC may be found in the Case Law of the Boards of Appeal of the European Patent Office, section VI – E, pages 490-533. Re-establishment of rights is also discussed in the Guidelines for Examination in the European Patent Office, Part E, Chapter VII, section 2.2.

Article 123 Amendments Correction of deficiencies in application documents – Rule 58 Amendment of European patent during opposition proceedings – Rule 79 (1) Amendment of European patent during opposition limited to amendments occasioned by grounds of opposition – Rule 80 Examination of opposition – Rule 81

(1) The European patent application or European patent may be amended in proceedings before the European Patent Office, in accordance with the Implementing Regulations. In any event, the applicant shall be given at least one opportunity to amend the application of his own volition.

(2) The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.

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(3) The European patent may not be amended in such a way as to Amendment of European patent application during prosecution – extend the protection it confers.

Rule 137 Different specifications in different Contracting States – Rule 138 Correction of errors – Rule 139

Related Rules Rule 137 Amendment of the European patent application

Previously Rule 86

(1) Before receiving the European search report, the applicant may not amend the description, claims or drawings of a European patent application unless otherwise provided.

(2) Together with any comments, corrections or amendments made in response to communications by the European Patent Office under Rule 70a, paragraph 1 or 2, or Rule 161, paragraph 1, the applicant may amend the description, claims and drawings of his own volition.

Rule 70a – Amendments made in response to the EESR Rule 161 – Amendments made on entry to regional phase in response to ISR or IPER drawn up by the EPO

(3) No further amendment may be made without the consent of the Amended claims included in application as published – Rule 68 (4) Examining Division.

(4) When filing any amendments referred to in paragraphs 1 to 3, the applicant shall identify them and indicate the basis for them in the application as filed. If the Examining Division notes a failure to meet either requirement, it may request the correction of this deficiency within a period of one month.

(5) Amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept. Nor may they relate to subject-matter not searched in accordance with Rule 62a or Rule 63.

Rule 62a – EPO restrict search if application contains more than one independent claim per claim category

Rule 138 Different claims, description and drawings for different States

Previously Rule 87

Rule 63 – EPO procedure when claims are impossible to search

If the European Patent Office is informed of the existence of a prior Article 139 (2) – Prior national rights right under Article 139, paragraph 2, the European patent application or European patent may, for such State or States, contain claims and, where appropriate, a description and drawings which are different from those for the other designated States.

Rule 139 Correction of errors in documents filed with the European Patent Office Linguistic errors, errors of transcription and mistakes in any document filed with the European Patent Office may be corrected on request. However, if the request for such correction concerns the description, claims or drawings, the correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction.

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Previously Rule 88

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Article 123 Previously Rule 89

A Guide to the EPC 2000 Rule 140 Correction of errors in decisions In decisions of the European Patent Office, only linguistic errors, errors of transcription and obvious mistakes may be corrected.

Other Relevant Rules Rule 58 Correction of deficiencies in the application documents

See Article 90, page 89

Rule 68 Form of the publication of European patent applications and European search reports

See Article 93, page 96

Rule 79 Preparation of the examination of the opposition

See Article 101, page 109

Rule 80 Amendment of the European patent

See Article 101, page 110

Rule 81 Examination of opposition

See Article 101, page 110

Comment: Article 123 EPC deals with the right to amend a European patent or patent application.

Under Article 123 (1) EPC, an applicant must be given at least one opportunity to amend its application. The opportunities for amendment are set out in Rule 137 EPC, which provides that no substantive amendment can be made prior to receipt of the search report (Rule 137 (1) EPC), but that an applicant has the right to amend after receipt of the search report (Rule 137 (2) EPC). Further amendments are permitted only at the discretion of the Examining Division (Rule 137 (3) EPC).

The primary restriction on amendments is Article 123 (2) EPC, which prohibits amendments that extend the subject-matter of an application beyond the content of the application as originally filed. A further restriction is imposed by Rule 137 (5) EPC, which provides that amended claims may not relate to unsearched subjectmatter that does not combine with the originally claimed invention or group of inventions to form a single general inventive concept.

When making amendments, an applicant is required to identify basis for the amendments in the content of the application as filed. (Rule 137(4) EPC). If this is not done, the Examining Division will set a one-month deadline for identifying the basis for the claim amendments.

After grant, the scope of amendment is further limited by Article 123 (3) EPC, which prohibits post-grant amendments that extend the scope of protection conferred by a European patent.

The Enlarged Board of Appeal considered the inherent conflict between the restrictions on amendment in Article 123 (2) EPC and Article 123 (3) EPC in G1/93.

In that case, it held that where a patent application was amended so as to add matter during prosecution in contravention of Article 123 (2) EPC, but where removal of the offending amendment in post-grant proceedings would extend the scope of protection, there was no means for overcoming the invalidity of the patent unless the offending feature was technically irrelevant.

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In G1/03 and G2/03, the Enlarged Board of Appeal held that amending claims so as to disclaim subject-matter was permissible even when there was no basis in an application to do so, provided the sole purpose of the disclaimer was to exclude unpatentable subject-matter or to provide novelty for a claim otherwise lacking it due to the existence of an earlier European patent application published after the priority date of an application or an accidental anticipation of the subject-matter of a claim. In G1/03 and G2/03, the Enlarged Board held that if the disclaimer became relevant for any other purpose, such as assessment of inventive step, the disclaimer would then be invalid.

In contrast, in G2/10 it was held that where subject-matter disclosed in an application was to be disclaimed, the test for whether such a disclaimer was allowable would be whether or not the remaining scope of a claim after the disclaimer had been added could be implicitly or explicitly derived from the original content of an application as filed.

In G2/88 and G6/88, the Enlarged Board of Appeal held that a post-grant amendment of compound claims to claims directed to a use of a compound did not violate Article 123 (3) EPC. Rule 139 EPC provides for the correction of linguistic errors, errors of transcription and mistakes in documents filed with the EPO. Corrections of a description, claims or drawings are limited to cases where it is obvious that correction is required and that nothing else other than the submitted correction could have been intended. The correction must amount to what a skilled person would derive directly and unambiguously from the application using common general knowledge (see G3/89 and G11/91).

In G2/95, the Enlarged Board held it impermissible to replace an entire application by way of correction. In G1/10, the Enlarged Board held Rule 140 EPC is not available to correct the text of a patent and a request for such a correction is inadmissible.In G1/12, the Enlarged Board ruled that it was permissible to correct the name of an appellant appearing in a Notice of Appeal where the wrong name had been entered in error.

Case law relating to amendments may be found in the Case Law of the Boards of Appeal of the EPO, section III , pages 315-374. Amendments and corrections are discussed in the Guidelines for Examination in the EPO, Part H. Article 124 Information on prior art

Notification of loss of rights without decision – Rule 112

(1) The European Patent Office may, in accordance with the Implementing Regulations, invite the applicant to provide information on prior art taken into consideration in national or regional patent proceedings and concerning an invention to which the European patent application relates.

If an application claims priority, search results for the earlier application must be sent to the EPO – Rule 141

EPO will contact applicant if search results for an earlier application are (2) If the applicant fails to reply in due time to an invitation under not provided – Rule 70b paragraph 1, the European patent application shall be deemed to be Reference to patent also includes utility models and utility certificates withdrawn.

– Article 140

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Articles 124

A Guide to the EPC 2000 Related Rules Rule 70b

Rule 141 (1) – EPO to be Request for a copy of search results provided with copy of search (1) Where the European Patent Office notes, at the time the Examining results cited against priority Division assumes responsibility, that a copy referred to in Rule 141, applications Rule 141 (2) – Copy of search results cited against priority applications deemed filed if available to EPO under conditions determined by EPO President

paragraph 1, has not been filed by the applicant and is not deemed to be duly filed under Rule 141, paragraph 2, it shall invite the applicant to file, within a period of two months, the copy or a statement that the results of the search referred to in Rule 141, paragraph 1, are not available to him.

(2) If the applicant fails to reply in due time to the invitation under paragraph 1, the European patent application shall be deemed to be Notification of loss of rights withdrawn. without decision – Rule 112 Further processing available – Article 121

Rule 141 Information on prior art (1) An applicant claiming priority within the meaning of Article 87 shall

Article 87 – Priority claim from file a copy of the results of any search carried out by the authority with earlier filed patent application

which the previous application was filed together with the European patent application, in the case of a Euro-PCT application on entry into the European phase, or without delay after such results have been made available to him.

(2) The copy referred to in paragraph 1 shall be deemed to be duly filed if it is available to the European Patent Office and to be included in the file of the European patent application under the conditions determined by the President of the European Patent Office.

Article 124 (1) – Prior art cited (3) Without prejudice to paragraphs 1 and 2, the European Patent Office against a priority application may invite the applicant to provide, within a period of two months,

information on prior art within the meaning of Article 124, paragraph 1.

Other Relevant Rules Rule 112 Noting of loss of rights Rule 132 Periods specified by the EPO

See Article 113, page 135 See Article 120,page 146

Comment: Article 124 and Rule 141 EPC provide the EPO with the power to ask applicants to provide information about prior art cited against national patents and patent applications corresponding to pending European patent applications.

If an application claims priority from an earlier national application, Rule 141 EPC obliges an applicant to provide the EPO with copies of search reports cited against the earlier application unless the information is already deemed available to the EPO under circumstances prescribed by the President (Rule 141 (1) and (2) EPC). These search results should be provided to the EPO promptly after they are received from a national office (Rule 141(1) EPC). In the case of Euro-PCT 156

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Article 124-125

applications, search results only need be provided once the application has entered the regional phase (Rule 141(1) EPC).

If the EPO has not received a copy of the search results by the time the Examining Division assumes responsibility, the EPO will set a deadline of two months for an applicant to provide the requested search results or inform the EPO that such results are available (Rule 70b (1) EPC). Failure to respond within the two-month time period results in the application being deemed withdrawn (Rule 70b (1) EPC). Further processing is available and an application can be reinstated if the required information is provided to the EPO and the fee for further processing is paid within two months of notification of loss of rights (Article 121 and Rule 135 EPC).

A decision of the President dated 5 October 2010, declared that the search results of all searches conducted by the EPO on European patent applications, PCT applications and national applications filed in Belgium, Cyprus, France, Greece, Italy, Luxembourg, Malta, Netherlands, and Turkey where the EPO conducts searches on behalf of national authorities would automatically be included in an application file and would therefore be exempt from the requirements of Rule 141(1) EPC. A decision of the President dated 9 December 2010, noted that agreements had been reached with the national patent offices in Japan, the UK and the US to make search results on priority applications available and therefore European patent applications claiming priority national patent applications filed in Japan, the UK and the US would be exempt from the requirements of Rule 141(1) EPC. By a decision dated 19 September 2012, the President extended this exemption to Austria The EPO also has a general power to ask an applicant for information about prior art considered by other national and regional patent offices against corresponding applications concerning the same invention (Article 124(1) and Rule 141(3) EPC). If the requested information is not provided within two months, the European patent application is deemed withdrawn (Rule 141(3) EPC). Further processing is available and an application can be reinstated if the required information is provided to the EPO and the fee for further processing is paid within two months of notification of loss of rights (Article 121 and Rule 135 EPC).

Article 125 Reference to general principles In the absence of procedural provisions in this Convention, the European Patent Office shall take into account the principles of procedural law generally recognised in the Contracting States.

Related Rule Rule 142 Interruption of proceedings (1) Proceedings before the European Patent Office shall be interrupted: (a) in the event of the death or legal incapacity of the applicant for or proprietor of a European patent or of the person authorised by 157

Previously Rule 90

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Articles 125-126

A Guide to the EPC 2000

Article 134 – Appointment of authorised representative

national law to act on his behalf. To the extent that the above events do not affect the authorisation of a representative appointed under Article 134, proceedings shall be interrupted only on application by such representative; (b) in the event of the applicant for or proprietor of a patent, as a result of some action taken against his property, being prevented by legal reasons from continuing the proceedings; (c) in the event of the death or legal incapacity of the representative of an applicant for or proprietor of a patent, or of his being prevented for legal reasons resulting from action taken against his property from continuing the proceedings.

(2) When, in the cases referred to in paragraph 1 (a) or (b), the EPO has been informed of the identity of the person authorised to continue the proceedings, it shall notify such person and, where applicable, any third party, that the proceedings will be resumed as from a specified date.

Article 133 (2) – Representation of non-EPC state applicants

(3) In the case referred to in paragraph 1 (c), the proceedings shall be resumed when the EPO has been informed of the appointment of a new representative of the applicant or when the Office has informed the other parties of the appointment of a new representative of the proprietor of the patent. If, three months after the beginning of the interruption of the proceedings, the EPO has not been informed of the appointment of a new representative, it shall communicate to the applicant for or proprietor of the patent: (a) where Article 133, paragraph 2, is applicable, that the European patent application will be deemed to be withdrawn or the European patent will be revoked if the information is not submitted within two months of this communication; or (b) otherwise, that the proceedings will be resumed with the applicant for or proprietor of the patent as from the notification of this communication.

(4) Any periods, other than those for requesting examination and paying renewal fees, in force at the date of interruption of the proceedings, shall begin again as from the day on which the proceedings are resumed. If such date is less than two months before the end of the period within which the request for examination must be filed, such a request may be filed within two months of such date.

Comment: Case law relating to interruption of proceedings may be found in the Case Law of the Boards of Appeal of the EPO, section VI – D.3, pages 485-490. Interruption and suspension of proceedings are also discussed in the Guidelines for Examination in the EPO, Part E, Chapter VI. Article 126 Termination of financial obligations (deleted) 158

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Article 127

Chapter II Information to the public or to official authorities Article 127 European Patent Register The European Patent Office shall keep a European Patent Register, Entries in the European Patent in which the particulars specified in the Implementing Regulations Register – Rule 143 shall be recorded. No entry shall be made in the European Patent Register before the publication of the European patent application.

The European Patent Register shall be open to public inspection.

Related Rule Rule 143 Entries in the European Patent Register (1) The European Patent Register shall contain the following entries: (a) number of the European patent application; (b) date of filing of the application; (c) title of the invention; (d) classification symbols assigned to the application; (e) the Contracting States designated; (f) particulars of the applicant for or proprietor of the patent as provided in Rule 41, paragraph 2 (c); (g) family name, given names and address of the inventor designated by the applicant for or proprietor of the patent, unless he has waived his right to be mentioned under Rule 20, paragraph 1; (h) particulars of the representative of the applicant for or proprietor of the patent as provided in Rule 41, paragraph 2 (d); in the case of several representatives only the particulars of the representative first named, followed by the words “and others” and, in the case of an association referred to in Rule 152, paragraph 11, only the name and address of the association; (i) priority data (date, State and file number of the previous application); (j) in the event of a division of the application, the numbers of all the divisional applications; (k) in the case of a divisional application or a new application under Article 61, paragraph 1 (b), the information referred to in subparagraphs (a), (b) and (i) with regard to the earlier application; (l) date of publication of the application and, where appropriate, date of the separate publication of the European search report; (m) date of filing of the request for examination; (n) date on which the application is refused, withdrawn or deemed to be withdrawn; 159

Previously Rule 92

Rule 41 (2)(c) – Name, address, nationality and state of residence or principal place of business Rule 20 (1) – Waiver of right to be mentioned as inventor Rule 41 (2)(d) – Authorised representative’s name and address Rule 152 (11) – Association of authorised representatives

Article 61 (1)(b) – Replacement application filed when original applicant found not to be entitled

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Articles 127-128

Rule 14 – Stay of examination pending decision on entitlement Rule 78 – Stay of opposition pending decision on entitlement Rule 142 – Interruption of proceedings due to death or legal incapacity of applicant or representative Article 135 (3) – Conversion into national patent applications

A Guide to the EPC 2000 (o) date of publication of the mention of the grant of the European patent; (p) date of lapse of the European patent in a Contracting State during the opposition period and, where appropriate, pending a final decision on opposition; (q) date of filing opposition; (r) date and purport of the decision on opposition; (s) dates of stay and resumption of proceedings in the cases referred to in Rules 14 and 78; (t) dates of interruption and resumption of proceedings in the case referred to in Rule 142; (u) date of re-establishment of rights where an entry has been made under sub-paragraphs (n) or (c); (v) the filing of a request for conversion under Article 135, paragraph 3; (w) rights and transfer of such rights relating to an application or a European patent where these Implementing Regulations provide that they shall be recorded. (x) date and purport of the decision on the request for limitation or revocation of the European patent; (y) date and purport of the decision of the Enlarged Board of Appeal on the petition for review.

(2) The President of the European Patent Office may decide that entries other than those referred to in paragraph 1 shall be made in the European patent Register.

Other Relevant Rules Rule 14 Stay of proceedings Rule 20 Publication of the mention of the inventor Rule 41 Request for grant Rule 78 Procedure where the proprietor of the patent is not entitled Rule 142 Interruption of proceedings Rule 152 Authorisations

See Article 61, page 38 See Article 81, page 66 See Article 78, page 56 See Article 101, page 109 See Article 125, page 157 See Article 133, page 167

Comment: Case law relating to the European Patent Register may be found in the Case Law of the Boards of Appeal of the European Patent Office, section VI – K.3, pages 631-632.

Article 128 Inspection of files Sample of biological material available on request – Rule 33

(1) Files relating to European patent applications which have not yet been published shall not be made available for inspection without the consent of the applicant.

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Article 128

(2) Any person who can prove that the applicant has invoked the rights under the European patent application against him may obtain inspection of the files before the publication of that application and without the consent of the applicant.

Parts of files not open to inspection – Rule 144

(3) Where a European divisional application or a new European patent application filed under Article 61, paragraph 1, is published, any person may obtain inspection of the files of the earlier application before the publication of that application and without the consent of the applicant.

Communication of information contained in files – Rule 146

Procedure for inspection of files – Rule 145

Restrictions do not apply to requests from national patent offices or courts – Article 130 (3) and Article 131 (1)

(4) After the publication of the European patent application, the files relating to the application and the resulting European patent may be Article 61 (1) – Replacement inspected on request, subject to the restrictions laid down in the application filed following court decision on entitlement Implementing Regulations.

(5) Even before the publication of the European patent application, the European Patent Office may communicate to third parties or publish the particulars specified in the Implementing Regulations.

Related Rules Rule 144 Parts of the file excluded from inspection

Previously Rule 93

The parts of the file excluded from inspection under Article 128, Article 128 (4) – Files relating to published applications may be paragraph 4, shall be: inspected on request

(a) the documents relating to the exclusion of or objections to members of the Boards of Appeal or of the Enlarged Board of Appeal; (b) draft decisions and notices, and all other documents, used for the preparation of decisions and notices, which are not communicated to the parties; (c) the designation of the inventor, if he has waived his right to be Rule 20 (1) – Waiver of right to be mentioned as inventor mentioned under Rule 20, paragraph 1; (d) any other document excluded from inspection by the President of the European Patent Office on the ground that such inspection would not serve the purpose of informing the public about the European patent application or the European patent.

Rule 145 Procedures for the inspection of files

Previously Rule 94

(1) Inspection of the files of European patent applications and patents Rule 145 does not apply to shall either be of the original document, or of copies thereof, or of inspection of files by courts or national authorities – Rule 149 (1) technical means of storage if the files are stored in this way.

(2) The President of the European Patent Office shall determine all file inspection arrangements, including the circumstances in which an administrative fee is payable.

Rule 146 Communication of information contained in the files

Previously Rule 95

Subject to the restrictions laid down in Article 128, paragraphs 1 to 4, Article 128 (1) – Files only available and in Rule 144, the European Patent Office may, upon request, for inspection after publication of patent application

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A Guide to the EPC 2000

Article 128 (2) – Exception made communicate information concerning any file relating to a European when person requesting inspection patent application or European patent, subject to the payment of an can prove applicant is asserting administrative fee. However, the European Patent Office may refer to rights against him

the option of file inspection where it deems this to be appropriate in

Article 128 (3) – Files relating to view of the quantity of information to be supplied. parent application open to inspection if replacement or divisional application published Article 128 (4) – EPO can exclude certain materials from inspection Rule 144 – Parts of files excluded from public inspection

Previously Rule 95a

Rule 147 Constitution, maintenance and preservation of files (1) The European Patent Office shall constitute, maintain and preserve files relating to all European patent applications and patents.

(2) The President of the European Patent Office shall determine the form in which these files shall be constituted, maintained and preserved.

(3) Documents incorporated in an electronic file shall be considered to be originals.

(4) Any files shall be preserved for at least five years from the end of the year in which: (a) the application is refused or withdrawn or is deemed to be withdrawn; (b) the patent is revoked by the European Patent Office; or (c) the patent or the corresponding protection under Article 63, Article 63 (2) – Extension of term of European patent due to war or grant of paragraph 2, lapses in the last of the designated States. supplementary certificate protection

(5) Without prejudice to paragraph 4, files relating to applications which have given rise to divisional applications under Article 76 or Article 61 (1)(b) – Replacement new applications under Article 61, paragraph 1 (b), shall be preserved applications filed following court for at least the same period as the files relating to any one of these decision that original applicant not last applications. The same shall apply to files relating to any entitled resulting European patents.

Article 76 – Divisional applications

Other Relevant Rules Rule 20 Publication of the mention of the See Article 81, page 66 inventor Rule 33 Availability of biological material See Article 83, page 72 See Article 131, page 164 Rule 149 Inspection of files by or via courts or authorities of the Contracting States

Comment: A decision of the President dated 12 July 2007 declared that the following

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Articles 128-130

documents would not be produced in response to a request to inspect a European patent prosecution file: • medical certificates; • documents relating to the issue of priority documents; • documents relating to requests for file inspection and the communication of

information from files; • requests for the exclusion of documents from inspection; and • requests for accelerated search and accelerated examination under the

“PACE” programme.

Case law relating to the inspection of files may be found in the Case Law of the Boards of Appeal of the European Patent Office, section VI – K.2, pages 629-630.

Article 129 Periodical publications The European Patent Office shall periodically publish: (a) a European Patent Bulletin containing the particulars the publication of which is prescribed by this Convention, the Implementing Regulations or the President of the European Patent Office; (b) an Official Journal containing notices and information of a general character issued by the President of the European Patent Office, as well as any other information relevant to this Convention or its implementation.

Article 130 Exchange of information (1) Unless this Convention or national laws provide otherwise, the Communications between EPO European Patent Office and the central industrial property office of any and national authorities – Rule Contracting State shall, on request, communicate to each other any useful 148 information regarding European or national patent applications and patents and any proceedings concerning them.

(2) Paragraph 1 shall apply to the communication of information by virtue of working agreements between the European Patent Office and (a) the central industrial property offices of other States; (b) any intergovernmental organisation entrusted with the task of granting patents; (c) any other organisation.

(3) Communications under paragraphs 1 and 2 (a) and (b) shall not be subject to the restrictions laid down in Article 128. The Administrative Article 128 – Rules relating to Council may decide that communications under paragraph 2 (c) shall not inspection of files be subject to such restrictions, provided that the organisation concerned

163

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Articles 130-131

A Guide to the EPC 2000 treats the information communicated as confidential until the European patent application has been published.

Related Rule Previously Rule 97

Rule 148 Communications between the European Patent Office and the authorities of the Contracting States (1) Communications between the European Patent Office and the central industrial property offices of the Contracting States which arise out of the application of this Convention shall be effected directly between these authorities. Communications between the European Patent Office and the courts or other authorities of the Contracting States may be effected through the intermediary of the said central industrial property offices.

(2) Expenditure in respect of communications under paragraph 1 shall be borne by the authority making the communications, which shall be exempt from fees.

Article 128 – Rules relating to inspection of files Inspection of files by courts or national offices – Rule 149

Article 131 Administrative and legal co-operation (1) Unless this Convention or national laws provide otherwise, the EPO

Procedure for letters rogatory – and the courts or authorities of Contracting States shall on request give Rule 150 assistance to each other by communicating information or opening files for Hearing of evidence by national courts – Rule 120

inspection. Where the EPO makes files available for inspection by courts, Public Prosecutors’ Offices or central industrial property offices, the inspection shall not be subject to the restrictions laid down in Article 128.

(2) At the request of the European Patent Office, the courts or other competent authorities of Contracting States shall undertake, on behalf of the Office and within the limits of their jurisdiction, any necessary enquiries or other legal measures.

Related Rules Previously Rule 98

Rule 149 Inspection of files by or via courts or authorities of the Contracting States

(1) Inspection of the files of European patent applications or of European Rule 145 – Procedure for patents by courts or authorities of the Contracting States shall be of the original documents or of copies thereof; Rule 145 shall not apply. inspection of files (2) courts or Public Prosecutors’ offices of the Contracting States may, in the course of their proceedings, communicate to third parties files or Article 128 – Rules relating to copies thereof transmitted to them by the European Patent Office. Such inspection of files communications shall be effected in accordance with Article 128 and Article 128 (1) and (4) – Files shall not be subject to any fee. of unpublished applications and certain papers defined by Rule 144 not open to the public

(3) The European Patent Office shall, when transmitting the files, draw attention to the restrictions which may, under Article 128, paragraphs 1 and 4, apply to file inspection by third parties.

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Part VII: Common Provisions Rule 150 Procedure for letters rogatory (1) Each Contracting State shall designate a central authority to receive letters rogatory issued by the European Patent Office and to transmit them to the court or authority competent to execute them.

(2) The European Patent Office shall draw up letters rogatory in the language of the competent court or authority or shall attach to such letters rogatory a translation into that language.

(3) Subject to paragraphs 5 and 6, the competent court or authority shall apply national law as to the procedures to be followed in executing such requests and, in particular, as to the appropriate measures of compulsion.

(4) If the court or authority to which the letters rogatory are transmitted is not competent to execute them, the letters rogatory shall be sent forthwith to the central authority referred to in paragraph 1. That authority shall transmit the letters rogatory either to the competent court or authority in that State, or to the European Patent Office where no court or authority is competent in that State.

(5) The European Patent Office shall be informed of the time when, and the place where, the enquiry or other legal measure is to take place and shall inform the parties, witnesses and experts concerned.

(6) If so requested by the European Patent Office, the competent court or authority shall permit the attendance of members of the department concerned and allow them to question any person giving evidence either directly or through the competent court or authority.

(7) The execution of letters rogatory shall not give rise to any reimbursement of fees or costs of any nature. Nevertheless, the State in which letters rogatory are executed has the right to require the Organisation to reimburse any fees paid to experts or interpreters and the costs arising from the procedure under paragraph 6.

(8) If the law applied by the competent court or authority obliges the parties to secure evidence and the competent court or authority is not able itself to execute the letters rogatory, that court or authority may, with the consent of the European Patent Office, appoint a suitable person to do so. When seeking such consent, the competent court or authority shall indicate the approximate costs which would result from this procedure.

If the European Patent Office gives its consent, the Organisation shall reimburse any costs incurred; otherwise, the Organisation shall not be liable for such costs.

Other Relevant Rules Rule 120 Hearing by a competent national court Rule 144 Parts of the file excluded from inspection Rule 145 Procedures for the inspection of files

See Article 117, page 141 See Article 128, page 161 See Article 128, page 161

165

Article 131 Previously Rule 99

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Articles 132-133

A Guide to the EPC 2000 Article 132 Exchange of publications (1) The EPO and the central industrial property offices of the Contracting States shall despatch to each other on request and for their own use one or more copies of their respective publications free of charge.

(2) The European Patent Office may conclude agreements relating to the exchange or supply of publications.

Chapter III Representation Article 133 General principles of representation Notifications sent to representatives (1) Subject to paragraph 2, no person shall be compelled to be – Rule 130 represented by a professional representative in proceedings Appointment of common representative – Rule 151

established by this Convention.

(2) Natural or legal persons not having their residence or principal place of business in a Contracting State shall be represented by a professional Appointment of required representative and act through him in all proceedings established by representative checked by this Convention, other than in filing a European patent application; the Receiving Section – Rule 57 (h) and Implementing Regulations may permit other exceptions.

Article 90 (3) Authorisations – Rule 152

Applicant given two months to appoint representative where one required but not appointed – Rule 58 Two-month period cannot be extended using further processing – Rule 135 (2) Failure to appoint representative in due time on request results in application being refused – Article 90 (5)

(3) Natural or legal persons having their residence or principal place of business in a Contracting State may be represented in proceedings established by this Convention by an employee, who need not be a professional representative but who shall be authorised in accordance with the Implementing Regulations. The Implementing Regulations may provide whether and under what conditions an employee of a legal person may also represent other legal persons which have their principal place of business in a Contracting State and which have economic connections with the first legal person.

(4) The Implementing Regulations may lay down special provisions concerning the common representation of parties acting in common.

Related Rules Previously Rule 100

Rule 151 Appointment of a common representative (1) If there is more than one applicant and the request for grant of a European patent does not name a common representative, the applicant first named in the request shall be deemed to be the common representative. However, if one of the applicants is obliged to appoint a professional representative, this representative shall be deemed to be the common representative, unless the applicant first named has appointed a professional representative. The same shall apply to third parties acting in common in filing a notice of opposition or intervention and to joint proprietors of a European patent.

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Article 133

(2) If the European patent application is transferred to more than one person, and such persons have not appointed a common Time periods set by EPO must be at representative, paragraph 1 shall apply mutatis mutandis. If such least two months and may be application is not possible, the European Patent Office shall invite extended on request – Rule 132 (2) such persons to appoint a common representative within a period to be specified. If this invitation is not complied with, the European Patent Office shall appoint the common representative.

Previously Rule 101

Rule 152 Authorisations (1) The President of the EPO shall determine the cases in which a signed authorisation shall be filed by representatives acting before the EPO. (2) Where a representative fails to file such an authorisation, the EPO shall invite him to do so within a period to be specified. The authorisation may cover one or more European patent applications or European patents and shall be filed in the corresponding number of copies.

Time periods set by EPO must be at least two months and may be extended on request – Rule 132 (2) Further processing available – Article 121 Article 133 (2) – Representation of

(3) Where the requirements of Article 133, paragraph 2, have not been non-EPC state applicants satisfied, the same period shall be specified for the appointment of a representative and the filing of the authorisation.

(4) A general authorisation may be filed enabling a representative to act in respect of all the patent transactions of a party. A single copy shall suffice.

(5) The President of the EPO may determine the form and content of: (a) an authorisation relating to the representation of persons under Article 133, paragraph 2; Article 133 (2) – Representation of (b) a general authorisation. non-EPC state applicants (6) If a required authorisation is not filed in due time, any procedural steps taken by the representative, other than the filing of a European patent application, shall be deemed not to have been taken, without prejudice to any other legal consequences provided for by this Convention.

(7) Paragraphs 2 and 4 shall apply to the withdrawal of an authorisation.

(8) A representative shall be deemed to be authorised until the termination of his authorisation has been communicated to the EPO. (9) Unless it expressly provides otherwise, an authorisation shall not terminate vis à vis the EPO upon the death of the person who gave it.

(10) If a party appoints several representatives, they may act either jointly or singly, notwithstanding any provisions to the contrary in the communication of their appointment or in the authorisation.

(11) The authorisation of an association of representatives shall be deemed to be an authorisation of any representative who can provide evidence that he practises within that association.

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Articles 133-134

A Guide to the EPC 2000 Other Relevant Rules Rule 57 Examination as to formal requirements Rule 58 Correction of deficiencies in the application documents Rule 130 Notification to representatives Rule 132 Periods specified by the European Patent Office Rule 135 Further processing

See Article 90, page 88 See Article 90, page 89 See Article 119, page 145 See Article 120, page 146 See Article 121, page 148

Comment: By a decision of the President dated 12 July 2007, professional representatives are only required to file authorisations in very limited circumstances. These are where responsibility for prosecution has been transferred from one firm of representatives to another without the EPO first receiving notice that the original representative has withdrawn, or where a professional representative’s authority to act is otherwise in doubt. In contrast, legal practitioners and company employees who are not professional representatives are required to file a signed authorisation or a reference to a general authorisation already on file prior to acting before the EPO. If such an authorisation has not been filed, the EPO will set a deadline for filing one.

Article 134 Representation before the European Patent Office (1) Representation of natural or legal persons in proceedings established by Amendment of list of this Convention may only be undertaken by professional representatives professional representatives whose names appear on a list maintained for this purpose by the EPO. Authorisations – Rule 152

– Rule 154

(2) Any natural person who (a) is a national of a Contracting State, (b) has his place of business or employment in a Contracting State and (c) has passed the European qualifying examination may be entered on the list of professional representatives.

(3) During a period of one year from the date on which the accession of a State to this Convention takes effect, entry on that list may also be requested by any natural person who (a) is a national of a Contracting State, (b) has his place of business or employment in the State having acceded to the Convention and (c) is entitled to represent natural or legal persons in patent matters before the central industrial property office of that State. Where such entitlement is not conditional upon the requirement of special professional qualifications, the person shall have regularly so acted in that State for at least five years.

(4) Entry shall be effected upon request, accompanied by certificates indicating that the conditions laid down in paragraph 2 or 3 are fulfilled.

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Part VII: Common Provisions

Article 134

(5) Persons whose names appear on the list of professional representatives shall be entitled to act in all proceedings established by this Convention.

(6) For the purpose of acting as a professional representative, any person whose name appears on the list of professional representatives shall be entitled to establish a place of business in any Contracting State in which proceedings established by this Convention may be conducted, having regard to the Protocol on Centralisation annexed to this Convention. The authorities of such State may remove that entitlement in individual cases only in application of legal provisions adopted for the purpose of protecting public security and law and order. Before such action is taken, the President of the EPO shall be consulted.

(7) The President of the EPO may grant exemption from: (a) the requirement of paragraphs 2 (a) or 3 (a) in special circumstances; (b) the requirement of paragraph 3 (c), second sentence, if the applicant furnishes proof that he has acquired the requisite qualification in another way.

(8) Representation in proceedings established by this Convention may also be undertaken, in the same way as by a professional representative, by any legal practitioner qualified in a Contracting State and having his place of business in that State, to the extent that he is entitled in that State to act as a professional representative in patent matters. Paragraph 6 shall apply mutatis mutandis.

Related Rule Rule 154 Amendment of the list of professional representatives

Previously Rule 102

(1) The entry of a professional representative shall be deleted from the list of professional representatives if he so requests or if, despite repeated reminders, he fails to pay the annual subscription to the Institute before the end of September of the year for which the subscription is due.

(2) Without prejudice to any disciplinary measures taken under Article 134a, paragraph 1 (c), the entry of a professional representative may be deleted ex officio only: (a) in the event of his death or legal incapacity; (b) where he is no longer a national of one of the Contracting States, unless he was granted an exemption under Article 134, paragraph 7 (a); (c) where he no longer has his place of business or employment within one of the Contracting States.

Article 134a (1)(c) – Disciplinary powers over professional representatives exercised by EPO and EPI Article 134 (7)(a) – Exemption from EPC nationality requirement for professional representatives in special circumstances Article 134 (2) and (3) –

(3) Any person entered on the list of professional representatives Requirements for entry onto list of under Article 134, paragraphs (2) or (3), whose entry has been deleted professional representatives shall, upon request, be re-entered on that list if the conditions for deletion no longer exist.

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Articles 134-134a

A Guide to the EPC 2000 Other Relevant Rules Rule 152 Authorisations

See Article 133, page 167

Comment: The EPC 2000 transferred the “grandfather provisions” relating to patent attorneys in new Contracting States previously appearing in Article 163 (6) EPC to Article 134 (3) EPC, and moved the content of Article 134 (8) EPC to Article 134a EPC (see commentary on Article 134a EPC below).

In G2/94 and G4/95, the Enlarged Board of Appeal held that it is not a breach of the rules on representation for a third party to make submissions at oral proceedings on behalf of an authorised representative, provided the authorised representative maintains overall control at all times. This was held to be true even if the third party in question is a foreign lawyer. The Enlarged Board held, however, that some additional restrictions apply to submissions by former members of the Boards of Appeal acting as, or on behalf of, authorised representatives within three years of departure from the EPO. Case law on representation before the EPO may be found in the Case Law of the Boards of Appeal of the European Patent Office, section VI – I, pages 571-590, with case law on the European Qualifying Examination appearing in section VIII – 2, pages 932-941. Representation before the EPO is also discussed in the Guidelines for Examination in the European Patent Office, Part A, Chapter VIII, section 1.

Article 134a Institute of Professional Representatives before the European Patent Office (1) The Administrative Council shall be competent to adopt and amend provisions governing: (a) the Institute of Professional Representatives before the EPO, hereinafter referred to as the Institute; (b) the qualifications and training required of a person for admission to the European qualifying examination and the conduct of such examination; Disciplinary power allocated to (c) the disciplinary power exercised by the Institute or the EPO in Boards of Appeal – Rule 12 (6) respect of professional representatives; Patent attorney privilege – Rule 153 (d) the obligation of confidentiality on the professional representative and the privilege from disclosure in proceedings before the EPO in respect of communications between a professional representative and his client or any other person.

Article 134 (1) – List of professional representatives

(2) Any person entered on the list of professional representatives referred to in Article 134, paragraph 1, shall be a member of the Institute.

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Part VII: Common Provisions

Article 134a

Related Rule Rule 153 Attorney-client evidentiary privilege (1) Where advice is sought from a professional representative in his capacity as such, all communications between the professional representative and his client or any other person, relating to that purpose and falling under Article 2 of the Regulation on discipline for professional representatives, are permanently privileged from disclosure in proceedings before the European Patent Office, unless such privilege is expressly waived by the client.

(2) Such privilege from disclosure shall apply, in particular, to any communication or document relating to: (a) the assessment of the patentability of an invention; (b) the preparation or prosecution of a European patent application; (c) any opinion relating to the validity, scope of protection or infringement of a European patent or a European patent application.

Other Relevant Rules See Article 21, page 15

Rule 12 Presidium of the Boards of Appeal

Comment: Article 134a EPC incorporates former Article 134 (8) EPC and sets out the powers of the Administrative Council to regulate the admission and conduct of professional representatives.

Sub-paragraph (d) permits the Administrative Council to adopt provisions governing the obligations of professional representatives to maintain confidentiality and client privilege in respect of communications relating to proceedings before the EPO. Article 2 of the Regulation on Discipline for Professional Representatives adopted by the Administrative Council requires professional representatives to maintain the secrecy of confidential information relating to European patent applications.

Rule 153 EPC details the extent of privilege against disclosure of documents.

The purpose of this is to protect European professional representatives from having to produce their files in US court proceedings, as happened in Bristol-Myers Squibb v Rhône Poulenc Rorer, Southern District of New York, 21 April 1999. The wording of the Rule 153 EPC intentionally mirrors the definition of US attorneyclient privilege cited in that case.

Case law relating to disciplinary proceedings, the EPI code of conduct and the obligations of professional representatives may be found in the Case Law of the Boards of Appeal of the European Patent Office, section VIII – 3 and 4, pages 941944.

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Article 135

A Guide to the EPC 2000

PART VIII IMPACT ON NATIONAL LAW

Chapter I Conversion into a national patent application Article 135 Request for conversion Reference to patent also includes utility models and utility certificates – Article 140 Article 77 (3) – Failure of national office to forward application to EPO in due time If application deemed withdrawn due to failure to file translation under Article 14 (2) in due time, conversion possible in Bulgaria, Croatia, Cyprus, Estonia, Finland, former Yugoslav Republic of Macedonia, Greece, Hungary, Italy, Latvia, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Switzerland. Conversion in Switzerland limited, however, to applications filed in Italian.

(1) The central industrial property office of a designated Contracting State shall, at the request of the applicant for or proprietor of a European patent, apply the procedure for the grant of a national patent in the following circumstances: (a) where the European patent application is deemed to be withdrawn under Article 77, paragraph 3; (b) in such other cases as are provided for by the national law, in which the European patent application is refused or withdrawn or deemed to be withdrawn, or the European patent is revoked under this Convention.

(2) In the case referred to in paragraph 1 (a), the request for conversion shall be filed with the central industrial property office with which the European patent application has been filed. That office shall, subject to the provisions governing national security, transmit the request directly to the central industrial property offices of the Contracting States specified therein.

(3) In the cases referred to in paragraph 1 (b), the request for conversion shall be submitted to the European Patent Office in accordance with the Implementing Regulations. It shall not be Conversion documents made deemed to be filed until the conversion fee has been paid. The available to public by national European Patent Office shall transmit the request to the central offices – Rule 156 industrial property offices of the Contracting States specified therein.

Filing and transmission of request for conversion – Rule 155

Article 66 – European patent application equivalent to regular national filing

(4) The effect of the European patent application referred to in Article 66 shall lapse if the request for conversion is not submitted in due time.

Previously Article 135 (2) and elements of Articles 136 (1) and (2) Article 135 (1)(a) – Application deemed withdrawn due to failure by national office to forward to EPO in due time Article 135 (1)(b) – Conversion in other circumstances where permitted by national laws Article 66 – European patent application equivalent to regular national filing

Related Rules Rule 155 Filing and transmission of the request for conversion (1) The request for conversion referred to in Article 135, paragraph 1 (a) or (b), shall be filed within three months of the withdrawal of the European patent application, or of the communication that the application is deemed to be withdrawn, or of the decision refusing the application or revoking the European patent. The effect of the European patent application under Article 66 shall lapse if the request is not filed in due time.

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Part VIII: Impact on National Law

Article 135

(2) When transmitting the request for conversion to the central industrial property offices of the Contracting States specified in the request, the central industrial property office concerned or the European Patent Office shall attach to the request a copy of the file relating to the European patent application or European patent.

(3) Article 135, paragraph 4, shall apply if the request for conversion referred to in Article 135, paragraphs 1(a) and (2), is not transmitted before the expiry of a period of twenty months from the date of filing or, if priority has been claimed, the date of priority.

Rule 156 Information to the public in the event of conversion

Article 135 (4) – Equivalence with regular national filing lapses if request for conversion not filed in due time Articles 135 (1)(a) and (2) – Request for conversion where application deemed withdrawn due to failure of national office to forward to EPO in due time

Previously Rule 103

(1) The documents accompanying the request for conversion under Rule 155, paragraph 2, shall be made available to the public by the Rule 155 (2) – Copy of European patent application file central industrial property office under the same conditions and to the same extent as documents relating to national proceedings.

(2) The printed specification of the national patent resulting from the conversion of a European patent application shall mention that application.

Comment: Article 135 EPC sets out the conditions under which a European patent application may be converted into national patent applications. Such action is most commonly taken where a European patent application is deemed withdrawn because the national patent authorities with whom it was filed failed to forward the application to the EPO within the required time limits (Article 135 (1)(a) EPC; see commentary on Article 77 EPC above). National laws may also permit conversion in other circumstances where a European patent application is refused, withdrawn or deemed withdrawn (Article 135 (1)(b) EPC).

A request for conversion must be filed within three months of a European patent application being refused or deemed withdrawn (Rule 155 (1) EPC). Except where an application has lapsed due to the failure of a national office to forward it to the EPO in due time, a conversion fee must be paid (Article 135 (3) EPC). The conversion fee is currently €75 (Article 2 (14) of the Rules Relating to Fees).

European patent applications converted into national patent applications are exempt from any national formalities requirements that differ from the requirements of the EPC (Article 137 (1) EPC). However, national authorities may require national application fees to be paid and a translation into a national language to be filed (Article 137 (2) EPC).

The conversion of a European patent application into national patent applications is discussed in the Guidelines for Examination in the EPO, Part A, Chapter IV, section 6.

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Articles 136-138

A Guide to the EPC 2000

Content of Articles 136 (1) and (2) moved to Rule 155 Content of Article 136 (2) moved to Articles 135 (2) and (4)

Article 136 Submission and transmission of the request (deleted)

Articles 135 (2) and (3) – Transmittal of conversion request to specified Contracting States

(1) A European patent application transmitted in accordance with Article 135, paragraph 2 or 3, shall not be subjected to formal requirements of national law which are different from or additional to those provided for in this Convention.

Article 137 Formal requirements for conversion

(2) Any central industrial property office to which the European patent application is transmitted may require that the applicant shall, within a period of not less than two months: (a) pay the national application fee; and (b) file a translation of the original text of the European patent application in an official language of the State in question and, where appropriate, of the text as amended during proceedings before the EPO which the applicant wishes to use as the basis for the national procedure.

Chapter II Revocation and prior rights Article 138 Revocation of European patents Article 139 – Prior national rights

Article 52 – Patentable subject-matter Article 53 – Exceptions to patentability Article 54 – Novelty Article 55 – Non-prejudicial disclosures Article 56 – Inventive step Article 57 – Industrial applicability Article 61 – Replacement application filed following court decision that original applicant not entitled Article 60 (1) – Right to European patent vests in inventor or successor in title

(1) Subject to Article 139, a European patent may be revoked with effect for a Contracting State only on the grounds that: (a) the subject-matter of the European patent is not patentable under Articles 52 to 57; (b) the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art; (c) the subject-matter of the European patent extends beyond the content of the application as filed or, if the patent was granted on a divisional application or on a new application filed under Article 61, beyond the content of the earlier application as filed; (d) the protection conferred by the European patent has been extended; or (e) the proprietor of the European patent is not entitled under Article 60, paragraph 1.

(2) If the grounds for revocation affect the European patent only in part, the patent shall be limited by a corresponding amendment of the claims and revoked in part.

(3) In proceedings before the competent court or authority relating to the validity of the European patent, the proprietor of the patent 174

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Part VIII: Impact on National Law

Articles 138-141

shall have the right to limit the patent by amending the claims. The patent as thus limited shall form the basis for the proceedings.

Article 139 Prior rights and rights arising on the same date (1) In any designated Contracting State a European patent application Reference to patent also includes and a European patent shall have with regard to a national patent utility models and utility certificates application and a national patent the same prior right effect as a – Article 140 national patent application and a national patent.

(2) A national patent application and a national patent in a Contracting State shall have with regard to a European patent designating that Contracting State the same prior right effect as if the European patent were a national patent.

May have different claims in different Contracting States if EPO informed of prior national rights – Rule 138

(3) Any Contracting State may prescribe whether and on what terms an invention disclosed in both a European patent application or patent and a national application or patent having the same date of filing or, where priority is claimed, the same date of priority, may be protected simultaneously by both applications or patents.

Other Relevant Rules See Article 123, page 153 Rule 138 Different claims, description and drawings for different States

Chapter III Miscellaneous effects Article 140 National utility models and utility certificates

Article 66 – Equivalence of European application with national filing

Articles 66, 124, 135, 137 and 139 shall apply to utility models and utility certificates and to applications for utility models and utility certificates registered or deposited in the Contracting States whose laws make provision for such models or certificates.

Article 124 – Request by EPO for information on prior art identified during prosecution of equivalent national patent applications Articles 135 and 137 – Conversion into national applications Article 139 – Prior national rights

Article 141 Renewal fees for European patents (1) Renewal fees for a European patent may only be imposed for the Article 86 (2) – Year of publication years which follow that referred to in Article 86, paragraph 2. of grant (2) Any renewal fees falling due within two months of the publication in the European Patent Bulletin of the mention of the grant of the European patent shall be deemed to have been validly paid if they are paid within that period. Any additional fee provided for under national law shall not be charged.

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Articles 142-146

A Guide to the EPC 2000

PART IX SPECIAL AGREEMENTS Article 142 Unitary patents (1) Any group of Contracting States, which has provided by a special agreement that a European patent granted for those States has a unitary character throughout their territories, may provide that a European patent may only be granted jointly in respect of all those States.

(2) Where any group of Contracting States has availed itself of the authorisation given in paragraph 1, the provisions of this Part shall apply.

Article 143 Special departments of the European Patent Office (1) The group of Contracting States may give additional tasks to the European Patent Office.

(2) Special departments common to the Contracting States in the group may be set up within the European Patent Office in order to carry out the additional tasks. The President of the European Patent Article 10 (2) and (3) – Functions Office shall direct such special departments; Article 10, paragraphs 2 and powers of EPO President and 3, shall apply mutatis mutandis.

Article 144 Representation before special departments Article 143 (2) – Special departments of EPO

The group of Contracting States may lay down special provisions to govern representation of parties before the departments referred to in Article 143, paragraph 2.

Article 145 Select committee of the Administrative Council Article 143 (2) – Special departments of EPO

(1) The group of Contracting States may set up a select committee of the Administrative Council for the purpose of supervising the activities of the special departments set up under Article 143, paragraph 2; the European Patent Office shall place at its disposal such staff, premises and equipment as may be necessary for the performance of its duties. The President of the European Patent Office shall be responsible for the activities of the special departments to the select committee of the Administrative Council.

(2) The composition, powers and functions of the select committee shall be determined by the group of Contracting States.

Article 146 Cover for expenditure for carrying out special tasks Article 143 – Special departments Where additional tasks have been given to the European Patent Office under Article 143, the group of Contracting States shall bear of EPO

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Part IX: Special Agreements the expenses incurred by the Organisation in carrying out these tasks.

Where special departments have been set up in the European Patent Office to carry out these additional tasks, the group shall bear the expenditure on staff, premises and equipment chargeable in respect of these departments. Article 39, paragraphs 3 and 4, Article 41 and Article 47 shall apply mutatis mutandis.

Article 147 Payments in respect of renewal fees for unitary patents

Articles 146-149a Articles 39 (3) and (4) – Due dates and interest on payments by Contracting States to European Patent Organisation Article 41 – Advances from Contracting States on request of EPO President Article 47 – Provisional budget and special financial contributions by Contracting States

If the group of Contracting States has fixed a common scale of renewal fees in respect of European patents, the proportion referred to in Article 39, paragraph 1, shall be calculated on the basis of the common scale; the minimum amount referred to in Article 39, Article 39 – Payments by Contracting States in respect of renewal fees paragraph 1, shall apply to the unitary patent. Article 39, paragraphs 3 and 4, shall apply mutatis mutandis.

Article 148 The European patent application as an object of property (1) Article 74 shall apply unless the group of Contracting States has Article 74 – National laws normally apply when dealing with European specified otherwise. patent applications as objects of

(2) The group of Contracting States may provide that a European property patent application for which these Contracting States are designated may only be transferred, mortgaged or subjected to any legal means of execution in respect of all the Contracting States of the group and in accordance with the provisions of the special agreement.

Article 149 Joint designation (1) The group of Contracting States may provide that these States may only be designated jointly, and that the designation of one or some only of such States shall be deemed to constitute the designation of all the States of the group.

(2) Where the European Patent Office acts as a designated Office under Article 153, paragraph 1, paragraph 1 shall apply if the Article 153 (1) – EPO as designated or elected Office for PCT applicant has indicated in the international application that he wishes applications to obtain a European patent for one or more of the designated States of the group. The same shall apply if the applicant designates in the international application one of the Contracting States in the group, whose national law provides that the designation of that State shall have the effect of the application being for a European patent.

Article 149a Other agreements between the Contracting States (1) Nothing in this Convention shall be construed as limiting the right of some or all of the Contracting States to conclude special 177

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Article 149a Article 65 – Requirement for national translations in certain Contracting States

A Guide to the EPC 2000 agreements on any matters concerning European patent applications or European patents which under this Convention are subject to and governed by national law, such as, in particular (a) an agreement establishing a European patents court common to the Contracting States party to it; (b) an agreement establishing an entity common to the Contracting States party to it to deliver, at the request of national courts or quasijudicial authorities, opinions on issues of European or harmonised national patent law; (c) an agreement under which the Contracting States party to it dispense fully or in part with translations of European patents under Article 65; (d) an agreement under which the Contracting States party to it provide that translations of European patents as required under Article 65 may be filed with, and published by, the EPO. (2) The Administrative Council shall be competent to decide that: (a) the members of the Boards of Appeal or the Enlarged Board of Appeal may serve on a European patents court or a common entity and take part in proceedings before that court or entity in accordance with any such agreement; (b) the EPO shall provide a common entity with such support staff, premises and equipment as may be necessary for the performance of its duties, and the expenses incurred by that entity shall be borne fully or in part by the Organisation.

Comment: Article 149a creates a clear basis for future agreements between Contracting States and for the EPO’s involvement in such agreements.

It builds on the work of the Paris Inter-governmental Conference of 1999, which set up working parties to suggest proposals for reducing the cost of European patents and improving the process of litigating them. The result was the London Agreement on Translations and the European Patent Litigation Agreement, together with a proposal for the formation of a “common entity” for delivering opinions on issues of European and harmonised national patent law referred to it by the national courts. Article 149a (1) EPC expressly permits Contracting States to conclude further agreements relating to European patent law and sub-paragraphs (a) – (d) explicitly refer to the agreements currently under consideration.

The most likely form of EPO involvement is the participation of Board of Appeal or Enlarged Board of Appeal members in a European patents court or common entity, if established. Provision for these roles is made by Article 149a (2)(a) EPC. Additionally, Article 149a (2)(b) EPC provides the Administrative Council with the power to divert EPO staff, premises and equipment to the use of a “common entity”.

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Part X: International and Euro-PCT Applications

Articles 150-151

PART X INTERNATIONAL APPLICATIONS UNDER THE PATENT CO-OPERATION TREATY – EURO-PCT APPLICATIONS Article 150 Application of the Patent Cooperation Treaty (1) The Patent Cooperation Treaty of 19 June 1970, hereinafter Entry into regional phase – Rule 159 referred to as the PCT, shall be applied in accordance with the provisions of this Part.

(2) International applications filed under the PCT may be the subject of proceedings before the European Patent Office. In such proceedings, the provisions of the PCT and its Regulations shall be applied, supplemented by the provisions of this Convention. In case of conflict, the provisions of the PCT or its Regulations shall prevail.

Other Relevant Rules Rule 159 The European Patent Office as See Article 153, page 182 a designated or elected Office – Requirements for entry into the European phase

Article 151 The European Patent Office as a receiving Office The European Patent Office shall act as a receiving Office within the EPO as receiving Office – Rule 157 meaning of the PCT, in accordance with the Implementing Article 75 (2) – National laws may Regulations. Article 75, paragraph 2, shall apply. require PCT applications relating to certain types of invention to be filed directly with national offices

Related Rule Rule 157 The European Patent Office as a receiving Office

Previously Articles 151 (1) and 152 and Rule 104

(1) The European Patent Office shall be competent to act as a receiving Office within the meaning of the PCT if the applicant is a resident or national of a Contracting State to this Convention and to the PCT. Without prejudice to paragraph 3, if the applicant chooses the European Patent Office as a receiving Office, the international Article 75 (2) – National laws may application shall be filed directly with the European Patent Office. require PCT applications relating to certain types of invention to be filed Article 75, paragraph 2, shall apply mutatis mutandis. directly with national offices

(2) Where the European Patent Office acts as a receiving Office under the PCT, the international application shall be filed in English, French or German. The President of the European Patent Office may determine that the international application and any related item shall be filed in more than one copy.

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Articles 151-152

A Guide to the EPC 2000 (3) If an international application is filed with an authority of a Contracting State for transmittal to the European Patent Office as the receiving Office, the Contracting State shall ensure that the application reaches the European Patent Office not later than two weeks before the end of the thirteenth month from filing or, if priority is claimed, from the date of priority.

Transmittal fee is €130 – RRF Article 2 (18)

(4) The transmittal fee for the international application shall be paid within one month of filing the application.

Article 152 The European Patent Office as an International Searching Authority or International Preliminary Examining Authority EPO as International Searching The European Patent Office shall act as an International Searching Authority or International Preliminary Authority and International Preliminary Examining Authority within Examining Authority – Rule 158 the meaning of the PCT, in accordance with an agreement between

the Organisation and the International Bureau of the World Intellectual Property Organization, for applicants who are residents or nationals of a State party to this Convention. This agreement may provide that the European Patent Office shall also act for other applicants.

Related Rule Previously Rule 105

Rule 158 The European Patent Office as an International Searching Authority or International Preliminary Examining Authority

(1) In the case of Article 17, paragraph 3 (a) PCT, an additional international search fee shall be paid for each further invention for International search fee is €1,875 – which an international search is to be carried out.

Article 17 (3)(a) PCT – Request for further search fees RRF Article 2 (2)

(2) In the case of Article 34, paragraph 3 (a) PCT, an additional fee for international preliminary examination shall be paid for each further Article 34 (3)(a) PCT – Request for invention for which the international preliminary examination is to further examination fees Fee for preliminary examination is be carried out. €1,930 – RRF Article 2 (19)

(3) Where an additional fee has been paid under protest, the European Patent Office shall examine the protest in accordance with Rule 40.2 (c) to (e) or Rule 68.3 (c) to (e) PCT, subject to payment of Rule 40.2 (c) – (e) PCT – Extra the prescribed protest fee. Further details concerning the procedure search fees paid under protest shall be determined by the President of the European Patent Office.

Rule 68.3 (c) – (e) PCT – Extra examination fees paid under protest Protest fee is €865 – RRF Article 2 (21)

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Part X: International and Euro-PCT Applications

Articles 152-153

Comment: For PCT applications filed after 13 December 2007, protests against a demand for payment of additional fees are reviewed in a single-stage procedure. The EPO will review a demand for extra fees if an applicant pays the additional fees together with a protest fee. If the review finds that the demand for extra fees was unjustified, the additional fees and the protest fee are refunded. If the review determines that the demand was only justified in part, the protest fee is retained and any unjustified extra fees are refunded. A decision on a protest is not open to review by a Board of Appeal.

For PCT applications already pending on 13 December 2007, a two-stage procedure applies. If an applicant pays additional fees under protest, the demand for the extra fees is first reviewed internally by the Examining Division. If the demand to pay extra fees is found to be unjustified, the extra fees and any protest fee are refunded. If the review determines that the invitation was valid in part or in full, the applicant is notified and may then obtain a further review by a Board of Appeal, either by paying a protest fee within a month of notification, or, if the fee has already been paid, by refraining from requesting a refund of the protest fee.

In G1/89 and G2/89, the Enlarged Board of Appeal held that the EPO may demand extra search fees even if it only becomes apparent that an application lacks unity after a search has been completed.

Case law on the EPO as an International Searching Authority and an International Preliminary Examining Authority may be found in the Case Law of the Boards of Appeal of the European Patent Office, section VI, pages 1101-1106. These roles are also discussed in the EPO’s Guide for Applicants, Part 2- Euro-PCT Guide.

Article 153 The European Patent Office as designated Office or elected Office (1) The European Patent Office shall be (a) a designated Office for any State party to this Convention in respect of which the PCT is in force, which is designated in the international application and for which the applicant wishes to obtain a European patent, and (b) an elected Office, if the applicant has elected a State designated pursuant to letter (a).

Entry into regional phase – Rule 159

(2) An international application for which the European Patent Office is a designated or elected Office, and which has been accorded an international date of filing, shall be equivalent to a regular European application (Euro-PCT application).

Euro-PCT only has Article 54 (3) prior art effect if filing fee paid and translation into English, French or German provided, if application not already published in one of those languages – Rule 165

(3) The international publication of a Euro-PCT application in an official language of the European Patent Office shall take the place 181

Consequences of omissions –Rule 160 Amendment of application – Rule 161 Excess claims fees – Rule 162 Formalities examination – Rule 163 Unity of invention and further searches– Rule 164

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Article 153

A Guide to the EPC 2000 of the publication of the European patent application and shall be mentioned in the European Patent Bulletin.

Article 67 (3) – Contracting States may make provisional protection conferred

by European patent application conditional on filing of claims translations in a national language

(4) If the Euro-PCT application is published in another language, a translation into one of the official languages shall be filed with the European Patent Office, which shall publish it. Subject to Article 67, paragraph 3, the provisional protection under Article 67, paragraphs 1 and 2, shall be effective from the date of that publication.

(5) The Euro-PCT application shall be treated as a European patent

Article 54 (3) – Earlier European patent application and shall be considered as comprised in the state of the applications considered prior art for art under Article 54, paragraph 3, if the conditions laid down in assessment of novelty Euro-PCT only has Article 54 (3) prior art effect if filing fee paid and translation into English, French or German provided, if application not already published in one of those languages – Rule 165

paragraph 3 or 4 and in the Implementing Regulations are fulfilled.

(6) The international search report drawn up in respect of a EuroPCT application or the declaration replacing it, and their international publication, shall take the place of the European search report and the mention of its publication in the European Patent Bulletin.

(7) A supplementary European search report shall be drawn up in respect of any Euro-PCT application under paragraph 5. The Administrative Council may decide that the supplementary search report is to be dispensed with or that the search fee is to be reduced.

Related Rules Previously Article 153 (2) and Rule 107

Rule 159 The European Patent Office as a designated or elected Office – Requirements for entry into the European phase

Article 153 – EPO as designated or (1) In respect of an international application under Article 153, the elected office under the PCT applicant shall perform the following acts within thirty-one months

from the date of filing of the application or, if priority has been claimed, from the priority date: Article 153 (4) – Translation of PCT application into EPO language required if not in English, French or German

Rule 39 – Designation fees due within 6 months of publication of search report Article 78 (2) – Filing and search fees Article 94 – Request for examination Rule 70 (1) – Examination must be requested within six months of publication of search report Examination fee reduced by 50% if EPO has drawn up International Preliminary Examination Report – RRF Article 14 (2)

(a) supply, where applicable, the translation of the international application required under Article 153, paragraph 4; (b) specify the application documents, as originally filed or as amended, on which the European grant procedure is to be based; (c) pay the filing fee provided for in Article 78, paragraph 2; (d) pay the designation fees if the period under Rule 39 has expired earlier; (e) pay the search fee, where a supplementary European search report has to be drawn up; (f) file the request for examination provided for in Article 94, if the period under Rule 70, paragraph 1, has expired earlier; (g) pay the renewal fee in respect of the third year provided for 182

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Part X: International and Euro-PCT Applications in Article 86, paragraph 1, if the fee has fallen due earlier under Rule 51, paragraph 1; (h) file, where applicable, the certificate of exhibition referred to in Article 55, paragraph 2, and Rule 25.

(2) The Examining Division shall be competent to take decisions of the European Patent Office under Article 25, paragraph 2 (a) PCT.

Rule 160

Article 153

Article 86 (1) – Renewal fees Rule 51 (1) – Renewal fees due by end of month containing anniversary of filing date Article 55 (2) – Non-prejudicial disclosure at international exhibition Rule 25 – Certificate of international exhibition Article 25 (2)(a) PCT – Review of refusal to accord international filing date

Consequences of non-fulfilment of certain requirements (1) If either the translation of the international application or the request for examination is not filed in due time, or if the filing fee, the search fee or the designation fee is not paid in due time, the European patent application shall be deemed to be withdrawn (2) If the EPO notes that the application is deemed to be withdrawn under paragraph 1, it shall communicate this to the applicant. Rule 112, paragraph 2, shall apply mutatis mutandis Rule 161 Amendment of the application ((1) If the EPO has acted as the International Searching Authority and, where a demand under Article 31 PCT was filed, also as the International Preliminary Examining Authority for a Euro-PCT application, it shall give the applicant the opportunity to comment on the written opinion of the International Searching Authority or the International Preliminary Examination Report and, where appropriate, invite him to correct any deficiencies noted in the written opinion or in the International Preliminary Examination Report and to amend the description, claims and drawings within a period of six months from the respective communication. If the EPO has drawn up a supplementary international search report, an invitation in accordance with the first sentence shall be issued in respect of the explanations given in accordance with Rule 45bis.7(e) PCT. If the applicant does not comply with or comment on an invitation in accordance with the first or second sentence, the application shall be deemed to be withdrawn.

Previously Rule 108

Rule 112 (2) – Applicant may request appealable decision within 2 months of notification Previously Rule 109

Article 31 PCT – Demand for International Examination

Rule 45bis.7(e) PCT – Explanations in the supplementary search report regarding the relevance of cited documents and the scope of the supplementary search

(2) Where the EPO draws up a supplementary European search report on a Euro-PCT application, the application may be amended once within a period of six months from a communication informing the applicant accordingly. The application as amended shall serve as the basis for the supplementary European search.

Rule 162 Claims incurring fees

Previously Rule 110

(1) If the application documents on which the European grant procedure is to be based comprise more than fifteen claims, claims fees shall be paid 183

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Rule 159 (1) – Excess claims fees for the sixteenth and each subsequent claim as laid down in the Rules due within 31 months of relating to Fees within the period under Rule 159, paragraph 1. international filing date or, if priority (2) If the claims fees are not paid in due time, they may still be paid within claimed, of priority date

six months from a communication concerning the failure to observe the time limit. If within this period amended claims are filed, the claims fees due shall be computed on the basis of such amended claims.

(3) Any claims fees paid within the period under paragraph 1 and in excess of those due under paragraph 2, second sentence, shall be refunded.

(4) Where a claims fee is not paid in due time, the claim concerned shall be deemed to be abandoned.

Previously Rule 111 Rule 19 (1) – Designation of inventor required if applicant not inventor or sole inventor Rule 159 (1) – Designation of inventor due within 31 months of international filing date, or if priority claimed, of priority date Rule 52 (1) – Content of declaration of priority Rule 53 (2) – Certified copy deemed duly filed if available under conditions determined by EPO president Rule 159 (1) – Priority details and certified copy of priority documents due within 31 months of priority date Rule 159 (1) – Sequence listing due within 31 months of international filing date, or if priority claimed, of priority date Rule 30 (2) – Late-filed sequence listing is not part of the description Rule 30 (3) – Can file sequence listing within two months of request from EPO if extra fee paid. Failure to comply results in application being refused Rule 159 (1) – Address and nationality information to be provided and authorised representative to be appointed by non-EPC applicants within 31 months of international filing date, or if priority claimed, of priority date Article 133 (2) – Appointment of authorised representative required for non-EPC applicants

Rule 163 Examination of certain formal requirements by the European Patent Office (1) Where the designation of the inventor under Rule 19, paragraph 1, has not yet been made within the period under Rule 159, paragraph 1, the European Patent Office shall invite the applicant to make the designation within two months.

(2) Where the priority of an earlier application is claimed and the file number of the previous application or the copy thereof provided for in Rule 52, paragraph 1, and Rule 53 have not yet been submitted within the period under Rule 159, paragraph 1, the European Patent Office shall invite the applicant to furnish that number or copy within two months. Rule 53, paragraph 2, shall apply.

(3) Where, at the expiry of the period under Rule 159, paragraph 1, a sequence listing complying with the standard provided for in the Administrative Instructions under the PCT is not available to the European Patent Office, the applicant shall be invited to file a sequence listing complying with the Rules laid down by the President of the European Patent Office within two months. Rule 30, paragraphs 2 and 3, shall apply mutatis mutandis.

(4) Where, at the expiry of the period under Rule 159, paragraph 1, the address, the nationality or the State in which his residence or principal place of business is located is missing in respect of any applicant, the European Patent Office shall invite the applicant to furnish these indications within two months.

(5) Where, at the expiry of the period under Rule 159, paragraph 1, the requirements of Article 133, paragraph 2, have not been satisfied, the European Patent Office shall invite the applicant to appoint a professional representative within two months.

(6) If the deficiencies noted under paragraphs 1, 4 or 5 are not corrected in due time, the European patent application shall be refused. If the deficiency noted under paragraph 2 is not corrected in due time, the right of priority shall be lost for the application.

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Part X: International and Euro-PCT Applications Rule 164 Unity of invention and further searches

Article 153

Previously Rule 112

(1) If the European Patent Office considers that the application documents that are to serve as the basis for the supplementary European search do not comply with the requirement of unity of invention, it shall: (a) draw up a partial supplementary search report on those parts of the application that relate to the invention, or the group of inventions within the meaning of Article 82, first mentioned in the claims; (b) inform the applicant that, for the supplementary European search report to cover the other inventions, a further search fee must be paid, in respect of each invention involved, within a period of two months; and (c) draw up the supplementary European search report for the parts of the application relating to inventions in respect of which search fees have been paid.

(2) If the supplementary European search report is dispensed with and the Examining Division considers that in the application documents that are to serve as the basis for examination an invention, or a group of inventions within the meaning of Article 82, is claimed that was not searched by the European Patent Office in its capacity as International Searching Authority or Authority specified for supplementary international search, the Examining Division shall: (a) inform the applicant that a search will be performed in respect of any such invention for which a search fee is paid within a period of two months

Article 82 – Unity of invention Time limit cannot be extended using further processing - Rule 135 (2)

Article 82 – Unity of invention

Time limit cannot be extended using further processing - Rule 135 (2)

(b) issue the results of any search performed in accordance with paragraph (a) together with: –

a communication under Article 94, paragraph 3, and Rule 71, paragraphs 1 and 2, in which it shall give the applicant the opportunity to comment on these results and to amend the description, claims and drawings, or

–

a communication under Rule 71, paragraph 3, and

(c) where appropriate, in the communication issued under paragraph (b), invite the applicant to limit the application to one invention, or group of inventions within the meaning of Article 82, for which a search report was drawn up by the European Patent Office in its capacity either as International Searching Authority or as Authority specified for supplementary international search, or for which a search was performed in accordance with the procedure under paragraph (a).

(3) In the procedure under paragraph 2(a), Rules 62a and 63 shall apply mutatis mutandis.

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Article 94(3) and Rule 71(1) and (2) – If application does not fulfil requirements for grant, applicant invited to file observations and/or amendments.

Rule 71(3) – Notification of proposed text for grant

Article 82 – Unity of invention

Rule 62a – Applicant invited to select claims to be searched if application contains multiple independent claims Rule 63 – Procedure if EPO believes a meaningful search is impossible

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Article 153 Rule 62 – Search report to be accompanied by an opinion on allowability Rule 70(2) – Applicant asked whether they wish to proceed in the light of the search report

A Guide to the EPC 2000 (4) Rule 62 and Rule 70, paragraph 2, shall not apply to the results of any search performed in accordance with paragraph 2.

(5) Any fee paid under paragraphs 1 or 2 shall be refunded if the applicant requests a refund and the Examining Division finds that the communication under paragraphs 1(b) or 2(a) was not justified.

Other Relevant Rules Rule 19 Designation of the inventor Rule 25 Certificate of exhibition Rule 30 Requirements of European patent applications relating to nucleotide and amino acid sequences Rule 39 Designation fees Rule 51 Payment of renewal fees Rule 52 Declaration of priority Rule 53 Priority documents Rule 62 Extended European search report Rule 62a Applications containing a plurality of independent claims Rule 63 Incomplete search Rule 70 Request for examination Rule 71 Examination procedure Rule 112 Noting of loss of rights Rule 135 Further processing Rule 165 The Euro-PCT application as conflicting application under Article 54, paragraph 3

See Article 81, page 66 See Article 55, page 34 See Article 83, page 70

See Article 79, page 62 See Article 86, page 79 See Article 88, page 84 See Article 88, page 84 See Article 92, page 93 See Article 92, page 93 See Article 92, page 93 See Article 94, page 98 See Article 94, page 98 See Article 113, page 135 See Article 121, page 99 See Article 54, page 32

Comment: The formalities required to bring a PCT application into effect as a European patent application are set out in Rules 159 – 164 EPC. For a PCT application to enter the regional phase, a filing fee must be paid (Rule 159 (1)(c) EPC). Where the PCT application was published in a language other than English, French or German, a translation into one of those languages must also be provided (Rule 159 (1)(a) EPC). An applicant has 31 months from the filing date of the PCT application or from its priority date, if priority has been claimed, to complete these steps (Rule 159 (1) EPC).

An applicant must also pay search, designation and examination fees and request examination if the PCT search report was published more than six months prior to entry into the regional phase (Rules 159 (1)(d), (e) and (f) EPC). If entry into the regional phase occurs more than two years after a PCT application was filed, a renewal fee must also be paid (Rule 159 (1)(g) EPC).

If the invention in a PCT application was disclosed at an international exhibition

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prior to its filing or priority date, the applicant must also provide a certificate of exhibition from the responsible authorities when entering the regional phase (Rule 159 (1)(h) EPC).

The consequences of failure to perform the acts listed in Rule 159 (1) EPC by the 31-month deadline are set out in Rule 160 EPC. Failure to pay the filing, search or designation fees or to provide a required translation or request examination causes the application to be deemed withdrawn (Rule 160 (1) EPC). The deemed withdrawal of the application is communicated to the applicant (Rule 160 (2) EPC).

The consequences of failure to pay the fees, provide a translation or request examination in due time can be avoided using further processing provided the omitted act is completed and an additional fee is paid within two months of notification of the omission (Article 121 and Rule 135 EPC). The additional fee amounts to a 50% surcharge in the case of failure to pay fees and €250 for failing to file a translation or to request examination in due time (Article 2 (12) of the Rules Relating to Fees). If the two-month deadline for requesting further processing is missed despite the applicant taking all due care, re-establishment of rights under Article 122 EPC is possible.

If renewal fees due on entry into the regional phase are not paid, they may be paid up to 37 months from the filing date of the PCT application or, if priority is claimed, up to 37 months from the priority date, on payment of a 50% surcharge (Rule 51 (2) EPC and Article 2 (5) of the Rules Relating to Fees; see commentary on Article 86 EPC).

Following entry into the regional phase, the EPO issues a communication setting a six-month term for filing amendments to a Euro-PCT application (Rule 161 EPC).

If the EPO previously handled an application as either the International Search Authority or the International Preliminary Examination Authority, an applicant is required to file a response to any deficiencies identified by the EPO during the international phase. If this is not done on entry into the regional phase, the EPO will set a six-month deadline for filing the response (Rule 161 (1) EPC). Failure to respond within the deadline will result in the application being deemed withdrawn.

Further processing is available and an application will be reinstated if the response is filed and the fee for further processing is paid within two months of notification of loss of rights (Article 121 and Rule 135 EPC).

Rule 162 EPC concerns claims fees due on an ex-PCT patent application. Such fees are payable for each claim in excess of 15 and fall due within 31 months of the filing date of an international patent application or within 31 months of the priority date, if priority is claimed. Excess claims fee can be paid without any additional uplift within the six-month period for filing amendments, and if amendments to the claims are made the excess claims fees are assessed on the basis of the amended rather than the original claims (Rule 162 (2) EPC). If amendments reduce the

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number of claims after excess claims fees have already been paid, the EPO will give a proportionate refund of the excess claims fees (Rule 162 (3) EPC). If required excess claims fees are not paid, the claims are considered abandoned to the extent of non-payment (Rule 162 (4) EPC). It is possible to revive the claims using further processing if the fees are paid within two months of notification of the omission together with a 50% uplift (Article 121 and Rule 135 EPC and Article 2 (12) of the Rules Relating to Fees). If the two-month deadline for requesting further processing is missed despite the applicant taking all due care, re-establishment of rights under Article 122 EPC is possible.

When a PCT application enters the regional phase, the EPO checks for a designation of inventor, declarations of priority, certified copies of priority documents, sequence listings, the applicant’s address, nationality and state of residence or principal place of business, and the appointment of a professional representative (Rule 163 (1) – (5) EPC). If any of these is required but omitted, the EPO will invite the applicant to make good the omission within a two-month period. Failure to comply results in the application being refused or, in the case of omitted priority details or a required certified copy of a priority document, in the loss of the claim to priority. Again, the consequences can be avoided using further processing provided the omitted act is completed and an additional fee of €250 is paid within two months of notification of loss of rights (Article 121 and Rule 135 EPC and Article 2 (12) of the Rules Relating to Fees). If the two-month deadline for requesting further processing is missed despite the applicant taking all due care, re-establishment of rights under Article 122 EPC is possible.

Unless the EPO has already undertaken a search or supplementary search in the international phase, the EPO will conduct a supplementary search where the International Searching Authority was one other than the Austrian, Nordic, Finish, Swedish or Spanish Patent Offices.

If the EPO considers the claims that are to serve as the basis for the supplementary European search relate to more than one invention, initially the EPO will draw up a partial supplementary search report in respect of the first invention or group of inventions in the claims (Rule 164 (1) (a) EPC) and issue a partial search report together with an official letter setting a deadline for further search fees to be paid (Rule 164 (1) (b) EPC). Further searches are then conducted only to the extent that the further fees are paid (Rule 164(1) (c) EPC). It is not possible to extend the deadline for paying for extra searches using further processing (Rule 135 (2) EPC).

If the supplementary European search report is dispensed with but the Examining Division considers that the application documents that are to serve as the basis for examination claim an invention that was not searched in the International Phase, the Examining Division will issue an official letter setting a

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deadline for paying search fees to have any such claims searched (Rule 164 (2) (a) EPC). This deadline for paying for extra searches cannot be extended using further processing (Rule 135 (2) EPC).

In such cases, if an application contains more than one independent claim per claim category (e.g. apparatus, method, etc.) and the invention does not concern either: a plurality of independent products or apparatus; different uses of a product or apparatus or alternative solutions to a particular problem, the EPO will ask the applicant to indicate which previously unsearched independent claims are to be searched (Rule 164(3) and Rule 62a (1) EPC). The EPO will then, if the additional search fee is paid, proceed only to search the claim(s) identified by the applicant or, if an applicant pays the requested fees but does not identify which claims are to be searched, the first unsearched claim in each claim category (Rule 62a (1) EPC). If the EPO considers the nature of the application is such that it is impossible to carry out a meaningful search of the unsearched claims, the EPO will ask the applicant to identify the subject-matter that should be searched (Rule 164 (3) and Rule 63 (1) EPC). If no response is filed within the time period, or the statement is insufficient to enable the EPO to conduct a search, the EPO will either issue a declaration that conducting a search is not possible in lieu of a search report or will draw up only a partial search (Rule 63 (2) EPC).

If the Examining Division does ask an applicant to pay for additional searches, the additional search results are – if the Examining Division considers that an application is not in order for grant – provided to the applicant with an official letter identifying any objections to grant and inviting the applicant to make appropriate amendments (Rule 164 (2)(b) EPC). Any unsearched claims will have to be deleted from the application (Rule 164 (2)(c) EPC).

If, having conducted the additional search the Examining Division considers that an application is in order for grant, the Examining Division will issue the results of the additional search alongside a proposed text for grant (Rule 164 (2)(b) EPC) and will refund any additional search fee if the Examining Division determines that the request was not justified (Rule 164(5) EPC).

G4/08 held that if a PCT application is filed and published in English, French or German, the language of proceedings when that application is prosecuted before the EPO is fixed and cannot be changed by an applicant filing a translation into a different EPO language when entering the regional phase.

Case law on the EPO as a designated or elected office under the PCT may be found in the Case Law of the Boards of Appeal of the EPO, section VI – B, pages 1102-1106. The initial processing of Euro-PCT patent applications by the EPO is also discussed in the Guidelines for Examination in the EPO, Part A, Chapter VII. The role of the EPO as a designated or elected office under the PCT is discussed in the Guidelines for Examination in the EPO, in Part E, Chapter VIII.

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Articles 154-165

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Content transferred to Article 152 and Rule 158

Article 154 The European Patent Office as an International Searching Authority (deleted)

Content transferred to Article 152 and Rule 158

Article 155 The European Patent Office as an International Preliminary Examining Authority (deleted)

Content transferred to Article 153 and Rule 159

Article 156 The European Patent Office as an elected Office (deleted)

Content transferred to Article 153

Article 157 International search report (deleted)

Content transferred to Article 153

Article 158 Publication of the international application and its supply to the European Patent Office (deleted)

Articles 159 – 163 are obsolete and have been deleted save for Article 160 (2) (appointment of national judges to Enlarged Board of Appeal) and Article 163 (admission of professional representatives from new accession states), which were transferred to Articles 11 (5) and 134 (3) respectively.

PART XI TRANSITIONAL PROVISIONS (deleted)

PART XII FINAL PROVISIONS Article 164 Implementing Regulations and Protocols (1) The Implementing Regulations, the Protocol on Recognition, the Protocol on Privileges and Immunities, the Protocol on Centralisation, Article 69 – Extent of protection the Protocol on the Interpretation of Article 69 and the Protocol on Staff conferred by European patent or Complement shall be integral parts of this Convention. patent application

(2) In case of conflict between the provisions of this Convention and those of the Implementing Regulations, the provisions of this Convention shall prevail.

Article 165 Signature – Ratification (1) This Convention shall be open for signature until 5 April 1974 by the States which took part in the Inter-Governmental Conference for the setting up of a European System for the Grant of Patents or were informed of the holding of that conference and offered the option of taking part therein.

(2) This Convention shall be subject to ratification; instruments of ratification shall be deposited with the Government of the Federal Republic of Germany.

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Articles 166-169

Article 166 Accession (1) This Convention shall be open to accession by: (a) the States referred to in Article 165, paragraph 1;

Article 165 (1) – States invited

(b) any other European State at the invitation of the Administrative to original EPC conference Council.

(2) Any State which has been a party to the Convention and has ceased to be so as a result of the application of Article 172, paragraph 4, may Article 172 (4) – Failure of Contracting State to ratify amendagain become a party to the Convention by acceding to it. ments to EPC

(3) Instruments of accession shall be deposited with the Government of the Federal Republic of Germany.

Article 167 Reservations (deleted) Article 168 Territorial field of application (1) Any Contracting State may declare in its instrument of ratification or accession, or may inform the Government of the Federal Republic of Germany by written notification at any time thereafter, that this Convention shall be applicable to one or more of the territories for the external relations of which it is responsible. European patents granted for that Contracting State shall also have effect in the territories for which such a declaration has taken effect.

(2) If the declaration referred to in paragraph 1 is contained in the instrument of ratification or accession, it shall take effect on the same date as the ratification or accession; if the declaration is notified after the deposit of the instrument of ratification or accession, such notification shall take effect six months after the date of its receipt by the Government of the Federal Republic of Germany.

(3) Any Contracting State may at any time declare that the Convention shall cease to apply to some or to all of the territories in respect of which it has given notification pursuant to paragraph 1. Such declaration shall take effect one year after the date on which the Government of the Federal Republic of Germany received notification thereof.

Article 169 Entry into force (1) This Convention shall enter into force three months after the deposit of the last instrument of ratification or accession by six States on whose territory the total number of patent applications filed in 1970 amounted to at least 180 000 for all the said States.

(2) Any ratification or accession after the entry into force of this Convention shall take effect on the first day of the third month after the deposit of the instrument of ratification or accession.

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Articles 170-173

A Guide to the EPC 2000 Article 170 Initial contribution (1) Any State which ratifies or accedes to this Convention after its entry into force shall pay to the Organisation an initial contribution, which shall not be refunded.

(2) The initial contribution shall be 5% of an amount calculated by applying the percentage obtained for the State in question, on the date on which ratification or accession takes effect, in accordance with the scale Article 40 (3) and (4) – Addi- provided for in Article 40, paragraphs 3 and 4, to the sum of the special tional payments by Contracting financial contributions due from the other Contracting States in respect States to EPO where European of the accounting periods preceding the date referred to above.

Patent Organisation cannot balance its budget

(3) In the event that special financial contributions were not required in respect of the accounting period immediately preceding the date referred to in paragraph 2, the scale of contributions referred to in that paragraph shall be the scale that would have been applicable to the State concerned in respect of the last year for which financial contributions were required.

Article 171 Duration of the Convention The present Convention shall be of unlimited duration.

Article 172 Revision (1) This Convention may be revised by a Conference of the Contracting States.

(2) The Conference shall be prepared and convened by the Administrative Council. The Conference shall not be validly constituted unless at least three quarters of the Contracting States are represented at it. Adoption of the revised text shall require a majority of three quarters of the Contracting States represented and voting at the Conference.

Abstentions shall not be considered as votes.

(3) The revised text shall enter into force when it has been ratified or acceded to by the number of Contracting States specified by the Conference, and at the time specified by that Conference.

(4) Such States as have not ratified or acceded to the revised text of the Convention at the time of its entry into force shall cease to be parties to this Convention as from that time.

Article 173 Disputes between Contracting States (1) Any dispute between Contracting States concerning the interpretation or application of the present Convention which is not settled by negotiation shall be submitted, at the request of one of the States concerned, to the Administrative Council, which shall endeavour to bring about agreement between the States concerned.

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Articles 174-177

(2) If such agreement is not reached within six months from the date when the dispute was referred to the Administrative Council, any one of the States concerned may submit the dispute to the International court of Justice for a binding decision.

Article 174 Denunciation Any Contracting State may at any time denounce this Convention.

Denunciation shall be notified to the Government of the Federal Republic of Germany. It shall take effect one year after the date of receipt of such notification.

Article 175 Preservation of acquired rights (1) In the event of a State ceasing to be party to this Convention in accordance with Article 172, paragraph 4, or Article 174 rights already Article 172 (4) – Failure of Contracting State to ratify amendacquired pursuant to this Convention shall not be impaired. ments to EPC

(2) A European patent application which is pending when a designated Article 174 – Denunciation of State ceases to be party to the Convention shall be processed by the EPC by Contracting State European Patent Office, as far as that State is concerned, as if the Convention in force thereafter were applicable to that State.

(3) Paragraph 2 shall apply to European patents in respect of which, on the date mentioned in that paragraph, an opposition is pending or the opposition period has not expired.

(4) Nothing in this Articles hall affect the right of any State that has ceased to be a party to this Convention to treat any European patent in accordance with the text to which it was a party.

Article 176 Financial rights and obligations of Contracting States (1) Any State which has ceased to be a party to this Convention in accordance with Article 172, paragraph 4, or Article 174, shall have the special financial contributions which it has paid pursuant to Article 40, paragraph 2, refunded to it by the Organisation only at the time when and under the conditions whereby the Organisation refunds special financial contributions paid by other States during the same accounting period.

Article 172 (4) – Failure of Contracting State to ratify amendments to EPC Article 174 – Denunciation of EPC by Contracting State Article 40 (2) – Additional payments by Contracting States to EPO at request of EPO President where European Patent Organisation cannot balance its budget

(2) The State referred to in paragraph 1 shall, even after ceasing to be a party to this Convention, continue to pay the proportion pursuant to Article 39 of renewal fees in respect of European patents remaining in force in that State, Article 39 – Conditions for payat the rate current on the date on which it ceased to be a party.

Article 177 Languages of the Convention (1) This Convention, drawn up in a single original, in the English, French and German languages, shall be deposited in the archives of the Government of the Federal Republic of Germany, the three texts being equally authentic.

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ments by Contracting States to EPO in respect of renewal fees relating to European patents

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Articles 177-178

A Guide to the EPC 2000 (2) The texts of this Convention drawn up in official languages of Contracting States other than those specified in paragraph 1 shall, if they have been approved by the Administrative Council, be considered as official texts. In the event of disagreement on the interpretation of the various texts, the texts referred to in paragraph 1 shall be authentic.

Article 178 Transmission and notifications (1) The Government of the Federal Republic of Germany shall draw up certified true copies of this Convention and shall transmit them to the Governments of all signatory or acceding States.

(2) The Government of the Federal Republic of Germany shall notify to the Governments of the States referred to in paragraph 1: (a) the deposit of any instrument of ratification or accession; Article 168 – Declarations by Contracting States as to effect of EPC in national territories Article 174 – Denunciation of EPC by Contracting State

(b) any declaration or notification received pursuant to Article 168; (c) any denunciation received pursuant to Article 174 and the date on which such denunciation comes into force.

(3) The Government of the Federal Republic of Germany shall register this Convention with the Secretariat of the United Nations.

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Protocol on Recognition

PROTOCOL ON JURISDICTION AND THE RECOGNITION OF DECISIONS IN RESPECT OF THE RIGHT TO THE GRANT OF A EUROPEAN PATENT (PROTOCOL ON RECOGNITION) of 5 October 1973 Section I Jurisdiction Article 1 (1) The courts of the Contracting States shall, in accordance with Articles 2 to 6, have jurisdiction to decide claims, against the applicant, to the right to the grant of a European patent in respect of one or more of the Contracting States designated in the European patent application.

(2) For the purposes of this Protocol, the term “courts” shall include authorities which, under the national law of a Contracting State, have jurisdiction to decide the claims referred to in paragraph 1. Any Contracting State shall notify the European Patent Office of the identity of any authority on which such a jurisdiction is conferred, and the European Patent Office shall inform the other Contracting States accordingly.

(3) For the purposes of this Protocol, the term “Contracting State“ refers to a Contracting State which has not excluded application of this Protocol pursuant to Article 167 of the Convention.

Article 2 Subject to Articles 4 and 5, if an applicant for a European patent has his residence or principal place of business within one of the Contracting States, proceedings shall be brought against him in the courts of that Contracting State.

Article 3 Subject to Articles 4 and 5, if an applicant for a European patent has his residence or principal place of business outside the Contracting States, and if the party claiming the right to the grant of the European patent has his residence or principal place of business within one of the Contracting States, the courts of the latter State shall have exclusive jurisdiction.

Article 4 Subject to Article 5, if the subject-matter of a European patent application is the invention of an employee, the courts of the Contracting State, if any, whose law determines the right to the European patent pursuant to Article 60, paragraph 1, second sentence, of the Convention, shall have exclusive jurisdiction over proceedings between the employee and the employer.

Article 5 (1) If the parties to a dispute concerning the right to the grant of a European patent have concluded an agreement, either in writing or verbally with written confirmation, to the effect that a court or the courts of a particular Contracting State shall decide on such a dispute, the court or courts of that State shall have exclusive jurisdiction.

(2) However, if the parties are an employee and his employer, paragraph 1 shall only apply in so far as the national law governing the contract of employment allows the agreement in question.

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Protocol on Recognition Article 6 In cases where neither Articles 2 to 4 nor Article 5, paragraph 1, apply, the courts of the Federal Republic of Germany shall have exclusive jurisdiction.

Article 7 The courts of Contracting States before which claims referred to in Article 1 are brought shall of their own motion decide whether or not they have jurisdiction pursuant to Articles 2 to 6.

Article 8 (1) In the event of proceedings based on the same claim and between the same parties being brought before courts of different Contracting States, the court to which a later application is made shall of its own motion decline jurisdiction in favour of the court to which an earlier application was made.

(2) In the event of the jurisdiction of the court to which an earlier application is made being challenged, the court to which a later application is made shall stay the proceedings until the other court takes a final decision.

Section II Recognition Article 9 (1) Subject to the provisions of Article 11, paragraph 2, final decisions given in any Contracting State on the right to the grant of a European patent in respect of one or more of the Contracting States designated in the European patent application shall be recognised without requiring a special procedure in the other Contracting States.

(2) The jurisdiction of the court whose decision is to be recognised and the validity of such decision may not be reviewed.

Article 10 Article 9, paragraph 1, shall not be applicable where: (a) an applicant for a European patent who has not contested a claim proves that the document initiating the proceedings was not notified to him regularly and sufficiently early for him to defend himself; or (b) an applicant proves that the decision is incompatible with another decision given in a Contracting State in proceedings between the same parties which were started before those in which the decision to be recognised was given.

Article 11 (1) In relations between any Contracting States the provisions of this Protocol shall prevail over any conflicting provisions of other agreements on jurisdiction or the recognition of judgments.

(2) This Protocol shall not affect the implementation of any agreement between a Contracting State and a State which is not bound by the Protocol.

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Rules Relating to Fees

Rules Relating to Fees (Effective 1 April 2014) Article 1 The following shall be levied in accordance with the provisions contained in these Rules : (a) fees due to be paid to the European Patent Office (hereinafter referred to as the Office) as provided for in the Convention and in the Implementing Regulations and the fees and expenses which the President of the Office lays down pursuant to Article 3, paragraph 1; (b) fees and expenses pursuant to the Patent Cooperation Treaty (hereinafter referred to as the PCT), the amounts of which may be fixed by the Office.

Article 2 Fees provided for in the Convention and in the Implementing Regulations (1) The fees due to be paid to the Office under Article 1 shall unless otherwise provided in paragraph 2 shall be as follows: 1. Filing fee (Article 78, paragraph 2, Rule 38, paragraph 2) where: – the European patent application or, in the case of an international application, the form for entry into the European phase (EPO Form 1200) is filed online..................................€120 – the European patent application or, in the case of an international application, the form for entry into the European phase (EPO Form 1200) is not filed online...........................€210 1a. Additional fee for a European patent application comprising more than 35 pages plus €15 for the 36th and each subsequent page (not counting pages forming part of a sequence listing) (Rule 38, paragraph 2) 1b. Additional fee in the case of a divisional application filed in respect of any earlier application which is itself a divisional application (Rule 38, paragraph 4): – fee for a divisional application of second generation.......................................................................€210 – fee for a divisional application of third generation ..........................................................................€420 – fee for a divisional application of fourth generation ........................................................................€630 – fee for a divisional application of fifth or a subsequent generation...............................................€840 2. Search fee in respect of: – a European or supplementary European search on an application filed on or after 1 July 2005 (Article 78, paragraph 2, Rule 62, Rule 64, paragraph 1, Article 153, paragraph 7) ...........€1,285 – a European or supplementary European search on an application filed before 1 July 2005 (Article 78, paragraph 2, Rule 64, paragraph 1, Article 153, paragraph 7) .......................................€875 – an international search (Rule 16.1 PCT and Rule 158, paragraph 1) ..........................................€1,875 – a supplementary international search (Rule 45bis.3(a) PCT) .......................................................€1,875 3. Designation fee for European patent applications filed on or after 1 April 2009 for one or more Contracting States designated (Article 79, paragraph 2) .......................................€580

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Rules Relating to Fees 4. Renewal fees for the European patent applications (Article 86, paragraph 1), calculated in each case from the date of filing of the application: – for the 3rd year ..........................................................................................€465 – for the 4th year ..........................................................................................€580 – for the 5th year ..........................................................................................€810 – for the 6th year .......................................................................................€1,040 – for the 7th year .......................................................................................€1,155 – for the 8th year .......................................................................................€1,265 – for the 9th year .......................................................................................€1,380 – for the 10th and each subsequent year ...............................................€1,560 5. Additional fee for belated payment of a renewal fee for the European patent application (Rule 51, paragraph 2) ............................50% of the belated renewal fee 6. Examination fee (Article 94, paragraph 1): – an application filed before 1 July 2005 ...............................................................................€1,805 – an application filed on or after 1 July 2005 ........................................................................€1,620 – an international application filed on or after 1 July 2005 for which no supplementary European search report is drawn up (Article 153, paragraph 7) ......€1,805 7. Fee for grant, including fee for publication of the European patent specification (Rule 71, paragraph 3) for European patent applications filed on or after 1 April 2009 and international applications entering the regional phase on or after 1 April 2009 .....................€915 8. Fee for publishing a new specification of the European patent (Rule 82, paragraph 2, Rule 95, paragraph 3) .................................................................................................................................€75 9. Surcharge for late performance of the acts required to maintain the European patent in amended form (Rule 82, paragraph 3, Rule 95, paragraph 3 – flat-rate fee .....................................€120 10. Opposition fee (Article 99, paragraph 1, and Article 105, paragraph 2).....................................€775 10a Limitation or revocation fee (Article 105a, paragraph 1): – request for limitation ....................................................................................€1,155 – request for revocation......................................................................................€520 11. Fee for appeal (Article 108) ............................................................................................................€1,860 11a. Fee for petition for review (Article 112a, paragraph 4) ...........................................................€2,880 12. Fee for further processing (Rule 135, paragraph 1): – in the event of late payment of a fee ......................................................50% of the relevant fee – in the event of late performance of the acts required under Rule 71, paragraph 3 ........€250 – other cases .................................................................................................................................€250 13. Fee for re-establishment of rights / fee for request for re-establishment of rights (Rule 136, paragraph 1, Rule 26bis.3 (d) PCT, Rule 49ter.2 (d) PCT).................................................€635 198

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Rules Relating to Fees

14. Conversion fee (Article 135, paragraph 3, and Article 140)............................................................€75 14a. Fee for late furnishing of a sequence listing (Rule 30, paragraph 3) .........................................€230 15. Claims fee (Rule 45, paragraph 1, Rule 71, paragraph 4, and Rule 162, paragraph 1) In respect of an application filed on or after 1 April 2009: – for the 16th and each subsequent claim up to the limit of 50 ...........................................€235 – for the 51st and each subsequent claim ................................................................................€580 16. Fee for the awarding of costs (Rule 88, paragraph 3) .....................................................................€75 17. Fee for the conservation of evidence (Rule 123, paragraph 3) ......................................................€75 18. Transmittal fee for an international application (Rule 157, paragraph 4) ..................................€130 19. Fee for the preliminary examination of an international application (Rule 58 PCT and Rule 158, paragraph 2) .........................................................................................€1,930 20. Fee for a technical opinion (Article 25) ........................................................................................€3,860 21. Protest fee (Rules 40.2 (e) and 68.3 (e) PCT) ...................................................................................€865

22. Review fee (Rule 45bis.6(c) PCT........................................................................................................€865

(2) For European patent applications filed before 1 April 2009 and international applications which entered the regional phase before that date, the amount of the fees specified in Article 2, item 3, item 3a, item 7 and item 15 of the Rules relating to Fees as in force until 31 March 2009 shall be as follows: 3. Designation fee for European patent applications filed before 1 April 2009 for each Contracting State designated (Article 79, paragraph 2), designation fees being deemed paid for all Contracting States upon payment of seven times the amount of this fee ...................€100 3a. Joint designation fee for the Swiss Confederation and the Principality of Liechtenstein........€100

7. Fee for grant, including fee for publication of the European patent specification (Rule 71, paragraph 3) , where the application documents comprise: 7.1 not more than 35 pages .....................................................................................................................€915 7.2 more than 35 pages ........................................€915 plus €15 for the 36th and each subsequent page 15. Claims fee for the 16th and each subsequent claim (Rule 45, paragraph 1, Rule 71, paragraph 4, Rule 162, paragraph 1): ............................................................................................................................€235

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Rules Relating to Fees Article 3 Fees, expenses and prices laid down by the President of the Office (1) The President of the Office shall lay down the amount of the administrative fees provided for in the Implementing Regulations and, where appropriate, the amount of the fees and expenses for any services rendered by the Office other than those specified in Article 2.

(2) He shall also lay down the prices of the publications referred to in Articles 93, 98, 103 and 129 of the Convention.

(3) The amounts of the fees provided for in Article 2 and of the fees and expenses laid down in accordance with paragraph 1 shall be published in the Official Journal and on the website of the EPO.

Article 4 Due date for fees (1) Fees in respect of which the due date is not specified in the provisions of the Convention or of the PCT or of the Implementing Regulations thereto shall be due on the date of receipt of the request for the service incurring the fee concerned.

(2) The President of the Office may decide not to make services within the meaning of paragraph 1 dependent upon the advance payment of the corresponding fee.

Article 5 Payment of fees (1) The fees due to the Office shall be paid in euros: (a) by payment or transfer to a bank account held by the Office, (b) by payment or transfer to a Giro account held by the Office, or (c) by delivery or remittance of cheques made payable to the Office.

(2) The President of the Office may allow other methods of paying fees than those set out in paragraph 1.

Article 6 Particulars concerning payments (1) Every payment must indicate the name of the person making the payment and must contain the necessary particulars to enable the Office to establish immediately the purpose of the payment.

(2) If the purpose of the payment cannot immediately be established, the Office shall require the person making the payment to notify it in writing of this purpose within such period as it may specify. If he does not comply with this request in due time the payment shall be considered not to have been made.

Article 7 Date to be considered as the date on which payment is made (1) The date on which any payment shall be considered to have been made to the Office shall be as follows:

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Rules Relating to Fees (a) in the cases referred to in Article 5, paragraph 1 (a) and (b): the date on which the amount of the payment or of the transfer is actually entered in a bank account or a Giro account held by the Office; (b) in the case referred to in Article 5, paragraph 1 (c): the date of receipt of the cheque at the Office, provided that the cheque is met.

(2) Where the President of the Office allows, in accordance with the provisions of Article 5, paragraph 2, other methods of paying fees than those set out in Article 5, paragraph 1, he shall also lay down the date on which such payments shall be considered to have been made.

(3) Where, under the provisions of paragraphs 1 and 2, payment of a fee is not considered to have been made until after the expiry of the period in which it should have been made, it shall be considered that this period has been observed if evidence is provided to the Office that the person who made the payment (a) fulfilled one of the following conditions in a Contracting State within the period within which the payment should have been made: (i) he effected the payment through a banking establishment or a post office; (ii) he duly gave an order to a banking establishment or a post office to transfer the amount of the payment; (iii) he despatched at a post office a letter bearing the address of the Office and containing a cheque within the meaning of Article 5, paragraph 1 (c), provided that the cheque is met, and (b) paid a surcharge of 10% on the relevant fee or fees, but not exceeding EUR 150; no surcharge is payable if a condition according to subparagraph (a) has been fulfilled not later than ten days before the expiry of the period for payment.

(4) The Office may request the person who made the payment to produce evidence as to the date on which a condition according to paragraph 3 (a) was fulfilled and, where required, pay the surcharge referred to in paragraph 3 (b), within a period to be specified by it. If he fails to comply with this request or if the evidence is insufficient, or if the required surcharge is not paid in due time, the period for payment shall be considered not to have been observed.

Article 8 Insufficiency of the amount paid A time limit for payment shall in principle be deemed to have been observed only if the full amount of the fee has been paid in due time. If the fee is not paid in full, the amount which has been paid shall be refunded after the period for payment has expired. The Office may, however, in so far as this is possible within the time remaining before the end of the period, give the person making the payment the opportunity to pay the amount lacking. It may also, where this is considered justified, overlook any small amounts lacking without prejudice to the rights of the person making the payment.

Article 9 Refund of search fees (1) The search fee paid for a European or supplementary European search shall be fully refunded if the European patent application is withdrawn or refused or deemed to be withdrawn at a time when the Office has not yet begun to draw up the search report.

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Rules Relating to Fees (2) Where the European search report is based on an earlier search report prepared by the Office on an application whose priority is claimed or an earlier application within the meaning of Article 76 of the Convention or of Rule 17 of the Convention, the Office shall refund to the applicant, in accordance with a decision of its President, an amount which shall depend on the type of earlier search and the extent to which the Office benefits from the earlier search report when carrying out the subsequent search.

Article 10 Refund of the fee for a technical opinion An amount of 75% of the fee for a technical opinion under Article 25 of the Convention shall be refunded if the request for a technical opinion is withdrawn at a time when the Office has not yet begun to draw up the technical opinion.

Article 11 Refund of examination fee The examination fee provided for in Article 94, paragraph 1, of the Convention shall be refunded: (a) in full if the European patent application is withdrawn, refused or deemed to be withdrawn before the Examining Divisions have assumed responsibility; (b) at a rate of 75% if the European patent application is withdrawn, refused or deemed to be withdrawn after the Examining Divisions have assumed responsibility but before substantive examination has begun.

Article 12 Refund of insignificant amounts Where too large a sum is paid to cover a fee, the excess shall not be refunded if the amount is insignificant and the party concerned has not expressly requested a refund. The President of the Office shall determine what constitutes an insignificant amount.

Article 13 Decisions fixing costs which are subject to appeal In accordance with Rule 97, paragraph 2, of the Convention, decisions fixing the amount of costs of opposition proceedings may be appealed if the amount is in excess of the fee for appeal.

Article 14 Reduction of fees (1) The reduction laid down in Rule 6, paragraph 3, of the Convention shall be 30% of the filing fee or examination fee.

(2) Where the European Patent Office has drawn up an international preliminary examination report, the examination fee shall be reduced by 50%. If the report was established on certain parts of the international application in accordance with Article 34, paragraph 3 (c), PCT, the fee shall not be reduced if subject matter not covered by the report is to be examined.

Article 15 Entry into force These Rules shall enter into force on 20 October 1977.

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London Agreement

Agreement on the application of Article 65 of the Convention on the Grant of European Patents The States parties to this Agreement, IN THEIR CAPACITY as Contracting States to the Convention on the Grant of European Patents (European Patent Convention) of 5 October 1973, REAFFIRMING their desire to strengthen co-operation between the States of Europe in respect of the protection of inventions, HAVING REGARD to Article 65 of the European Patent Convention, RECOGNISING the importance of the objective to reduce the costs relating to the translation of European patents, STRESSING the need for widespread adherence to that objective, DETERMINED to contribute effectively to such cost reduction, HAVE AGREED ON THE FOLLOWING PROVISIONS:

Article 1 Dispensation with translation requirements (1) Any State party to this Agreement having an official language in common with one of the official languages of the European Patent Office shall dispense with the translation requirements provided for in Article 65, paragraph 1, of the European Patent Convention.

(2) Any State party to this Agreement having no official language in common with one of the official languages of the European Patent Office shall dispense with the translation requirements provided for in Article 65, paragraph 1, of the European Patent Convention, if the European patent has been granted in the official language of the European Patent Office prescribed by that State, or translated into that language and supplied under the conditions provided for in Article 65, paragraph 1, of the European Patent Convention.

(3) The States referred to in paragraph 2 shall continue to have the right to require that a translation of the claims into one of their official languages be supplied under the conditions provided for in Article 65, paragraph 1, of the European Patent Convention.

(4) Nothing in this Agreement shall be construed as restricting the right of the States parties to this Agreement to dispense with any translation requirement or to apply more liberal translation requirements than those referred to in paragraphs 2 and 3.

Article 2 Translations in case of dispute Nothing in this Agreement shall be construed as restricting the right of the States parties to this Agreement to prescribe that, in the case of a dispute relating to a European patent, the patent proprietor, at his own expense, (a) shall supply, at the request of an alleged infringer, a full translation into an official language of the State in which the alleged infringement took place, (b) shall supply, at the request of the competent court or quasi judicial authority in the course of legal proceedings, a full translation into an official language of the State concerned.

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London Agreement Article 3 Signature – Ratification (1) This Agreement shall be open for signature by any Contracting State to the European Patent Convention until 30 June 2001.

(2) This Agreement shall be subject to ratification. Instruments of ratification shall be deposited with the Government of the Federal Republic of Germany.

Article 4 Accession This Agreement shall, on expiry of the term for signature mentioned in Article 3, paragraph 1, be open to accession by any Contracting State to the European Patent Convention and any State which is entitled to accede to that Convention. Instruments of accession shall be deposited with the Government of the Federal Republic of Germany.

Article 5 Prohibition of reservations No State party to this Agreement may make reservations thereto.

Article 6 Entry into force (1) This Agreement shall enter into force on the first day of the fourth month after the deposit of the last instrument of ratification or accession by eight Contracting States to the European Patent Convention, including the three States in which the most European patents took effect in 1999.

(2) Any ratification or accession after the entry into force of this Agreement shall take effect on the first day of the fourth month after the deposit of the instrument of ratification or accession.

Article 7 Duration of the Agreement This Agreement shall be concluded for an unlimited duration.

Article 8 Denunciation Any State party to this Agreement may denounce it at any time once it has been in force for three years. Notification of denunciation shall be given to the Government of the Federal Republic of Germany. The denunciation shall take effect one year after the date of receipt of such notification. No rights acquired pursuant to this Agreement before the denunciation took effect shall thereby be impaired.

Article 9 Scope This Agreement shall apply to European patents in respect of which the mention of grant was published in the European Patent Bulletin after the Agreement entered into force for the State concerned.

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London Agreement Article 10 Languages of the Agreement This Agreement, drawn up in a single original in the English, French and German languages shall be deposited with the Government of the Federal Republic of Germany, the three texts being equally authentic.

Article 11 Transmissions and notifications (1) The Government of the Federal Republic of Germany shall draw up certified true copies of this Agreement and shall transmit them to the Governments of all signatory or acceding States.

(2) The Government of the Federal Republic of Germany shall notify to the Governments of the States referred to in paragraph 1: (a) any signature; (b) the deposit of any instrument of ratification or accession; (c) the date of entry into force of this Agreement; (d) any denunciation received pursuant to Article 8 and the date on which it will take effect.

(3) The Government of the Federal Republic of Germany shall register this Agreement with the Secretariat of the United Nations.

In WITNESS WHEREOF, the Plenipotentiaries authorised thereto, having presented their Full Powers, found to be in good and due form, have signed this Agreement.

Done at London on 17 October 2000, in one original, in English, French and German, each text being equally authentic.

Comment: The London Agreement is an optional protocol on the application of Article 65 EPC. Under it, any state having English, French or German as an official language agrees to dispense with translation requirements as a prerequisite for bringing a European patent into effect (Article 1 (1) of the London Agreement). States without English, French or German as an official language agree to dispense with any requirements for the translation of descriptions and accompanying drawings, if a patent is granted in an official language of the European Patent Office prescribed by that state (Article 1 (2) of the London Agreement). Such states may continue to require claims to be translated into a national language (Article 1 (3) of the London Agreement). National laws may require a patent proprietor to provide a full translation of a patent to the court and any alleged infringer if any dispute relating to a European patent arises (Article 2 of the London Agreement).

The Agreement has been ratified by Albania, Croatia, Denmark, Finland, France, Germany, Hungary, Iceland, Ireland, Latvia, Liechtenstein, Lithuania, Luxembourg, Monaco, the Netherlands, Slovenia, Sweden, Switzerland, the United Kingdom and the former Yugoslav Republic of Macedonia 205

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London Agreement

France, Germany, Ireland, Luxembourg, Liechtenstein, Monaco, Switzerland and the United Kingdom do not require any translations to be filed in order to bring a European patent into effect.

Latvia, Lithuania and Slovenia and the former Yugoslav Republic of Macedonia require claims to be translated into their national languages in order to have effect.

Croatia, Denmark, Finland, Hungary, Iceland, the Netherlands and Sweden require a full translation of a European patent if granted in French or German. If a European patent is granted in English, only the claims need to be translated.

Albania has not adopted provisions pursuant to Article. 65(1) EPC. Therefore, neither a translation of the claims nor of the patent specification of the European patent granted for Albania is to be supplied.

Full translations into national languages are required in order for a European patent to have effect in the other EPC Contracting States

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Decisions of the Enlarged Board of Appeal

Thematic Index of Decisions and Opinions of the Enlarged Board of Appeal Appeals G1/88 Admissibility of appeal by opponent – Opponent’s silence The fact that an opponent does not make any observations on the text in which the Opposition Division intends to maintain a European patent after being invited to do so under Rule 82 EPC does not render his appeal inadmissible.

G2/91 Reimbursement of appeal fees where several parties have filed an appeal A person who is entitled to appeal but does not do so and instead confines himself to being a party to the appeal proceedings under Article 107, second sentence, EPC, has no independent right to continue the proceedings if the appellant withdraws the appeal.

Appeal fees cannot be reimbursed simply because several parties to proceedings before the EPO have validly filed an appeal against the same decision.

G10/91 Examination of appeals from decisions of the Opposition Division An Opposition Division or a Board of Appeal is not obliged to consider all the grounds for opposition referred to in Article 100 EPC, going beyond the grounds covered by the statement under Rule 76(c) EPC. In principle, the Opposition Division shall examine only such grounds for opposition which have been properly submitted and substantiated in accordance with Article 99(1) in conjunction with Rule 76(c) EPC. Exceptionally, the Opposition Division may in application of Article 114(1) EPC consider other grounds for opposition which, prima facie, in whole or in part would seem to prejudice the maintenance of the European patent.

Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee.

G7/91 and G8/91 Effect of withdrawal of appeal by the sole appellant In so far as the substantive issues settled by the contested decision at first instance are concerned, a Board of Appeal may not continue opposition appeal proceedings after the sole appellant, who was the opponent in the first instance, has withdrawn his appeal.

G2/97 Good faith and protection of legitimate expectations The principle of good faith does not impose any obligation on the Boards of Appeal to notify an appellant that an appeal fee is missing when the notice of appeal is filed so early that the appellant could react and pay the fee in time, if there is no indication – either in the notice of appeal or in any other document filed in relation to the appeal – from which it could be inferred that the appellant would, without such notification, inadvertently miss the time limit for payment of the appeal fee.

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Decisions of the Enlarged Board of Appeal

G1/12 Identity of appellant When a notice of appeal, in compliance with Rule 99(1)(a) EPC, contains the name and the address of the appellant as provided in Rule 41(2)(c) EPC and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, it is possible to correct this error under Rule 101(2) EPC by a request for substitution by the name of the true appellant, provided the requirements of Rule 101(1) EPC have been met.

Proceedings before the EPO are conducted in accordance with the principle of free evaluation of evidence. This also applies to the problems arising in the context of the correction of the name of an appellant.

In cases of an error in the appellant's name, the general procedure for correcting errors under Rule 139, first sentence, EPC is available under the conditions established by the case law of the boards of appeal.

Constitutional issues G5/88, G7/88 and G8/88 Administrative Agreement The capacity of the President of the European Patent Office to represent the European Patent Organisation by virtue of Article 5(3) EPC is one of his functions but is not one of his powers. The extent of the President’s power is governed by the EPC, but not by Article 5(3) EPC. To the extent that the Administrative Agreement dated 29 June 1981 between the President of the EPO and the President of the German Patent Office contains terms regulating the treatment of documents intended for the EPO and received by the German Patent Office in Berlin, the President of the EPO did not himself have the power to enter into such an agreement on behalf of the EPO, at any time before the opening of the Filing Office for the EPO in Berlin on 1 July 1989.

In application of the principle of good faith and the protection of the legitimate expectations of users of the EPO, if a person had at any time, since publication of the Agreement in the Official Journal and before 1 July 1989, filed documents intended for the EPO at the German Patent Office in Berlin (otherwise than by hand), the EPO was bound to treat such documents as if it had received them on the date of receipt at the German Patent Office in Berlin.

G2/90 Responsibilities of the Legal Board of Appeal Under Article 21(3)(c) EPC, the Legal Board of Appeal is competent only to hear appeals against decisions taken by an Examining Division consisting of fewer than four members when the decision does not concern the refusal of a European patent application or the grant of a European patent. In all other cases, i.e. those covered by Article 21(3)(a), (3)(b) and (4) EPC, the Technical Board of Appeal is competent. The provisions relating to competence in Article 21(3) and (4) EPC are not affected by Rule 13(3) EPC. 208

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Decisions of the Enlarged Board of Appeal

G3/03 Reimbursement of the appeal fee following interlocutory revision In the event of interlocutory revision under Article 109(1) EPC, the department of first instance whose decision has been appealed is not competent to refuse a request by an appellant for reimbursement of the appeal fee. Rather, it is the Board of Appeal which would have been competent under Article 21 EPC to deal with the substantive issues of the appeal if no interlocutory revision had been granted that is competent to decide on the request.

G3/95 Inadmissible referral The Enlarged Board of Appeal will refuse to rule on a point of law referred by the President of the EPO if it determines that no conflict between two Board of Appeal decisions has occurred.

G8/95 Responsibility for deciding on a correction of a decision to grant An appeal from a decision of an Examining Division refusing a request under Rule 140 EPC for correction of a decision to grant is to be decided by a Technical Board of Appeal.

G1/02 Formality Officers’ powers Formalities officers may be empowered by the Vice-President of the EPO to refuse applications for failure to fulfil specified formal matters.

G3/08 Patentability of programs for computers In exercising his or her right of referral a President of the EPO is entitled to make full use of the discretion granted by Article 112 (1) (b) EPC, even if his or her appreciation of the need for a referral has changed after a relatively short time.

Different decisions by a single Technical Board of Appeal in differing compositions may be the basis of an admissible referral by the President of the EPO of a point of law to the Enlarged Board of Appeal pursuant to Article 112 (1) (b) EPC. As the wording of Article 112 (1) (b) EPC is not clear with respect to the meaning of “different/abweichende/divergent” decisions the provision has to be interpreted in the light of its object and purpose according to Article 31 of the Vienna Convention on the Law of Treaties (VCLT). The purpose of the referral right under Article 112 (1) (b) EPC is to establish uniformity of law within the European patent system. Having regard to this purpose of the presidential right to refer legal questions to the Enlarged Board of Appeal the notion “different decisions” has to be understood restrictively in the sense of “conflicting decisions”.

The notion of legal development is an additional factor which must be carefully considered when interpreting the notion of “different decision” in Article 112 (1) (b) EPC. Development of the law is an essential aspect of its application, whatever method of interpretation is applied, and is therefore inherent in all judicial activity. Consequently, legal development as such cannot on its own form the basis for a referral, only because 209

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Decisions of the Enlarged Board of Appeal case law in new legal and/or technical fields does not always develop in linear fashion, and earlier approaches may be abandoned or modified.

Legal rulings are characterised not by their verdicts, but by their grounds. The Enlarged Board of Appeal may thus take obiter dicta into account in examining whether two decisions satisfy the requirements of Article 112 (1) (b) EPC. T 424/03, Microsoft does deviate from a view expressed in T 1173/97, IBM, concerning whether a claim to a program on a computer-readable medium necessarily avoids exclusion from patentability under Article 52(2) EPC. However this is a legitimate development of the case law and there is no divergence which would make the referral of this point to the Enlarged Board of Appeal by the President admissible.

The Enlarged Board of Appeal cannot identify any other inconsistencies between the grounds of the decisions which the referral by the President alleges are divergent. The referral is therefore inadmissible under Article 112(1)(b) EPC .

G1/11 Competence of the Board of Appeal A Technical Board of Appeal rather than a Legal Board of Appeal has responsibility to determine an appeal against a decision of the Examining Division refusing the refund search fees paid under Rule 64 (2) EPC.

Correction and amendment G2/88 Change of claim category A change of category of granted claims in opposition proceedings is not open to objection under Article 123(3) EPC if it does not result in extension of the protection conferred by the claims as a whole, when they are interpreted in accordance with Article 69 EPC and its Protocol. In this context, the national laws of the Contracting States relating to infringement should not be considered.

An amendment of granted claims directed to “a compound” and to “a composition including such compound”, so that the amended claims are directed to “the use of that compound in a composition” for a particular purpose, is not open to objection under Article 123(3) EPC. A claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under Article 54(1) EPC provided that such technical feature has not previously been made available to the public.

G3/89 and G11/91 Correction of the parts of a European patent application or European patent relating to disclosure The parts of a European patent application or of a European patent relating to disclosure 210

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Decisions of the Enlarged Board of Appeal (the description, claims and drawings) may be corrected under Rule 139, second sentence, EPC only within the limits of what a skilled person would derive directly, unambiguously and objectively, using common general knowledge as of the date of filing, from the whole of the documents as filed. Such a correction is of a strictly declaratory nature and thus does not infringe the prohibition of extension under Article 123(2) EPC. Evidence of what was common general knowledge on the date of filing may be furnished in connection with an admissible request for correction in any suitable form.

G2/92 Non-payment of further search fees An applicant who fails to pay the further search fees for a non-unitary application when requested to do so by the Search Division under Rule 64(1) EPC cannot pursue that application for the subject-matter in respect of which no search fees have been paid.

Such an applicant must file a divisional application in respect of such subject-matter if he wishes to seek protection for it.

G1/93 Conflicting requirements of Article 123 (2) and (3) EPC If a European patent as granted contains subject-matter that extends beyond the content of the application as filed within the meaning of Article 123(2) EPC and which also limits the scope of protection conferred by the patent, the patent cannot be maintained in opposition proceedings unamended, because the ground for opposition under Article 100(c) EPC prejudices the maintenance of the patent. Nor can it be amended by deleting the limiting subject-matter from the claims, because such amendment would extend the protection conferred in breach of Article 123(3) EPC. Such a patent can, therefore, only be maintained if there is a basis in the application as filed for replacing such subject-matter without violating Article 123(3) EPC. A feature not disclosed in the application as filed added to the application during examination which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter that extends beyond the content of the application as filed within the meaning of Article 123(2) EPC. The ground for opposition under Article 100(c) EPC therefore does not prejudice the maintenance of a European patent that includes such a feature.

G7/93 Amendment after approval of text for grant Until issue of a decision to grant a patent, an Examining Division has a discretion under Rule 137(3), second sentence, EPC, as to whether or not to allow amendment of the application. When exercising such discretion an Examining Division must consider all relevant factors. In particular it must consider and balance the applicant’s interest in obtaining a patent which is legally valid in all of the designated States, and the EPO’s interest in bringing the examination procedure to a close. Having regard to the underlying objective of concluding the granting procedure on the basis of a previously 211

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Decisions of the Enlarged Board of Appeal approved text, the allowance of a request for amendment at such a late stage in the granting procedure will be an exception rather than the rule.

G2/95 Replacement of application The complete documents forming a European patent application, that is the description, claims and drawings, cannot be replaced by way of a correction under Rule 139 EPC by other documents that an applicant had intended to file with its request for grant.

G1/03 and G2/03 Allowability of disclaimers An amendment to a claim by the introduction of a disclaimer may not be refused under Article 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim has a basis in the application as filed.

A disclaimer may be allowable in order to (i) restore novelty by delimiting a claim against the state of the art under Article 54(3) and (4) EPC; (ii) restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC (an anticipation is accidental if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention); or (iii) disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons.

A disclaimer should not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.

A disclaimer that is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to Article 123(2) EPC. A claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC.

G2/10 Disclaiming disclosed subject-matter An amendment to a claim by the introduction of a disclaimer disclaiming from it subjectmatter disclosed in the application as filed infringes Article 123(2) EPC if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.

Determining whether or not that is the case requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after amendment.

G1/10 Request to correct patent Since Rule 140 EPC is not available to correct the text of a patent, a patent proprietor's request for such a correction is inadmissible whenever made, including after the initiation of opposition proceedings.

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Divisional applications G1/05 Correction of divisional applications So far as Article 76(1) EPC is concerned, a divisional application that at its actual date of filing contains subject-matter extending beyond the content of the earlier application as filed can be amended later in order that its subject-matter no longer so extends, even at a time when the earlier application is no longer pending. Furthermore, the same limitations apply to these amendments as to amendments to any other (non-divisional) applications.

G1/06 Sequences of divisionals In the case of a sequence of applications consisting of a root (originating) application followed by divisional applications, each divided from its predecessor, it is a necessary and sufficient condition for a divisional application of that sequence to comply with Article 76(1), second sentence, EPC that anything disclosed in that divisional application be directly and unambiguously derivable from what is disclosed in each of the preceding applications as filed.

G1/09 Pending Application Even if no appeal is ever filed, a European patent application which has been refused by a decision of an Examining Division remains pending for the purposes of filing divisional applications until the end of the expiry of the time limit for filing a notice of appeal against the decision to refuse.

Exclusion and objection of Board Members G5/91 Suspected partiality of a member of an Opposition Division Although Article 24 EPC applies only to members of the Boards of Appeal and of the Enlarged Board of Appeal, the requirement of impartiality applies in principle also to employees of the departments of first instance of the EPO taking part in decisionmaking activities affecting the rights of any party.

There is no legal basis under the EPC for any separate appeal against an order of a director of a department of first instance such as an Opposition Division rejecting an objection to a member of the division on the grounds of suspected partiality. However, the composition of the Opposition Division may be challenged on such grounds in an appeal against the final decision of the division or against an interlocutory decision under Article 106(3) EPC allowing separate appeal.

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Intervention G4/91 Intervention in opposition proceedings It is a prerequisite for intervention in opposition proceedings by an assumed infringer pursuant to Article 105 EPC that opposition proceedings are in existence at the point in time when a notice of intervention is filed. A decision by an Opposition Division on the issues raised by the opposition is a final decision in the sense that thereafter the Opposition Division has no power to change its decision. Proceedings before an Opposition Division are terminated upon issue of such a final decision, regardless of when such decision takes legal effect. In a case where, after issue of a final decision by an Opposition Division, no appeal is filed by a party to the proceedings before the Opposition Division, a notice of intervention filed during the two-month period for appeal provided by Article 108 EPC has no legal effect.

G12/91 Conclusion of written proceedings The decision-making process following written proceedings is completed on the date the decision to be notified is handed over to the EPO postal service by the decisionmaking department’s formalities section.

G1/94 Scope of intervention during appeal proceedings Intervention of the assumed infringer under Article 105 EPC is admissible during pending appeal proceedings and may be based on any ground for opposition under Article 100 EPC.

G3/04 Status of intervener in appeal proceedings An intervener who intervenes in an opposition when an appeal is pending only acquires the status of an opponent. Although an intervener is entitled to raise new grounds of opposition, all proceedings are terminated in respect of all substantive issues, including the new grounds for opposition raised by the intervener, if subsequently the sole, or each, appeal is withdrawn.

Opposition G1/86 Re-establishment of rights of opponent Article 122 EPC is not to be interpreted as being applicable only to the applicant and patent proprietor. An appellant as opponent may have his rights re-established under Article 122 EPC if he has failed to observe the time limit for filing the statement of grounds of appeal.

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G4/88 Transfer of opposition An opposition pending before the European Patent Office may be transferred or assigned to a third party as part of the opponent’s business assets together with the assets in the interests of which the opposition was filed.

G1/91 Unity in opposition – legally irrelevant Unity of invention (Article 82 EPC) does not come under the requirements that a European patent and the invention to which it relates must meet under Article 102(3) EPC when the patent is maintained in amended form. It is consequently irrelevant in opposition proceedings whether the European patent as granted or amended meets the requirement of unity.

G9/91 Extent of power to examine opposition The power of an Opposition Division or a Board of Appeal to examine and decide on the maintenance of a European patent under Articles 101 and 102 EPC depends upon the extent to which the patent is opposed in the notice of opposition pursuant to Rule 76(c) EPC. However, the subject-matter of claims depending on an independent claim that falls in opposition or appeal proceedings may be examined as to patentability even if they have not been explicitly opposed, provided their validity is prima facie in doubt on the basis of already available information.

G8/93 Withdrawal of opposition without withdrawal of appeal The withdrawal of an opposition by an opponent, who is the sole appellant, immediately and automatically terminates the appeal proceedings, irrespective of whether the patent proprietor agrees to termination of those proceedings and even if in the Board of Appeal’s view the requirements under the EPC for maintaining the patent are not satisfied.

G9/93 Opposition by patent proprietor A European patent cannot be opposed by its own proprietor.

G1/95 Fresh grounds for opposition Where a patent has been opposed on the grounds set out in Article 100(a) EPC, but the opposition has only been substantiated on the grounds of lack of novelty and lack of inventive step, the ground of unpatentable subject-matter based upon Articles 52(1) and (2) EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee.

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G7/95 Fresh grounds for opposition Where a patent has been opposed under Article 100(a) EPC on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon Articles 52(1) and 54 EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee. However, the allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding on lack of inventive step.

G3/97 and G4/97 Opposition on behalf of a third party An opposition is not inadmissible purely because the person named as opponent according to Rule 77(a) EPC is acting on behalf of a third party.

Such an opposition is, however, inadmissible if the involvement of the opponent is to be regarded as circumventing the law by abuse of process. Such a circumvention of the law arises, in particular, if the opponent is acting on behalf of the patent proprietor, or if the opponent is acting on behalf of a client in the context of activities which, taken as a whole, are typically associated with professional representatives, without possessing the relevant qualifications required by Article 134 EPC. However, a circumvention of the law by abuse of process does not arise purely because a professional representative is acting in his own name on behalf of a client or because an opponent with either a residence or principal place of business in one of the EPC Contracting States is acting on behalf of a third party who does not meet this requirement.

In determining whether the law has been circumvented by abuse of process, the principle of the free evaluation of evidence is to be applied. The burden of proof is to be borne by the person alleging that the opposition is inadmissible. The deciding body has to be satisfied on the basis of clear and convincing evidence that the law has been circumvented by abuse of process. The admissibility of an opposition on grounds relating to the identity of an opponent may be challenged during the course of the appeal, even if no such challenge was raised before the opposition division.

G3/99 Admissibility of joint opposition or joint appeal An opposition filed in common by two or more persons, which otherwise meets the requirements of Article 99 EPC and Rules 3 and 76 EPC, is admissible on payment of only one opposition fee. If the opposing party consists of a plurality of persons, an appeal must be filed by the common representative under Rule 151 EPC. Where the appeal is filed by a non-entitled person, the Board of Appeal shall consider it not to be duly signed and consequently invite the common representative to sign it within a given time limit. The non-entitled person who filed the appeal shall be informed of this invitation. If the previous common representative is no longer participating in the proceedings, a new common representative shall be determined pursuant to Rule 151

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Decisions of the Enlarged Board of Appeal EPC. In order to safeguard the rights of the patent proprietor and in the interests of procedural efficiency, it has to be clear throughout the procedure who belongs to the group of common opponents or common appellants. If either a common opponent or appellant (including the common representative) intends to withdraw from the proceedings, the EPO shall be notified accordingly by the common representative or by a new common representative determined under Rule 151(1) EPC in order for the withdrawal to take effect.

G2/04 Transfer of opposition Status as an opponent cannot be freely transferred. A legal person who was a subsidiary of the opponent when the opposition was filed and who carries on the business to which the opposed patent relates cannot acquire the status as opponent if all its shares are assigned to another company. If, when filing an appeal, there is a justifiable legal uncertainty as to how the law is to be interpreted in respect of the question of who the correct party to the proceedings is, it is legitimate that the appeal is filed in the name of the person whom the person acting considers, according to his interpretation, to be the correct party, and at the same time, as an auxiliary request, in the name of a different person who might, according to another possible interpretation, also be considered the correct party to the proceedings.

Patentable subject-matter and exceptions to patentability G1/98 Article 53(b) EPC does not exclude claims encompassing but not identifying plant varieties Only a claim to a specific plant variety is excluded from patentability under Article 53(b) EPC. A claim that is not directed to a specific plant variety but which embraces multiple plant varieties is not excluded from patentability under Article 53(b) EPC. When a claim to a process for the production of a plant variety is examined, Article 64(2) EPC is not to be taken into consideration. The exception to patentability in Article 53(b), first halfsentence, EPC applies to plant varieties irrespective of the way in which they were produced. Therefore, plant varieties containing genes introduced into an ancestral plant by recombinant gene technology are excluded from patentability.

G1/04 Diagnostic methods In order for the subject-matter of a claim relating to a diagnostic method practised on the human or animal body to fall within the prohibition of Article 53(c) EPC, the claim must include features relating to (i) the diagnosis for curative purposes stricto sensu representing the deductive medical or veterinary decision phase as a purely intellectual exercise, (ii) the preceding steps which are constitutive for making that diagnosis, and 217

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Decisions of the Enlarged Board of Appeal (iii) the specific interactions with the human or animal body which occur when carrying those out among these preceding steps which are of a technical nature.

Whether or not a method is a diagnostic method within the meaning of Article 53(c) does not depend on the participation of a medical or veterinary practitioner, nor on whether all method steps can also, or can only, be practised by medical or technical support staff, the patient himself or herself or an automated system. Moreover, no distinction is to be made in this context between essential method steps having diagnostic character and non-essential method steps lacking it.

In a diagnostic method under Article 53(c) EPC, the method steps of a technical nature belonging to the preceding steps which are constitutive for making the diagnosis for curative purposes stricto sensu must satisfy the criterion “practised on the human or animal body”.

Article 53(c) EPC does not require a specific type and intensity of interaction with the human or animal body; a preceding step of a technical nature thus satisfies the criterion “practised on the human or animal body” if its performance implies any interaction with the human or animal body, necessitating the presence of the latter.

G2/06 Stem cells Rule 28(c) EPC forbids the patenting of claims directed to products which – as described in the application – could, at the filing date, have been prepared exclusively by a method that necessarily involves the destruction of the human embryo from which the said products are derived, even if the said method is not part of the claims. It is not of relevance that after the filing date the same products could be obtained without having to recur to a method necessarily involving the destruction of human embryos.

G1/07 Treatment by surgery A claimed imaging method, in which, when carried out, maintaining the life and health of the subject is important and which comprises or encompasses an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise, is excluded from patentability as a method for treatment of the human or animal body by surgery pursuant to Article 53 (c)EPC .

A claim which comprises a step encompassing an embodiment which is a “method for treatment of the human or animal body by surgery” within the meaning of Article 53(c) EPC cannot be left to encompass that embodiment.

The exclusion from patentability under Article 53(c) EPC can be avoided by disclaiming the embodiment, it being understood that in order to be patentable the claim including the disclaimer must fulfil all the requirements of the EPC and, where applicable, the requirements for a disclaimer to be allowable as defined in decisions G 1/03 and G 2/03 of the Enlarged Board of Appeal.

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Decisions of the Enlarged Board of Appeal Whether or not the wording of the claim can be amended so as to omit the surgical step without offending against the EPC must be assessed on the basis of the overall circumstances of the individual case under consideration.

A claimed imaging method is not to be considered as being a “treatment of the human or animal body by surgery” within the meaning of Article 53(c) EPC merely because during a surgical intervention the data obtained by the use of the method immediately allow a surgeon to decide on the course of action to be taken during a surgical intervention.

G2/08 Dosage regime Where it is already known to use a medicament to treat an illness, Article 54(5) EPC does not exclude that this medicament be patented for use in a different treatment by therapy of the same illness. Such patenting is also not excluded where a dosage regime is the only feature claimed which is not comprised in the state of the art. Where the subjectmatter of a claim is rendered novel only by a new therapeutic use of a medicament, such claim may no longer have the format of a so called Swiss-type claim as instituted by decision G 5/83.

G2/07 and G1/08 Essentially biological processes A non-microbiological process for the production of plants which contains or consists of the steps of sexually crossing the whole genomes of plants and of subsequently selecting plants is in principle excluded from patentability as being ‘essentially biological’ within the meaning of Article 53(b) EPC. Such a process does not escape the exclusion of Article 53(b) EPC merely because it contains, as a further step or as part of any of the steps of crossing and selection, a step of a technical nature which serves to enable or assist the performance of the steps of sexually crossing the whole genomes of plants or of subsequently selecting plants.

If, however, such a process contains within the steps of sexually crossing and selecting an additional step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, so that the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen for sexual crossing, then the process is not excluded from patentability under Article 53(b) EPC. In the context of examining whether such a process is excluded from patentability as being ‘essentially biological’ within the meaning of Article 53(b) EPC, it is not relevant whether a step of a technical nature is a new or known measure, whether it is trivial or a fundamental alteration of a known process, whether it does or could occur in nature or whether the essence of the invention lies in it.

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Prior art G6/88 Plant growth regulating agent – second non-medical indication A claim to the use of a known compound for a particular purpose, which is based on a technical effect that is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under Article 54(1) EPC provided that the technical feature has not previously been made available to the public.

G1/92 Availability to the public The chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition. The same principle applies mutatis mutandis to any other product.

G3/98 and G2/99 Calculation of the six-month period under Article 55(1) EPC For the calculation of the six-month period referred to in Article 55(1) EPC, the relevant date is the date of the actual filing of the European patent application. The date of priority is not considered in calculating this period.

Priority G3/93 Status of document published during the priority period A document published during the priority period, the technical contents of which correspond to that of the priority document, constitutes prior art citable under Article 54(2) EPC against a European patent application claiming that priority, to the extent that priority is not validly claimed. This also applies if a claim to priority is invalid due to the fact that the priority document and the subsequent European application do not concern the same invention because the European application claims subject-matter not disclosed in the priority document.

G2/98 Requirement for claiming priority of the “same invention” The requirement for claiming priority of “the same invention”, referred to in Article 87(1) EPC, means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole.

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Reformatio in peius G9/92 and G4/93 Reformatio in peius in inter partes proceedings If the patent proprietor is the sole appellant against an interlocutory decision maintaining a patent in amended form, neither the Board of Appeal nor the nonappealing opponent as a party to the proceedings as of right under Article 107, second sentence, EPC, may challenge the maintenance of the patent as amended in accordance with the interlocutory decision.

If the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, the patent proprietor is primarily restricted during the appeal proceedings to defending the patent in the form in which it was maintained by the Opposition Division in its interlocutory decision. Amendments proposed by the patent proprietor as a party to the proceedings as of right under Article 107, second sentence, EPC, may be rejected as inadmissible by the Board of Appeal if they are neither appropriate nor necessary.

G10/93 Reformatio in peius in ex parte proceedings In an appeal from a decision of an examining division in which a European patent application was refused, the Board of Appeal has the power to examine whether the application or the invention to which it relates meets the requirements of the EPC. The same is true for requirements which the examining division did not take into consideration in the examination proceedings or which it regarded as having been met.

If there is reason to believe that a requirement of the EPC has not been met, the Board shall include this ground in the proceedings.

G1/99 Reformatio in peius in inter partes proceedings In principle, an amended claim, that would put the opponent and sole appellant in a worse situation than if no appeal had been filed, must be rejected. However, an exception to this principle may be made in order to meet an objection put forward by the opponent/appellant or the Board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the Opposition Division in its interlocutory decision. In such circumstances, in order to overcome the deficiency, the patent proprietor/respondent may be allowed to file requests, as follows: in the first place, for an amendment introducing one or more originally disclosed features which limit the scope of the patent as maintained; if such a limitation is not possible, for an amendment introducing one or more originally disclosed features which extend the scope of the patent as maintained, but within the limits of Article 123(3) EPC; finally, if such amendments are not possible, for deletion of the inadmissible amendment, but within the limits of Article 123(3) EPC.

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Oral Proceedings G4/92 Right to comment – Party absent from oral proceedings A decision against a party who has been duly summoned but who fails to appear at oral proceedings may not be based on facts put forward for the first time during those oral proceedings. Similarly, new evidence may not be considered unless it has been previously notified and merely supports the assertions of the party who submits it.

In principle, however, new arguments may used to support the reasons for the decision.

G2/94 Oral submissions by an accompanying person A Board of Appeal has a discretion to allow an accompanying person (who is not entitled under Article 134(1) or (8) EPC to represent parties to proceedings before the EPO) to make submissions during oral proceedings in ex parte proceedings, in addition to the complete presentation of a party’s case by the professional representative.

In ex parte proceedings, a professional representative should request permission for the making of such oral submissions in advance of the day appointed for oral proceedings. The request should state the name and qualifications of the person for whom permission is requested, and should specify the subject-matter of the proposed oral submissions.

The Board of Appeal should exercise its discretion in accordance with the circumstances of each individual case. The main criterion to be considered is that the Board should be fully informed of all relevant matters before deciding the case. The Board should be satisfied that the oral submissions are made by the accompanying person under the continuing responsibility and control of the professional representative.

During either ex parte or inter partes proceedings, a Board of Appeal should refuse permission for a former member of the Boards of Appeal to make oral submissions during oral proceedings before it, unless it is completely satisfied that a sufficient period of time has elapsed following termination of such former member’s appointment to the Boards of Appeal, so that the Board of Appeal could not reasonably be suspected of partiality in deciding the case if it allowed such oral submissions to be made.

A Board of Appeal should normally refuse permission for a former member of the Boards of Appeal to make oral submissions during oral proceedings before it, until at least three years have elapsed following termination of the former member’s appointment to the Boards of Appeal. After three years have elapsed, permission should be granted except in very special circumstances.

G4/95 Oral submissions by an accompanying person During oral proceedings under Article 116 EPC in the context of opposition or opposition appeal proceedings, a person accompanying the professional representative of a party may be allowed to make oral submissions on specific legal or technical issues on behalf of that party, otherwise than under Article 117 EPC, in addition to the complete

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Decisions of the Enlarged Board of Appeal presentation of the party’s case by the professional representative.

Such oral submissions cannot be made as a matter of right, but only with the permission of and at the discretion of the EPO. The following main criteria should be considered by the EPO when exercising its discretion to allow oral submissions by an accompanying person in opposition or opposition appeal proceedings: (i) The professional representative should request permission for such oral submissions to be made. The request should state the name and qualifications of the accompanying person, and should specify the subject-matter of the proposed oral submissions. (ii) The request should be made sufficiently in advance of the oral proceedings so that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions. (iii) A request that is made shortly before or at the oral proceedings should in the absence of exceptional circumstances be refused, unless each opposing party agrees to the making of the oral submissions requested. (iv) The EPO should be satisfied that oral submissions by an accompanying person are made under the continuing responsibility and control of the professional representative.

No special criteria apply to the making of oral submissions by qualified patent lawyers of countries that are not Contracting States to the EPC.

Unity in PCT proceedings G1/89 Non-unity a posteriori The agreement between the European Patent Organisation and WIPO dated 7 October 1987, including the obligation under its Article 2 for the European Patent Office (EPO) to be guided by the PCT guidelines for international search, is binding upon the EPO when acting as an ISA and upon the Boards of Appeal of the EPO when deciding on protests against the charging of additional search fees under the provisions of Article 17(3)(a) PCT. Consequently, as foreseen in these guidelines, an international application may, under Article 17(3)(a) PCT, be considered not to comply with the requirement of unity of invention, not only “a priori” but also “a posteriori”, i.e. after taking prior art into consideration. However, such consideration only has the procedural effect of initiating the special procedure laid down in Article 17 and Rule 40 PCT and is not, therefore, a “substantive examination” in the normal sense of that term.

G2/89 Non-unity a posteriori The EPO in its function as an ISA may, pursuant to Article 17(3)(a) PCT, request a further

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Decisions of the Enlarged Board of Appeal search fee where the international application is considered to lack unity of invention “a posteriori”.

Miscellaneous matters G1/90 Revocation of the patent for failure to meet formal requirements when a patent is maintained in an amended form The revocation of a patent under Article 102(4) and (5) EPC requires a decision.

G6/91 Entitlement to a fee reduction The persons referred to in Article 14(4) EPC are entitled to the fee reduction under Rule 6(3) EPC if they file the essential item of the first act in filing, examination or appeal proceedings in an official language of the State concerned other than English, French or German, and supply the necessary translation no earlier than simultaneously. The essential item of the first act in appeal proceedings is the notice of appeal, so to secure entitlement to the reduction in the appeal fee it suffices that said document be filed in an official language of a Contracting State which is not an official language of the European Patent Office (EPO) provided that it is translated into one of the latter languages, even if subsequent items such as the statement of grounds of appeal are filed only in an EPO official language.

G6/95 Application of Rule 116 EPC vis-à-vis the Boards of Appeal Rule 116 EPC does not apply to the Boards of Appeal.

G3/92 Filing of replacement application by lawful applicant When a national court has determined by a final decision that a person other than the applicant is entitled to the grant of a European patent, and that person, in compliance with the specific requirements of Article 61(1) EPC, files a new European patent application in respect of the same invention under Article 61(1)(b) EPC, it is not a precondition for acceptance of the new application that the earlier original usurping application is still pending before the EPO at the time the new application is filed.

G4/08 Language of procedure If an international patent application under the PCT is filed and published in one of the three official languages of the EPO, that language will be the language of procedure when the application is prosecuted before the EPO. The language of procedure cannot be changed by filing a translation of the application into one of the other two EPO official languages when the application enters the regional phase. Languages, other than the language of proceedings can be used during the prosecution of an international patent application during the regional phase before the EPO only to the extent permitted by Article 14 (3) EPC.

224

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Decisions of the Enlarged Board of Appeal

Decisions overruled by amendment of the EPC or by other decisions of the Enlarged Board of Appeal G1/83, G5/83 and G6/83 Second medical indication – therapeutic use claims No longer relevant due to the amendment of Article 54 EPC..

G1/84 Opposition by proprietor Overruled by G9/93.

G3/91 Re-establishment of rights No longer relevant due to the amendment of Article 122 EPC.

G5/92 and G6/92 Re-establishment of rights No longer relevant due to the amendment of Article 122 EPC.

G10/92 Time limit for filing a divisional application No longer relevant due to amendment of Rule 36 EPC.

G2/93 Sufficiency of disclosure – Culture deposit information No longer relevant due to amendment of Rule 31 EPC.

G5/93 Re-establishment of rights Transitional provisions for pending applications for re-establishment of rights applied for before decision G3/91 was published.

G1/97 Request with a view to revision No longer relevant due to establishment of petitions for review by Article 112a EPC.

G4/98 Effect of failure to pay designation fees No longer relevant due to amendment of Article 54 EPC.

G2/02 and G3/02 Priorities from India No longer relevant due to amendment of Article 87(1) EPC.

225

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EPC Member States

EPC Contracting States

1

Albania Austria Belgium Bulgaria Croatia2 Cyprus Czech Republic Denmark3 Estonia Finland Former Yugoslav Republic of Macedonia4 France5 Germany Greece Hungary Iceland Ireland Italy

Date of ratification 1 May 2010 1 May 1979 7 October 1977 1 July 2002 1 January 2008 1 April 1998 1 July 2002 1 January 1990 1 July 2002 1 March 1996 1 January 2009 7 October 1977 7 October 1977 1 October 1986 1 January 2003 1 November 2004 1 August 1992 1 December 1978

Latvia6 Liechtenstein7 Lithuania8 Luxembourg Malta Monaco Netherlands9 Norway Poland Portugal Romania10 San Marino Serbia11 Slovak Republic Slovenia12 Spain Sweden Switzerland7 Turkey United Kingdom13

Date of ratification 1 July 2005 1 April 1980 1 December 2004 7 October 1977 1 March 2007 1 December 1991 7 October 1977 1 January 2008 1 March 2004 1 January 1992 1 March 2003 1 July 2009 1 October 2010 1 July 2002 1 December 2002 1 October 1986 1 May 1978 7 October 1977 1 November 2000 7 October 1977

1. An Extension State, 1 February 1996 – 30 April 2010.

2. An Extension State, 1 April 2004 – 31 December 2007.

3. The EPC does not apply to Greenland and the Faroe Islands.

4. An Extension State, 1 November 1997 – 31 December 2008.

5. The EPC is also applicable to the French territorial entity of Mayotte and the overseas territories.

6. An Extension State, 1 May 1995 – 30 June 2005.

7. Any designation of this state is treated in the same way as a joint designation of Switzerland and Liechtenstein (Article 142(1) EPC in conjunction with Article 2 of the Patent Treaty between Switzerland and Liechtenstein, see OJ EPO 1980, 407).

8. An Extension State, 5 July 1994 – 30 November 2004.

9. The EPC is applicable to the territory of the Netherlands Antilles, but not to Aruba.

10. An Extension State, 15 October 1996 – 28 February 2003.

11. An Extension State, 1 November 2004 – 30 September 2010.

12. An Extension State, 1 March 1994 – 30 November 2003.

13. The EPC is also applicable to the Isle of Man. For further information on the registration of European patents (UK) in overseas states and territories, see OJ EPO 2004, 179.

Extension States Bosnia and Herzegovina Montenegro 226

Date of entry into force of extension agreement 1 December 2004 1 March 2010

15_Regulations_pp227-233_7_Layout 1 03/12/2014 17:30 Page 227

Index of Implementing Regulations

Index of Implementing Regulations General provisions

Location

Rule 1

Written proceedings

See Article 94, page 98

Rule 2

Filing of and formal requirements for documents

See Article 94, page 98

Rule 3

Language in written proceedings

See Article 14, page 6

Rule 4

Language in oral proceedings

See Article 14, page 7

Rule 5

Certification of translations

See Article 14, page 7

Rule 6

Filing of translations and reduction of fees

See Article 14, page 8

Rule 7

Legal authenticity of the translation of the European patent application

See Article 14, page 8

Organisation of the European Patent Office

Location

Rule 8

Patent classification

See Article 17, page 13

Rule 9

Administrative structure of the European Patent Office

See Article 15, page 12

Rule 10

Responsibility of the Receiving Section and the Examining Division

See Article 16, page 13

Rule 11

Allocation of duties to the departments of first instance

See Article 15, page 12

Rule 12

Presidium of the Boards of Appeal

See Article 21, page 15

Rule 13

Business distribution scheme for the Enlarged Board of Appeal and adoption of its Rules of Procedure

See Article 22, page 17

Procedure where the applicant is not entitled Rule 14

Stay of proceedings

See Article 61, page 38

Rule 15

Limitation on withdrawals

See Article 61, page 39

Rule 16

Procedure under Article 61, paragraph 1

See Article 61, page 39

Rule 17

Filing of a new European patent application by the entitled person

See Article 61, page 39

Rule 18

Partial transfer of the right to the European patent

See Article 61, page 40

Mention of the inventor

Location

Rule 19

Designation of the inventor

See Article 81, page 66

Rule 20

Publication of the mention of the inventor

See Article 81, page 66

Rule 21

Rectification of the designation of an inventor

See Article 81, page 67

Registration of transfers, licences and other rights

Location

Rule 22

Registration of transfers

See Article 72, page 48

Rule 23

Registration of licences and other rights

See Article 72, page 48

Rule 24

Special entries for licence registrations

See Article 73, page 49

227

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Index of Implementing Regulations Certificate of exhibition

Location

Rule 25

See Article 55, page 34

Certificate of exhibition

Biotechnological inventions

Location

Rule 26

General and definitions

See Article 53, page 29

Rule 27

Patentable biotechnological inventions

See Article 53, page 30

Rule 28

Exceptions to patentability

See Article 53, page 30

Rule 29

The human body and its elements

See Article 53, page 30

Rule 30

Requirements of European patent applications relating to nucleotide and amino acid sequences

See Article 83, page 70

Rule 31

Deposit of biological material

See Article 83, page 70

Rule 32

Expert solution

See Article 83, page 71

Rule 33

Availability of biological material

See Article 83, page 72

Rule 34

New deposit of biological material

See Article 83, page 73

Filing of the European patent application

Location

Rule 35

General provisions

See Article 75, page 50

Rule 36

European divisional applications

See Article 76, page 52

Rule 37

Forwarding of European patent applications

See Article 77, page 54

Rule 38

Filing fee and search fee

See Article 78, page 56

Rule 39

Designation fees

See Article 79, page 63

Rule 40

Date of filing

See Article 80, page 64

Provisions governing the application

Location

Rule 41

Request for grant

See Article 78, page 56

Rule 42

Content of the description

See Article 78, page 57

Rule 43

Form and content of claims

See Article 84, page 75

Rule 44

Unity of invention

See Article 82, page 69

Rule 45

Claims incurring fees

See Article 84, page 76

Rule 46

Form of the drawings

See Article 78, page 58

Rule 47

Form and content of the abstract

See Article 85, page 78

Rule 48

Prohibited matter

See Article 78, page 59

Rule 49

General provisions governing the presentation of the application documents

See Article 78, page 59

Rule 50

Documents filed subsequently

See Article 94, page 98

Renewal fees

Location

Rule 51

See Article 86, page 79

Payment of renewal fees

228

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Index of Implementing Regulations Priority

Location

Rule 52

Declaration of priority

See Article 88, page 84

Rule 53

Priority documents

See Article 88, page 84

Rule 54

Issuing priority documents

See Article 88, page 85

Examination by the Receiving Section

Location

Rule 55

Examination on filing

See Article 90, page 87

Rule 56

Missing parts of the description or missing drawings

See Article 90, page 87

Rule 57

Examination as to formal requirements

See Article 90, page 88

Rule 58

Correction of deficiencies in the application documents

See Article 90, page 89

Rule 59

Deficiencies in claiming priority

See Article 90, page 89

Rule 60

Subsequent designation of the inventor

See Article 81, page 67

European search report

Location

Rule 61

Content of the European search report

See Article 92, page 92

Rule 62

Extended European search report

See Article 92, page 93

Rule 62a Applications containing a plurality of independent claims

See Article 92, page 93

Rule 63

Incomplete search

See Article 92, page 93

Rule 64

European search report where the invention lacks unity

See Article 92, page 94

Rule 65

Transmittal of the European search report

See Article 92, page 94

Rule 66

Definitive content of the abstract

See Article 85, page 78

Publication of the European patent application

Location

Rule 67

Technical preparations for publication

See Article 93, page 95

Rule 68

Form of the publication of European patent applications and European search reports

See Article 93, page 96

Rule 69

Information about publication

See Article 93, page 96

Rule 70

Request for examination

See Article 94, page 98

Rule 70a Response to the extended European search report

See Article 94, page 99

Rule 70b Request for a copy of search results

See Article 124, page 156

Examination by the Examining Division Rule 71

Examination procedure

See Article 94, page 99

Rule 71a Conclusion of the grant procedure

See Article 94, page 100

Rule 72

See Article 97, page 104

Grant of the European patent to different applicants

The European patent specification

Location

Rule 73

See Article 98, page 104

Content and form of the specification

229

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Index of Implementing Regulations Rule 74

Certificate for a European patent

See Article 98, page 104

Opposition procedure

Location

Rule 75

Surrender or lapse of the patent

See Article 99, page 105

Rule 76

Form and content of the opposition

See Article 99, page 105

Rule 77

Rejection of the opposition as inadmissible

See Article 101, page 109

Rule 78

Procedure where the proprietor of the patent is not entitled See Article 101, page 109

Rule 79

Preparation of the examination of the opposition

Rule 80

Amendment of the European patent

See Article 101, page 110

Rule 81

Examination of opposition

See Article 101, page 110

Rule 82

Maintenance of the European patent in amended form

See Article 103, page 112

Rule 83

Request for documents

See Article 101, page 110

Rule 84

Continuation of the opposition proceedings by the European Patent Office of its own motion

See Article 101, page 110

Rule 85

Transfer of the European patent

See Article 72, page 48

Rule 86

Documents in opposition proceedings

See Article 101, page 111

Rule 87

Content and form of the new specification of the European patent

See Article 103, page 113

Rule 88

Costs

See Article 104, page 114

Rule 89

Intervention of the assumed infringer

See Article 105, page 115

See Article 101, page 109

Procedure for limitation or revocation

Location

Rule 90

Subject of proceedings

See Article 105a, page 116

Rule 91

Responsibility for proceedings

See Article 105b, page 118

Rule 92

Requirements of the request

See Article 105b, page 118

Rule 93

Precedence of opposition proceedings

See Article 105a, page 116

Rule 94

Rejection of the request as inadmissible

See Article 105b, page 118

Rule 95

Decision on the request

See Article 105b, page 119

Rule 96

Content and form of the amended European patent specification

See Article 105c, page 121

Appeals procedure

Location

Rule 97

Appeal against apportionment and fixing of costs

See Article 106, page 122

Rule 98

Surrender or lapse of the patent

See Article 106, page 122

Rule 99

Content of the notice of appeal and the statement of grounds See Article 108, page 123

Rule 100 Examination of appeals

See Article 110, page 126

Rule 101 Rejection of the appeal as inadmissible

See Article 110, page 126

Rule 102 Form of decision of the Board of Appeal

See Article 111, page 128

230

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Index of Implementing Regulations Rule 103 Reimbursement of the appeal fee

See Article 111, page 128

Petitions for review by the Enlarged Board of Appeal

Location

Rule 104 Further fundamental procedural defects

See Article 112a, page 131

Rule 105 Criminal acts

See Article 112a, page 131

Rule 106 Obligation to raise objections

See Article 112a, page 131

Rule 107 Contents of the petition for review

See Article 112a, page 131

Rule 108 Examination of the petition

See Article 112a, page 131

Rule 109 Procedure in dealing with petitions for review

See Article 112a, page 132

Rule 110 Reimbursement of the fee for petitions for review

See Article 112a, page 132

Decisions and communications of the European Patent Office

Location

Rule 111

See Article 113, page 135

Form of decisions

Rule 112 Noting of loss of rights

See Article 113, page 135

Rule 113 Signature, name, seal

See Article 113, page 136

Observations by third parties

Location

Rule 114 Observations by third parties

See Article 115, page 137

Oral proceedings and taking of evidence

Location

Rule 115 Summons to oral proceedings

See Article 116, page 138

Rule 116 Preparation of oral proceedings

See Article 116, page 138

Rule 117 Decision on taking of evidence

See Article 117, page 140

Rule 118 Summons to give evidence before the European Patent Office

See Article 117, page 140

Rule 119 Examination of evidence before the European Patent Office See Article 117, page 140 Rule 120 Hearing by a competent national court

See Article 117, page 141

Rule 121 Commissioning of experts

See Article 117, page 141

Rule 122 Costs of taking of evidence

See Article 117, page 141

Rule 123 Conservation of evidence

See Article 117, page 142

Rule 124 Minutes of oral proceedings and of taking of evidence

See Article 116, page 139

Notifications

Location

Rule 125 General provisions

See Article 119, page 143

Rule 126 Notification by post

See Article 119, page 144

Rule 127 Notification by technical means of communication

See Article 119, page 144

Rule 128 Notification by delivery by hand

See Article 119, page 144

Rule 129 Public notification

See Article 119, page 144

231

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Index of Implementing Regulations Rule 130 Notification to representatives

See Article 119, page 145

Time limits

Location

Rule 131 Calculation of periods

See Article 120, page 145

Rule 132 Periods specified by the European Patent Office

See Article 120, page 146

Rule 133 Late receipt of documents

See Article 120, page 146

Rule 134 Extension of periods

See Article 120, page 146

Rule 135 Further processing

See Article 121, page 148

Rule 136 Re-establishment of rights

See Article 122, page 151

Amendments and corrections

Location

Rule 137 Amendment of the European patent application

See Article 123, page 153

Rule 138 Different claims, description and drawings for different States

See Article 123, page 153

Rule 139 Correction of errors in documents filed with the European Patent Office

See Article 123, page 153

Rule 140 Correction of errors in decisions

See Article 123, page 154

Information on prior art

Location

Rule 141 Information on prior art

See Article 124, page 156

Interruption of proceedings

Location

Rule 142 Interruption of proceedings

See Article 125, page 157

Information to the public

Location

Rule 143 Entries in the European Patent Register

See Article 127, page 159

Rule 144 Parts of the file excluded from inspection

See Article 128, page 161

Rule 145 Procedures for the inspection of files

See Article 128, page 161

Rule 146 Communication of information contained in the files

See Article 128, page 161

Rule 147 Constitution, maintenance and preservation of files

See Article 128, page 162

Legal and administrative co-operation

Location

Rule 148 Communications between the European Patent Office and the authorities of the Contracting States

See Article 130, page 164

Rule 149 Inspection of files by or via courts or authorities of the Contracting States

See Article 131, page 164

232

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Index of Implementing Regulations Rule 150 Procedure for letters rogatory

See Article 131, page 165

Representation

Location

Rule 151 Appointment of a common representative

See Article 133, page 166

Rule 152 Authorisations

See Article 133, page 167

Rule 153 Attorney evidentiary privilege

See Article 134a, page 171

Rule 154 Amendment of the list of professional representatives

See Article 134, page 169

Impact on national law

Location

Rule 155 Filing and transmission of the request for conversion

See Article 135, page 172

Rule 156 Information to the public in the event of conversion

See Article 135, page 173

International Applications under the Patent Co-operation Treaty – Euro-PCT Applications

Location

Rule 157 The European Patent Office as a receiving Office

See Article 151, page 179

Rule 158 The European Patent Office as an International Searching See Article 152, page 180 Authority or International Preliminary Examining Authority Rule 159 The European Patent Office as a designated or elected Office – Requirements for entry into the European phase

See Article 153, page 182

Rule 160 Consequences of non-fulfilment of certain requirements

See Article 153, page 183

Rule 161 Amendment of the application

See Article 153, page 183

Rule 162 Claims incurring fees

See Article 153, page 183

Rule 163 Examination of certain formal requirements by the European Patent Office

See Article 153, page 184

Rule 164 Unity of invention and further searches

See Article 153, page 185

Rule 165 The Euro-PCT application as conflicting application under Article 54, paragraph 3

See Article 54, page 32

233

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Concordance of Provisions of EPC 2000 and EPC 1973

Provisions in EPC 1973 Transferred to Implementing Regulations or Other Articles in EPC 2000 Provisions under EPC 1973

Transferred to

Article 16 (elements) Article 18 (1)(elements) Article 52 (4) Article 54 (5) Article 61 (1)(elements) Article 77 (elements) Article 78 (2) Article 79 (2) and (3) Article 80 Article 88 (1)(elements) Article 91 (1) – (3) Article 91 (5) Article 92 (2) Article 93 (2) Article 94 (2) and (3) Article 95 Article 96 (1) Article 96 (2) and (3) Article 99 (3) Article 99 (4) and (5) Article 102 (1) and (2) Article 102 (3) Article 105 (elements) Article 106 (2) Article 106 (4) and (5) Article 110 (2)and (3) Article 115 (elements) Article 117 (2) Article 117 (4) – (6) Article 121 (2) and (3) Article 122 (2) – (5) Article 126 Article 134 (8) Article 135 (2) Article 136 (1) and (2)(elements) Article 136 (2) Article 151 (1) Article 152 Article 153 (2) Article 154 Article 155 Article 156 Article 157 (1), (2), (3)

New Rule 10 New Rule 10 Article 53 (c) Article 54 (4) New Rule 16 New Rule 37 New Rule 38 New Rule 39 New Rule 40 New Rule 53 Article 90 (3) – (5) and New Rule 57 Article 90 (5) and New Rule 60 New Rule 65 New Rule 68 New Rule 70 Deleted New Rule 70 Article 94 (3) and (4) New Rule 75 Article 99 (3) and (4) Article 101 (2) Article 101 (3)(a) New Rule 89 New Rule 98 New Rule 97 New Rule 100 (2) and (3) New Rule 114 New Rule 119 New Rule 120 New Rule 135 New Rule 136 Deleted Article 134a New Rule 155 New Rule 155 Article 135 (2) and (4) New Rule 157 New Rule 157 New Rule 159 Article 152 Article 152 Article 153 (1) Article 153 (6) and (7)

234

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Concordance of Provisions of EPC 2000 and EPC 1973 Provisions under EPC 1973

Transferred to

Article 158 Article 159 Article 160 Article 160 (2) Article 161 Article 162 Article 163 (1) – (4) and (6) Article 163 (5) and (7) Article 167

Article 153 (3) – (5) Deleted Deleted Article 11 (5) Deleted Deleted Article 134 (3), (4) and (7) Deleted Deleted

Concordance of Rule Numbers Under EPC 1973 and EPC 2000 Old Rule Number

New Rule Number

Old Rule 1 Old Rule 2 Old Rule 4 (elements) Old Rule 5 Old Rule 6 Old Rule 7 Old Rule 8 Old Rule 9 Old Rule 10 Old Rule 11 Old Rule 12 Old Rule 13 (1) – (3) and (5) Old Rule 13 (4) Old Rule 14 Old Rule 15 (1) and (2) Old Rule 15 (3) Old Rule 16 (1) and (2) Old Rule 16 (3) Old Rule 17 Old Rule 18 Old Rule 19 Old Rule 20 Old Rule 21 Old Rule 22 Old Rule 23 Old Rule 23a Old Rule 23b Old Rule 23c Old Rule 23d Old Rule 23e Old Rule 24

New Rule 3 New Rule 4 New Rule 36 (2) New Rule 5 New Rule 6 New Rule 7 New Rule 8 New Rule 11 New Rule 12 New Rule 13 New Rule 9 New Rule 14 New Rule 78 New Rule 15 New Rule 17 Deleted New Rule 18 New Rule 78 New Rule 19 New Rule 20 New Rule 21 New Rule 22 New Rule 23 New Rule 24 New Rule 25 Deleted New Rule 26 New Rule 27 New Rule 28 New Rule 29 New Rule 35

235

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Concordance of Provisions of EPC 2000 and EPC 1973 Old Rule Number

New Rule Number

Old Rule 25 Old Rule 26 Old Rule 27 Old Rule 27a (1) and (4) Old Rule 27a (2) and (3) Old Rule 28 (1), (2) Old Rule 28 (4), (5) Old Rule 28 (3) and (6) – (9) Old Rule 28a Old Rule 29 Old Rule 30 Old Rule 31 Old Rule 32 Old Rule 33 Old Rule 34 Old Rule 35 Old Rule 36 Old Rule 37 Old Rule 38 (1), (2) and (6) Old Rule 38 (3) – (5) Old Rule 38a Old Rule 39 Old Rule 40 Old Rule 41 Old Rule 42 Old Rule 43 Old Rule 44 Old Rule 44a Old Rule 45 Old Rule 46 Old Rule 47 Old Rule 48 Old Rule 49 Old Rule 50 Old Rule 51 (1) Old Rule 51 (2) – (11) Old Rule 52 Old Rule 53 Old Rule 54 Old Rule 55 Old Rule 56 Old Rule 57 Old Rule 57a Old Rule 58 (1) – (3) Old Rule 58 (4) – (8) Old Rule 59

New Rule 36 New Rule 41 New Rule 42 New Rule 30 Deleted New Rule 31 New Rule 32 New Rule 33 New Rule 34 New Rule 43 New Rule 44 New Rule 45 New Rule 46 New Rule 47 New Rule 48 New Rule 49 New Rule 50 New Rule 51 New Rule 52 New Rule 53 New Rule 54 New Rule 55 New Rule 57 New Rules 57and 58 New Rule 60 New Rule 56 New Rule 61 New Rule 62 New Rule 63 New Rule 64 New Rule 66 New Rule 67 New Rule 68 New Rule 69 New Rule 70 (2) New Rule 71 New Rule 72 New Rule 73 New Rule 74 New Rule 76 New Rule 77 New Rule 79 New Rule 80 New Rule 81 New Rule 82 New Rule 83

236

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Concordance of Provisions of EPC 2000 and EPC 1973 Old Rule 60 Old Rule 61 Old Rule 61a Old Rule 62 Old Rule 62a Old Rule 63 Old Rule 64 Old Rule 65 Old Rule 66 (1) Old Rule 66 (2) Old Rule 67 Old Rule 68 Old Rule 69 Old Rule 70 Old Rule 71 Old Rule 71a Old Rule 72 (1) Old Rule 72 (2) Old Rule 72 (3) and (4) Old Rule 73 Old Rule 74 Old Rule 75 Old Rule 76 Old Rule 77 Old Rule 78 Old Rule 79 Old Rule 80 Old Rule 81 Old Rule 82 Old Rule 83 Old Rule 84 Old Rule 84a Old Rule 85 Old Rule 85a Old Rule 85b Old Rule 86 Old Rule 87 Old Rule 88 Old Rule 89 Old Rule 90 Old Rule 91 Old Rule 92 Old Rule 93 Old Rule 94 Old Rule 95 Old Rule 95a Old Rule 96

New Rule 84 New Rule 85 New Rule 86 New Rule 87 New Rule 87 New Rule 88 New Rule 99 New Rule 101 New Rule 100 (1) New Rule 102 New Rule 103 New Rule 111 New Rule 112 New Rule 113 New Rule 115 New Rule 116 New Rule 117 New Rule 118 New Rule 119 New Rule 121 New Rule 122 New Rule 123 New Rule 124 New Rule 125 New Rule 126 New Rule 128 New Rule 129 New Rule 130 New Rule 125 (4) New Rule 131 New Rule 132 New Rule 133 New Rule 134 Deleted Deleted New Rule 137 New Rule 138 New Rule 139 New Rule 140 New Rule 142 Deleted New Rule 143 New Rule 144 New Rule 145 New Rule 146 New Rule 147 Deleted

237

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Concordance of Provisions of EPC 2000 and EPC 1973 Old Rule 97 Old Rule 98 Old Rule 99 Old Rule 100 Old Rule 101 Old Rule 102 Old Rule 103 Old Rule 104 Old Rule 105 Old Rule 106 Old Rule 107 Old Rule 108 Old Rule 109 Old Rule 110 Old Rule 111 Old Rule 112

New Rule 148 New Rule 149 New Rule 150 New Rule 151 New Rule 152 New Rule 154 New Rule 156 New Rule 157 New Rule 158 Deleted New Rule 159 New Rule 160 New Rule 161 New Rule 162 New Rule 163 New Rule 164

Concordance of Rules Under EPC 2000 and Corresponding Provisions in EPC 1973 New Rule Number

Previously

New Rule 3 New Rule 4 New Rule 5 New Rule 6 New Rule 7 New Rule 8 New Rule 9 New Rule 10 New Rule 11 New Rule 12 New Rule 13 New Rule 14 New Rule 15 New Rule 16 New Rule 17 New Rule 18 New Rule 19 New Rule 20 New Rule 21 New Rule 22 New Rule 23 New Rule 24 New Rule 25 New Rule 26 New Rule 27 New Rule 28

Old Rule 1 Old Rule 2 Old Rule 5 Old Rule 6 Old Rule 7 Old Rule 8 Old Rule 12 Articles 16 and 18 (1) Old Rule 9 Old Rule 10 Old Rule 11 Old Rule 13 (1) – (3) and (5) Old Rule 14 Article 61 (1) Old Rule 15 (1) and (2) Old Rule 16 (1) and (2) Old Rule 17 Old Rule 18 Old Rule 19 Old Rule 20 Old Rule 21 Old Rule 22 Old Rule 23 Old Rule 23b Old Rule 23c Old Rule 23d

238

16_Concordance_pp234-241_8_Layout 1 03/12/2014 17:39 Page 239

Concordance of Provisions of EPC 2000 and EPC 1973 New Rule Number New Rule 29 New Rule 30 New Rule 31 New Rule 32 New Rule 33 New Rule 34 New Rule 35 New Rule 36 New Rule 37 New Rule 38 New Rule 39 New Rule 40 New Rule 41 New Rule 42 New Rule 43 New Rule 44 New Rule 45 New Rule 46 New Rule 47 New Rule 48 New Rule 49 New Rule 50 New Rule 51 New Rule 52 New Rule 53 New Rule 54 New Rule 55 New Rule 56 New Rule 57 New Rule 58 New Rule 60 New Rule 61 New Rule 62 New Rule 63 New Rule 64 New Rule 65 New Rule 66 New Rule 67 New Rule 68 New Rule 69 New Rule 70 New Rule 71 New Rule 72 New Rule 73 New Rule 74 New Rule 75

Previously Old Rule 23e Old Rule 27a (1) and (4) Old Rule 28 (1) and (2) Old Rule 28 (4) and (5) Old Rule 28 (3) and (6) – (9) Old Rule 28a Old Rule 24 Old Rules 4 and 25 Article 77 Article 78 (2) Article 79 (2) and (3) Article 80 Old Rule 26 Old Rule 27 Old Rule 29 Old Rule 30 Old Rule 31 Old Rule 32 Old Rule 33 Old Rule 34 Old Rule 35 Old Rule 36 Old Rule 37 Old Rule 38 (1), (2) and (6) Old Rule 38 (3) – (5) Old Rule 38a Old Rule 39 Old Rule 43 Article 91 (1) and Old Rules 40 and 41 Article 91 (1) and Old Rules 40 and 41 Old Rule 42 Old Rule 44 Old Rule 44a Old Rule 45 Old Rule 46 Article 92 (2) Old Rule 47 Old Rule 48 Article 93 (2) and Old Rule 49 Old Rule 50 Articles 94 (2), 94 (3) and 96 (1) and Old Rule 51 (1) Old Rule 51 (2) – (11) Old Rule 52 Old Rule 53 Old Rule 54 Article 99 (3)

239

16_Concordance_pp234-241_8_Layout 1 03/12/2014 17:39 Page 240

Concordance of Provisions of EPC 2000 and EPC 1973 New Rule Number

Previously

New Rule 76 New Rule 77 New Rule 78 New Rule 79 New Rule 80 New Rule 81 New Rule 82 New Rule 83 New Rule 84 New Rule 85 New Rule 86 New Rule 87 New Rule 88 New Rule 89 New Rule 97 New Rule 98 New Rule 99 New Rule 100 New Rule 101 New Rule 102 New Rule 103 New Rule 111 New Rule 112 New Rule 113 New Rule 114 New Rule 115 New Rule 116 New Rule 117 New Rule 118 New Rule 119 New Rule 120 New Rule 121 New Rule 122 New Rule 123 New Rule 124 New Rule 125 New Rule 126 New Rule 128 New Rule 129 New Rule 130 New Rule 131 New Rule 132 New Rule 133 New Rule 134 New Rule 135 New Rule 136

Old Rule 55 Old Rule 56 Old Rules 13 (4) and 16 (3) Old Rule 57 Old Rule 57a Old Rule 58 (1) – (3) Old Rule 58 (4) – (8) Old Rule 59 Old Rule 60 Old Rule 61 Old Rule 61a Old Rules 62 and 62a Old Rule 63 Article 105 Article 106 (4) and (5) Article 106 (2) Old Rule 64 Article 110 (2) and (3) and Old Rule 66 (1) Old Rule 65 Old Rule 66 (2) Old Rule 67 Old Rule 68 Old Rule 69 Old Rule 70 Article 115 Old Rule 71 Old Rule 71a Old Rule 72 (1) Old Rule 72 (2) Article 117 (2) and Old Rule 72 (3) and (4) Article 117 (4) – (6) Old Rule 73 Old Rule 74 Old Rule 75 Old Rule 76 Old Rules 77 and 82 Old Rule 78 Old Rule 79 Old Rule 80 Old Rule 81 Old Rule 83 Old Rule 84 Old Rule 84a Old Rule 85 Article 121 (2) and (3) Article 122 (2) – (5)

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Concordance of Provisions of EPC 2000 and EPC 1973 New Rule Number

Previously

New Rule 137 New Rule 138 New Rule 139 New Rule 140 New Rule 141 New Rule 142 New Rule 143 New Rule 144 New Rule 145 New Rule 146 New Rule 147 New Rule 148 New Rule 149 New Rule 150 New Rule 151 New Rule 152 New Rule 154 New Rule 155 New Rule 156 New Rule 157 New Rule 158 New Rule 159 New Rule 160 New Rule 161 New Rule 162 New Rule 163 New Rule 164

Old Rule 86 Old Rule 87 Old Rule 88 Old Rule 89 Article 124 (1) Old Rule 90 Old Rule 92 Old Rule 93 Old Rule 94 Old Rule 95 Old Rule 95a Old Rule 97 Old Rule 98 Old Rule 99 Old Rule 100 Old Rule 101 Old Rule 102 Articles 135 (2) and 136 (1) and (2) Old Rule 103 Articles 151 (1) and 152 and Old Rule 104 Old Rule 105 Article 153 (2) and Old Rule 107 Old Rule 108 Old Rule 109 Old Rule 110 Old Rule 111 Old Rule 112

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Index

A abstract checked for on filing Art.90(3)-(5), Rule 57(d) . . . . . .87, 89 definitive content of Rule 66 . . . . . . . . . . . . . . . . . . . . . .78 European patent application to include Art.78(1)(e) . . . . .56 form and content of Rule 47, Rule 49 . . . . . . . . . . . . .78, 59 late filing of Rule 58 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .89 publication of Rule 68(1) . . . . . . . . . . . . . . . . . . . . . . . . .96 purpose of Art.85 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .77 added matter amendment not to include Art.123(2) . . . . . . . . . . . . . .152 changing claim category does not result in G2/88 . . . . .210 disclaimers may include G1/03, G2/03 . . . . . . . . . . . . . .212 additional fee for applications with more than 35 pages Art 78(2), Rule 38(2), RRF Art 2(1a)) . . . . . . . . . . . .56,197 for claims in excess of 15 Rule 45, Rule 71(6), Rule 162, RRF Art 2(15) . . . . . . . . . . . . . . .76,100,183,199 for late furnishing of sequence listing Rule 30(3), RRF Art.2(14a) . . . . . . . . . . . . . . . . . . .70, 199 for late payment of renewal fee Rule 51(2), RRF Art.2(5) . . . . . . . . . . . . . . . . . . . . .79, 198 for using further processing Rule 135(1), RRF 2(12) . . . . . . . . . . . . . . . . . . . . .148, 198 administrative and legal co-operation in general Art.131 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .164 inspection of files by courts Rule 149 . . . . . . . . . . . . . .164 use of letters rogatory Rule 150 . . . . . . . . . . . . . . . . . . .165 Administrative Council adoption of budget by Art.46(2) . . . . . . . . . . . . . . . . . . . .26 allocation of disciplinary powers by Rule 12(6) . . . . . . . .15 amendment of EPC Art.33(1)(b), Art.35(3) . . . . . . . . . . . . . . . . . .21, 22 implementing regulations Art.33(1)(c) . . . . . . . . . . . . .22 time limits Art.33(1)(a) . . . . . . . . . . . . . . . . . . . . . . . .22 appointment of auditors by Art.49(1) . . . . . . . . . . . . . . . . . . . . . . . . . .26 senior employees by Art.11 . . . . . . . . . . . . . . . . . . . . . .4 approval of accounts by Art.49(4) . . . . . . . . . . . . . . . . . . . . . . . . .27 availability of external communications Art.130(3) . . .163 Rules of Procedure by Art.23(4) . . . . . . . . . . . . . . . . . .18

board of Art.28 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .20 chairmanship of Art.27 . . . . . . . . . . . . . . . . . . . . . . . . . .19 convening of Revision Conference Art.172(2) . . . . . . . . .192 deputy chairman Art.27, Art.28(2) . . . . . . . . . . . . . . . . . .19 equipment staff and premises of Art.32 . . . . . . . . . . . . . .21 establishment of Art.4(2)(b) . . . . . . . . . . . . . . . . . . . . . . .2 immunity of participants at meetings of Art.8 . . . . . . . . . .3 invitation to new Contracting States Art.166(1)(b) . . . . .191 languages of Art.31 . . . . . . . . . . . . . . . . . . . . . . . . . . . .20 mediation of disputes by Art.173(1) . . . . . . . . . . . . . . . .192 meetings of Art.29, Art.30 . . . . . . . . . . . . . . . . . . . . . . . .20 membership of Art.26 . . . . . . . . . . . . . . . . . . . . . . . . . . .19 removal of members of Boards of Appeal by Art.23(1) . . .18 Rules of Procedure for Art.29(5), Art.33(2)(e) . . . . . .20, 21 select committee of Art.145(1) . . . . . . . . . . . . . . . . . . .176 votes of Art.34, Art.35, Art.36 . . . . . . . . . . . . . . . . . .22, 23 administrative fees for patent certificate Rule 74 . . . . . . . . . . . . . . . . . . . . .104 for providing copy of file Rule 146 . . . . . . . . . . . . . . . . .161 for recording licence Rule 23(1), Rule 22(2) . . . . . . . . . .48 for recording transfer Rule 22(2) . . . . . . . . . . . . . . . . . . .48 levels decided by EPO President RRF Art.3(1) . . . . . . . .199 administrative structure of the EPO Rule 9 . . . . . . . . . .11 aesthetic creations excluded from patentability Art.52(2)(b) . . . . . . . . . . . . .28 agriculture industry includes Art.57 . . . . . . . . . . . . . . . . . . . . . . . . . .36 amendments after grant see limitation procedure after approval of text for grant G7/93 . . . . . . . . . . . . . . .211 before oral proceedings Rule 116(2) . . . . . . . . . . . . . . .138 changing claim category G2/88 . . . . . . . . . . . . . . . . . . .210 correction of deficiencies on filing Rule 58 . . . . . . . . . . . .89 different specifications following court decision on entitlement Rule 18(2) . . . . . . . . . . . . . . . . . . . . . . . . . . .40 during appeals G9/92, G4/93, G1/99 . . . . . . . . . . . . . . . . . .221 opposition Rule 79(1),(3), Rule 80 Rule 81(3), G1/93 . . . . . . . . . . . . . . . . . . .109, 110, 211 prosecution Art.123, Rule 71(1), Rule 137 . . . . . . . . . . . . . . . . .152, 99, 153 following receipt of search report Rule 137(2),(3) . . . . .153 following request for indication of intent Rule 70(2) . . . . .98

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Index must be in language of proceedings Rule 3(2), Rule 4(6) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6, 7 must not relate to unsearched subject matter Rule 137(5) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .153 obligation to identify basis for Rule 137(4) . . . . . . . . . . .153 of list of professional representatives Rule 154 . . . . . . .169 of PCT application on entry into the Regional Phase Rule 161 . . . . . . . . . . . . . . . . . . . . . . . .183 of proposed text for grant Rule 71(4) & (5), G7/93 .100, 211 restrictions on Rule 137, G2/92, G1/93 . . . . . . . . .153, 211 when EPO informed of prior national rights Rule 138 . . .153 amino acid sequences requirements for Rule 30 . . . . . . . . . . . . . . . . . . . . . . . . .70 animals modifying the genetic identity of Rule 28(d) . . . . . . . . . . .30 not excluded from patentability Rule 27(b) . . . . . . . . . . . .30 processes for the production of Art.53(b), Rule 26(5) . . .29 animal varieties excluded from patentability Art.53(b) . . . . . . . . . . . . . . . .29 appeal amendment during G9/92, G4/93, G1/99 . . . . . . . . . . .221 content of notice of Rule 99 . . . . . . . . . . . . . . . . . . . . . .123 correction of notice of G1/12 . . . . . . . . . . . . . . . . . . . . .208 decision in respect of Art.111 . . . . . . . . . . . . . . . . . . . .127 decisions subject to Art.106 . . . . . . . . . . . . . . . . . . . . .122 deficiencies in notice of Rule 101 . . . . . . . . . . . . . . . . .126 examination of Art.110, G10/91 . . . . . . . . . . . . . .125, 207 form of decision in Rule 102 . . . . . . . . . . . . . . . . . . . . .128 interlocutory revision of Art.109 . . . . . . . . . . . . . . . . . . .125 joint G3/99 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .216 limited to grounds already raised G10/91 . . . . . . . . . . . .207 minimum costs at dispute in RRF Art.13 . . . . . . . . . . . .202 observations by the parties to Rule 100(2) . . . . . . . . . . .126 opponent’s silence does not bar G1/88 . . . . . . . . . . . . . .207 parties to appeal proceedings Art.107 . . . . . . . . . . . . . .123 persons entitled to Art.107 . . . . . . . . . . . . . . . . . . . . . .123 rejection as inadmissible Rule 101 . . . . . . . . . . . . . . . . .126 time limit and form for Art.108 . . . . . . . . . . . . . . . . . . . .123 withdrawal effect of G7/91, G8/91 . . . . . . . . . . . . . . . . .207 withdrawal of opposition ends G8/93 . . . . . . . . . . . . . . .215 appeal fees amount RRF Art.2(11) . . . . . . . . . . . . . . . . . . . . . . . . .198 for joint appeal G3/99 . . . . . . . . . . . . . . . . . . . . . . . . . .216

no obligation to notify if missing G2/97 . . . . . . . . . . . . .207 reduction of Rule 6(3), RRF Art.14 . . . . . . . . . . . . . .8, 202 reimbursement of Rule 103, G3/03 . . . . . . . . . . . .128, 208 required to have appellant status G2/91 . . . . . . . . . . . .207 applicant death or legal incapacity of Rule 142(1)(a),(b) . . . . . . . .159 deemed to have right to a European patent Art.60(3) . . . .37 entries in the European Patent Register Rule 143(1)(f) . .161 forum for challenging entitlement of Protocol on Recognition Art.2-6 . . . . . . . . . . . . .195-194 information in the request for grant Rule 41(2)(c) . . . . . .56 limitation on withdrawals when entitlement challenged Rule 15 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .39 options where original applicant not entitled Art.61(1) . . .38 partial transfer of rights following court decision Rule 18 . . .40 procedure when original applicant found not entitled Rule 16, Rule 17 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .39 requirement for contact details for Rule 40(b) . . . . . . . . .63 requirement to file designation of inventor if not sole inventor Rule 19 . . . . . . . . . . . . . . . . . . . . . . . . . . . .65 stay of proceedings pending decision on Rule 14 . . . . . . .38 applicants considered joint Art.118 . . . . . . . . . . . . . . . . . . . . . . . .143 different for different Contracting States Art.118, Rule 72 . . . . . . . . . . . . . . . . . . . . . . . . . .143, 103 multiple permitted Art.59, Art.118 . . . . . . . . . . . . . .36, 143 requirement to appoint common representative Rule 41(3) . . . . . . . . . . . . . . . . . . . . . . . .57 application by persons not having the right to a European patent Art.61 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .38 person entitled to file Art.58 . . . . . . . . . . . . . . . . . . . . . . .36 application documents correction of deficiencies in Rule 58 . . . . . . . . . . . . . . . . 89 filed subsequently Rule 50 . . . . . . . . . . . . . . . . . . . . . . . .98 for international (Euro-PCT) applications Rule 159(1)(b) . .182 general provisions for form of Rule 49 . . . . . . . . . . . . . . .59 minimum margins for Rule 49(5) . . . . . . . . . . . . . . . . . . .60 assignment of European patent application Art.72, Rule 22 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .47, 48 authorisations Art.133(3), Rule 152 . . . . . . . . . . .166, 167

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Index

B basis of decisions Art.113 . . . . . . . . . . . . . . . . . . . . . .135 biological material definition of Rule 26(3) . . . . . . . . . . . . . . . . . . . . . . . . . .29 deposit of Rule 31 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .70 isolated from natural state patentable Rule 27(a) . . . . . . .30 replacement of deposited Rule 34 . . . . . . . . . . . . . . . . . .73 biotechnological inventions Rules 26-34 . . .29-30, 70-73 biological processes crossing of plants G2/07, G1/08 . . . . . . . . . . . . . . . . . . .219 excluded from patentability Art.53(b) . . . . . . . . . . . . . . . .29 Boards of Appeal allocation of duties to Rule 12(4) . . . . . . . . . . . . . . . . . . .16 appointment of chairmen Art.11(3) . . . . . . . . . . . . . . . . . . . . . . . . . . . .4 external members Art.11(5) . . . . . . . . . . . . . . . . . . . . .5 as departments charged with the procedure Art.15(f) . . .12 bound by decisions of Enlarged Board of Appeal Art.112(3) . . . . . . . . . . . . . . .129 composition of Art.21(2),(3),(4) . . . . . . . . . . . . . . . . . . . .14 independence of members of Art.23 . . . . . . . . . . . . . . . .17 not bound by Rule 116 EPC G6/95 . . . . . . . . . . . . . . . . .224 objection to members of Art.24, G5/91, G1/05 . . . . . . .18, 213 presidium of Rule 12 . . . . . . . . . . . . . . . . . . . . . . . . . . . .15 responsibilities of following interlocutory revision G3/03 . . . . . . . . . . . .209 in general Art.21(1) . . . . . . . . . . . . . . . . . . . . . . . . . . .15 Legal Boards of Appeal G2/90 . . . . . . . . . . . . . . . . . .208 Technical Boards of Appeal G8/95 . . . . . . . . . . . . . . .209 rules of procedure Art.23(4) . . . . . . . . . . . . . . . . . . . . . .18 business methods excluded from patentability Art.52(c) . . . . . . . . . . . . . . . .28

C central industrial property offices administrative and legal co-operation with Art.131 . . . .164 communications with Rule 148 . . . . . . . . . . . . . . . . . . .164 exchange of information with EPO Art.130 . . . . . . . . . . .163 exchange of publications with EPO Art.132 . . . . . . . . . .166 filing of a European patent application with Art.75 . . . . . .50 forwarding application by Art.77, Rule 37 . . . . . . . . . . . .54 forwarding filing details to EPO Rule 35(3) . . . . . . . . . . . .50 inspection of files by Rule 149(1) . . . . . . . . . . . . . . . . . .164

requirements to file translations into national languages Art.65(1) . . . . . . . . . . . . . . . . . . . . . .43 certificate for a European patent form and content of Rule 74 . . . . . . . . . . . . . . . . . . . . .104 reissue after opposition Rule 87 . . . . . . . . . . . . . . . . . . .113 claims amendment of as of right Rule 137(2) . . . . . . . . . . . . . . . . . . . . . . . .153 after grant see limitation procedure during appeals G9/92, G4/93, G1/99 . . . . . . . . . . . . .221 during opposition Rule 79(1),(3), Rule 80, Rule 81, G1/93 . . . . . . . . . . . . . .109, 110, 211 during prosecution Rule 71(1) . . . . . . . . . . . . . . . . . . .99 following issuance of proposed text for grant Rule 71(4),(5) . . . . . . . . . . . . . . . . . . . . . . .100 following partial revocation Art.138(2) . . . . . . . . . . . .174 following receipt of search report Rule 137(2), (3) . . 153 following request for indication of intent Rule 70(2) . . .98 checked for on filing Art.90(3)-(5), Rule 57(c) . . . . . .87, 88 clarity of Art.84 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .73 content and form of Art.84, Rule 43 . . . . . . . . . . . . . . . . .74 correction of Rule 139 . . . . . . . . . . . . . . . . . . . . . . . . . .153 dependent Rule 43(3),(4) . . . . . . . . . . . . . . . . . . . . . . . .75 different in different states Rule 18, Rule 138 . . . . .40, 153 European patent application to include Art.78(1)(c) . . . . .56 extent of protection determined by Art.69, Art.70(3) .46, 47 incurring fees Rule 45, Rule 71(6), Rule 162 . .75, 100, 183 independent per claim category Rule 43(2) . . . . . . . . . . .74 late filing of Rule 58 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .89 no amendment of prior to receipt of search report Rule 137(1) . . . . . . . . . . . . . . . . . . . . . . .153 not to relate to unsearched subject matter Rule 137(5) .153 publication of Rule 68(1) . . . . . . . . . . . . . . . . . . . . . . . . .96 to be supported by description Art.84 . . . . . . . . . . . . . . .74 translations following maintenance in amended form Rule 82(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .112 into EPO languages before grant Rule 71(3) . . . . . . . . .99 into national languages Art.67(3) . . . . . . . . . . . . . . . . .45 claims fees due within 1 month of filing Rule 45 . . . . . . . . . . . . . . . . .75 due when approving text for grant Rule 71(6) . . . . . . . .100 amount RRF Art.2(15) . . . . . . . . . . . . . . . . . . . . . . . . . .199 for international (Euro-PCT) applications Rule 162 . . . . .183

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Index cloning human beings excluded from patentability Rule 28(a) . . . . . . . . . . . . . .30

formal requirements for Art.137 . . . . . . . . . . . . . . . . . .174 information on converted application Rule 156 . . . . . . .173 request for Art.135 . . . . . . . . . . . . . . . . . . . . . . . . . . . .172

common representative see representatives communication by hand Rule 2(1), Rule 128 . . . . . . . . . . . . . . . . . .98, 144 by post Rule 2(1), Rule 126 . . . . . . . . . . . . . . . . . . .98, 144 by technical means Rule 2(1), Rule 127 . . . . . . . . . .98, 144 in writing Rule 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .98 via representatives Rule 130 . . . . . . . . . . . . . . . . . . . . .145 compositions for use in medical methods patentable Art.53(c), Art.54(4) . . . . . . . . . . . . . . . . . . . . . . . . . .29, 32 second or further medical use of patentable Art.54(5) . . .32 computer programs excluded from patentability Art.52(2)(c) . . . . . . . . . . . . .28 patentable G3/08 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .209 conservation of evidence fee for RRF Art.2(17) . . . . . . . . . . . . . . . . . . . . . . . . . . .199 procedure for Rule 123 . . . . . . . . . . . . . . . . . . . . . . . . .142 Contracting States administrative and legal co-operation between Art.131(1), Rule 148, Rule 149, Rule 150 . . . . . . . . . . . . . . . .164, 165 ceasing to be parties to the EPC Art.172(4), Art.175, Art.176 . . . . . . . . . . . . . . . . .192, 193 denunciation of the EPC by Art.174 . . . . . . . . . . . . . . . .193 different claims, description and drawings for different States Rule 138 . . . . . . . . . . . . . . . . . . . . .153 effects of the European patent application and European patent in Art.2(2), Art.139(1),(2) . . . . . . . .1, 175 forwarding of applications to EPO

by Art.77, Rule 37 . . . . . . . . . . . . . . . . . . . . . . . . .54 inspection of files by courts of Art.131, Rule 149 . . . . . .164 jurisdiction of in entitlement disputes Protocol on Recognition Art.1-8 . . . . . . . . . . . . .195-196 other agreements between Art.149a . . . . . . . . . . . . . . .177 procedure for letters rogatory Rule 150 . . . . . . . . . . . . .165 re-establishment of rights by Art.122(6) . . . . . . . . . . . .151 conference of ministers Art.4a . . . . . . . . . . . . . . . . . . . .2 conversion into national patent applications deadline for requesting Rule 155(1) . . . . . . . . . . . . . . . .172 fee for Art.135(3), RRF Art.2(14) . . . . . . . . . . . . . .172, 199

correction of application documents Rule 139, G3/89, G11/91 . .153, 211 of decisions of EPO Rule 140 . . . . . . . . . . . . . . . . . . . . .154 of divisional application G1/05 . . . . . . . . . . . . . . . . . . . .213 of name of appellant G1/12 . . . . . . . . . . . . . . . . . . . . . .208 of priority claim Rule 59 . . . . . . . . . . . . . . . . . . . . . . . . .89 replacement of application not allowed as G2/95 . . . . .212 costs cannot be sole subject of appeal Rule 97(1) . . . . . . . . . .122 fee for requesting award of RRF Art.2(16) . . . . . . . . . . .199 minimum amount which can be the subject of appeal Rule 97(2), RRF Art.13 . . . . . . . . . . . . . .122, 202 procedure for fixing of Art.104, Rule 88 . . . . . . . . . . . . .114 courts of the Contracting States inspection of files by Art.131(1) . . . . . . . . . . . . . . . . . . .164 jurisdiction in entitlement proceedings Protocol on Recognition Art.1-8 . . . . . . . . . . . . .195-196 criminal act as grounds for petition for review Art.112(2)(e), Rule 105 . . . . . . . . . . . . . . . . . . . . .129, 131

D date of filing effective date for divisional application Art.76(1) . . . . . . .51 effective date for replacement application where original applicant not entitled Art.61(2) . . . . . . . . . . . . . . . . . . . .38 entry in the European Patent Register Rule 143(1)(b) . . .159 examination for requirements to obtain Art.90(1), Rule 40 . . . . . . . . . . . . . . . . . . . . . . . . . . .87, 63 minimum requirements for obtaining Rule 40 . . . . . . . . .64 no re-dating if matter contained in priority application Rule 56(3) . . . . . . . . . . . . . . . . . . . . . . . . . .87 re-dating on filing of missing parts Rule 56(2) . . . . . . . . .87 date of priority effect of Art.89 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .86 for divisional application Art.76(1) . . . . . . . . . . . . . . . . . .51 for replacement application where original applicant not entitled Art.61(2) . . . . . . . . . . . . . . . . . . . .38 rights of the same date Art.139 . . . . . . . . . . . . . . . . . . .175

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Index death or legal incapacity deletion from list of professional representatives Rule 154(2)(a) . . . . . . . . . . . . . . . . . . .169 does not terminate authorisation Rule 152(9) . . . . . . . .167 of applicant or proprietor Rule 142(1)(a),(b) . . . . . . . . .157 of opponent Rule 84(2) . . . . . . . . . . . . . . . . . . . . . . . . .110 of representative Rule 142(1)(c) . . . . . . . . . . . . . . . . . .157 decisions basis for Art.113 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .135 corrections of errors in Rule 140 . . . . . . . . . . . . . . . . . .163 drafts excluded from inspection Rule 144(b) . . . . . . . . .161 fixing the amount of costs Art.104(3) . . . . . . . . . . . . . . .114 form of Rule 111, Rule 113 . . . . . . . . . . . . . . . . . .135, 136 notification of Art.119, Rule 111(1), Rule 126(1) . . . . . . . . . . . . . . . . . . . . . . . . . .143, 135, 144 subject to appeal Art.106 . . . . . . . . . . . . . . . . . . . . . . . .122 declaration of priority see priority deficiencies checked for on filing Art.90(1),(3)-(5), Rule 55, Rule 57 . . . . . . . . . . . . . . . . . . . . . . . . . . . .87-88 correction of after filing Rule 58 . . . . . . . . . . . . . . . . . . . .89 during prosecution Art.94(3), Rule 71 . . . . . . . . . . . .97, 99 in notice of appeal Rule 101 . . . . . . . . . . . . . . . . . . . . .126 in notice of opposition Rule 77(1),(2) . . . . . . . . . . . . . . .109 in priority claim Rule 59 . . . . . . . . . . . . . . . . . . . . . . . . . .89 missing parts Rule 56 . . . . . . . . . . . . . . . . . . . . . . . . . . .87 non-payment of fee G2/97 . . . . . . . . . . . . . . . . . . . . . . .207 deposit depositary institution Rule 31 (1)(a),(c) . . . . . . . . . . . . . .70 instruments of accession and ratification Art.165(2), Art.166(3), Art.172(3) . . . . . . . . . . . . . . . . . .190, 191, 192 microbiological material Rule 31, Rule 34 . . . . . . . . .69, 72 new deposit of microbiological material Rule 34 . . . . . . .72 description addition of if omitted on filing Rule 56 . . . . . . . . . . . . . . .87 amendment of as of right Rule 137(2) . . . . . . . . . . . . . . . . . . . . . . . .153 during appeals G9/92, G4/93, G1/99 . . . . . . . . . . . . .221 during opposition Rule 79(1),(3), Rule 80, Rule 81, G1/93 . . . . . . . . . . . . . .109, 110, 211 during prosecution Rule 71 (1) . . . . . . . . . . . . . . . . . .99 following receipt of proposed text for grant Rule 71(4)100 following receipt of search report Rule 137(2), (3) . . .153

not to add matter Art.123(2) . . . . . . . . . . . . . . . . . . .152 must be in language of proceedings Rule 3(2), Rule 4(6) . . . . . . . . . . . . . . . .6, 7 post-grant must not extend protection Art.123(3) . . .152 checked for on filing Art.90(1), Rule 55, Rule 40(1)(c) . . . . . . . . . . . . . . . . . . . . . . . .87, 63 content of Rule 42 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .57 correction of deficiencies in Rule 56 . . . . . . . . . . . . . . . .89 correction of errors in Rule 139 . . . . . . . . . . . . . . . . . . .153 different for different Contracting States Rule 18(2), Rule 138 . . . . . . . . . . . . . . . . . . . . . . . .40, 153 European patent application to include Art.78(1)(b) . . . . .56 filing of missing parts Rule 56 . . . . . . . . . . . . . . . . . . . . .87 for determining the extent of protection Art.69(1) . . . . . . .46 presentation of Rule 49 . . . . . . . . . . . . . . . . . . . . . . . . . .59 prohibited matter Rule 48 . . . . . . . . . . . . . . . . . . . . . . . .59 replacement by reference to earlier application Rule 40(1)(c) & (2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .64 restrictions on amendment of Art.123(2),(3), Rule 137 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .152, 153 sequence listings Rule 30 . . . . . . . . . . . . . . . . . . . . . . . .70 designated office entry into regional phase Rule 159 . . . . . . . . . . . . . . . . .182 EPO as under PCT Art.153 . . . . . . . . . . . . . . . . . . . . . . .181 designation of Contracting States all deemed designated in new application Art.79(1) . . . . .62 designation in divisional applications Art.76(2) . . . . . . . .51 joint designation Art.149 . . . . . . . . . . . . . . . . . . . . . . . .177 list of published Rule 68(3), Rule 73(3), Rule 96 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .96, 104, 121 withdrawal in original application to extent replacement filed Rule 17(1) . . . . . . . . . . . . . . . . . . . . . .39 designation fee amount RRF Art.2(3) . . . . . . . . . . . . . . . . . . . . . . . . . . .197 due dates for Rule 39(1), Rule 36(4) . . . . . . . . . . . . .63, 52 grant delayed to allow for payment of Rule 71a(3) . . . . .100 not refunded unless application not forwarded by national office Rule 37(2), Rule 39(4) . . . . . . . . . . . . . . . . . . .54, 63 on Euro-PCT Rule 159(1)(d), Rule 160 . . . . . . . . . .182, 183 diagnostic methods can patent use of substances in new Art.54(4) . . . . . . . .32 definition of G1/04 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .217 excluded from patentability Art.53(c) . . . . . . . . . . . . . . . .29

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Index diagrams considered drawings Rule 46(3) . . . . . . . . . . . . . . . . . . .58 disclaimers conditions for unsupported G1/03, G2/03 . . . . . . . . . . . .212 disclosure abstract should summarise Rule 47(2) . . . . . . . . . . . . . .78 availability to the public G6/88, G1/92 . . . . . . . . . . . . . .220 biotechnological inventions may require deposit of biological material in order to Rule 31 . . . . . . . . . . . . . . .70 disclaiming disclosed subject-matter G2/10 . . . . . . . . . .212 insufficient as a ground for national revocation Art.138(1)(b) . . . . . . . . . . . . . . . . . . . . . . . .174 insufficient as a ground of opposition Art.100(b) . . . . . .107 of earlier search results Rule 141 . . . . . . . . . . . . . . . . .156 non-prejudicial Art.55, Rule 25, G3/98, G2/99 . . . . .34, 220 to be clear and complete Art.83 . . . . . . . . . . . . . . . . . . . .70 discoveries excluded from patentability Art.52(2)(a) . . . . . . . . . . . . .28 divisional application correction of G1/05 . . . . . . . . . . . . . . . . . . . . . . . . . . . .213 designation of Contracting States in Art.76(2) . . . . . . . . .51 deadline for filing Rule 36(1), G1/09 . . . . . . . . . . . .52, 213 due date for paying designation fee for Rule 36(4) . . . . . .52 entries in the European Patent Register for Rule 143(1)(k) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .159 fees due within 1 month of filing Rule 36(3) . . . . . . . . . . .52 following refusal of parent application G1/09 . . . . . . . . .213 inspection of parent prosecution file Art.128(3) . . . . . . .160 must be filed at EPO in Munich, The Hague or Berlin Rule 36(2) . . . . . . . . . . . . . . . . . . . .52 must be in language of parent Rule 36(2) . . . . . . . . . . . .52 sequences of permissible G1/06 . . . . . . . . . . . . . . . . . .213 time limit for identifying the inventor for Rule 60(2) . . . . .67 time limit for filing translation into language of parent Rule 6(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .8 documents excluded from file inspection Rule 144 . . . . . . . . . . . . . .161 filed subsequently Rule 50 . . . . . . . . . . . . . . . . . . . . . . . .98 form of Rule 49 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .59 in opposition proceedings Rule 86 . . . . . . . . . . . . . . . . .111 language of Art.14, Rule 3 . . . . . . . . . . . . . . . . . . . . . . .5, 6 mentioned in search report Rule 61(1)-(4), Rule 65 . .92, 94 requests for in opposition proceedings Rule 83 . . . . . . .110

signed by use of computer seal Rule 113 . . . . . . . . . . . .136 dosage regime potentially patentable G2/08 . . . . . . . . . . . . . . . . . . . . .218 drawings addition of if omitted on filing Rule 56 . . . . . . . . . . . . . . .87 amendment of as of right Rule 137(2) . . . . . . . . . . . . . . . . . . . . . . . .153 during opposition Rule 79(1),(3), Rule 80, Rule 81 . . . . . . . . . . . . . . . . . . . . . . . .109, 110 during prosecution Rule 71(1) . . . . . . . . . . . . . . . . . . .99 following receipt of proposed text for grant Rule 71(4) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .100 following receipt of search report Rule 137(2), (3) . . .153 not to add matter Art.123(2) . . . . . . . . . . . . . . . . . . .142 must be in language of proceedings Rule 3(2), Rule 4(6) . . . . . . . . . . . . . . . . . . . . . . . . . .6, 7 post-grant must not extend protection Art.123(3) . . .153 as part of a European patent application Art.78(1)(d), Rule 42(1)(e) . . . . . . . . . . .56, 57 correction of errors in Rule 139 . . . . . . . . . . . . . . . . . . .153 different for different Contracting States Rule 18(2), Rule 138 . . . . . . . . . . . . . . . . . . . . . . . .40, 153 filing of missing parts Rule 56 . . . . . . . . . . . . . . . . . . . . .87 for determining extent of protection Art.69(1) . . . . . . . . .46 form of Rule 46, Rule 49, Rule 50(1) . . . . . . . . . .58, 59, 98 prohibited matter Rule 48(1) . . . . . . . . . . . . . . . . . . . . . .59 publication of with the abstract Rule 47(4) . . . . . . . . . . . .77 reference to in the description Rule 42(1)(d) . . . . . . . . . .57 replacement by reference to earlier application Rule 40 (2) . . . . . . . . . . . . . . . . . . . . . . . . . .64 restrictions on amendment of Art.123(2),(3), Rule 137 . . . . . . . . . . . . . . . . . . . . . . . .152

E elected office EPO as an pursuant to the PCT Art.153(1), Rule 159 . . . . . . . . . . . . . . . . . . . . . . .181, 182 embryos uses of excluded from patentability Rule 28(c) . . . . . . . . .30 emergency conditions extension of patent term due to Art.63(2)(a) . . . . . . . . . .43 employer Court with jurisdiction over disputes with employee over a European patent Protocol on Recognition Art.5(2) . . . .195

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Index Enlarged Board of Appeal allocation of duties of Rule 13 . . . . . . . . . . . . . . . . . . . . .17 composition of Art.22(2), Rule 109(2) . . . . . . . . . . .17, 125 decisions on points of law Art.22(1)(a) . . . . . . . . . . . . . .17 external members appointed to Art.11(5) . . . . . . . . . . . . . .5 form of decision and opinion Art.112, Rule 111 . . .129, 135 members Art.11(3), Art.23, Art.24 . . . . . . . . . . . . . . .4, 18 objection to members of Art.24, G5/91, G1/05 . . .18, 213, 213 opinions Art.22(1)(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . .17 petitions for review Art.22(1)(c) . . . . . . . . . . . . . . . . . . . .17 refusal to consider inadmissible referral G3/95 . . . . . . .206 responsibilities of Art.22(1) . . . . . . . . . . . . . . . . . . . . . . .17 Rules of Procedure for Art.23(4), Rule 13(2) . . . . . . .18, 17 entitlement to the grant of a European patent forum for decisions on Protocol on Recognition Art.1-8 . . . . . . . . . . . . .195-196 options following Court decision Art.61(1) . . . . . . . . . . . .38 procedure following Court decision Rule 17 . . . . . . . . . . .39 stay of proceedings pending decision on Rule 14 . . . . . . .38 errors in documents filed with EPO correction of Rule 139 . . . . . . . . . . . . . . . . . . . . . . . . . .153 European patent amendment of Art.105a, 105b, Rule 95, Art.123 . . . . . . . . . . . . . . . . . .116, 117, 119, 152 authentic text of Art.70 . . . . . . . . . . . . . . . . . . . . . . . . . .47 certificate Rule 74, Rule 87 . . . . . . . . . . . . . . . . . .104, 113 content of Art.98, Rule 20, Rule 73 . . . . . . . . .104, 66, 104 effect of revocation or limitation on Art.68 . . . . . . . . . . . .45 effects Art.2(2), Art.63-70 . . . . . . . . . . . . . . . . . . .1, 43-47 entitlement to file for Art.58 . . . . . . . . . . . . . . . . . . . . . . .36 examination of opposition against Art.101 . . . . . . . . . . .108 extent of protection of Art.68, Art.69, Art.70(3),(4) . . .45-47 for a group of Contracting States Art.142 . . . . . . . . . . . .176 grant of Art.97, Rule 72 . . . . . . . . . . . . . . . . . . . . . . . . .104 grounds for opposition against Art.100 . . . . . . . . . . . . .107 grounds for revocation of Art.138 . . . . . . . . . . . . . . . . .174 infringement of Art.64(3) . . . . . . . . . . . . . . . . . . . . . . . . .43 keeping of files Rule 147 . . . . . . . . . . . . . . . . . . . . . . . .162 lapse of noted in register Rule 143(1)(p) . . . . . . . . . . . .159 limitation of Art.105a-105c . . . . . . . . . . . . . . . . . .116-121 maintenance in an amended form Art.101(3)(a) . . . . . .108 opposition Art.99 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .105 prior right effect of Art.139(1) . . . . . . . . . . . . . . . . . . . .175

procedure up to grant Art.90-94 . . . . . . . . . . . . . . . .87-101 publication following grant Art.98, Rule 73 . . . . . . . . . . . . . . . . .104 following limitation Art.105c, Rule 96 . . . . . . . . . . . .121 renewal fees due on Art.141 . . . . . . . . . . . . . . . . . . . . .175 request for grant of Rule 41 . . . . . . . . . . . . . . . . . . . . . . .56 right to a Art.60 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .37 right to amend if partially valid Art.138(2) . . . . . . . . . . .174 rights conferred by a Art.64 . . . . . . . . . . . . . . . . . . . . . . .43 transfer during the opposition period or during opposition proceedings Rule 85 . . . . . . . . . . . . . . . . . . . .48 translations required to have effect Art.65 . . . . . . . . . . . .43 European patent application abstract of Art.78(1)(e), Art.85, Rule 47 . . . . . . .56, 77, 78 amino acid sequences Rule 30 . . . . . . . . . . . . . . . . . . . .70 as an object of property Art. 148, Arts. 71-74, Rules 22-24 . . . . . . . . . . . . . . . . .47-49, 177 assignment of Art.72 . . . . . . . . . . . . . . . . . . . . . . . . . . . .47 authentic text for Art.70 . . . . . . . . . . . . . . . . . . . . . . . . . .47 biological material deposits for Rules 31 - 34 . . . . . . .70-73 claims fees Rule 45, RRF Art.2(15) . . . . . . . . . . . . .76, 199 common representative Rule 151, Rule 41(3) . . . . .166, 56 contractual licensing Art.73 . . . . . . . . . . . . . . . . . . . . . . .48 conversion into national applications Art.135, Art.137, Rule 155, Rule 156 . . . . . . . . . . . . . . . . .172-174 correction of deficiencies in Rule 55, Rule 58 . . . . . . .87-89 date of filing Art.80, Rule 40 . . . . . . . . . . . . . . . . . . . . . .64 designation of Contracting States Art.79, Art.149 . . . . . . . . . . . .63, 177 inventor Art.65, Rule 19 . . . . . . . . . . . . . . . . . . . .43, 66 disclosure of the invention Art.83 . . . . . . . . . . . . . . . . . . .70 divisional application Art.76, Rule 36 . . . . . . . . . . . . .51, 52 documents filed subsequently Rule 50 . . . . . . . . . . . . . . .98 drawings effect of Art.69(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . .46 replacement of Rule 56 . . . . . . . . . . . . . . . . . . . . . . . .87 requirements for Art.78(1)(d), Rule 46 . . . . . . . . .56, 58 equivalence with national filings Art.66 . . . . . . . . . . . . . .45 examination of Art.94, Rule 71 . . . . . . . . . . . . . . . . .97, 99 exclusive licences of Rule 24(a) . . . . . . . . . . . . . . . . . . . .49 extent of protection Art.69, Art.70(3),(4) . . . . . . . . . .46, 47 filed by persons not having the right to Art.61 . . . . . . . . .38 filing fee Rule 38 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .56 filing application Art.75, Rule 35 . . . . . . . . . . . . . . . . . . . . .50 translation Art.14(2), Art.90(3)-(5),

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Index Rule 6(1), Rule 57(a) . . . . . . . . . . . . . . . . . . . . .5, 87, 8, 88 form of application documents Rule 49 . . . . . . . . . . . . . .59 formalities examination Art.90(3) -(5) Rule 55, Rule 57 . . . . . . . . . . . . . . . . . . . . . . . . . . . .87, 88 forwarding of by national authorities Art.77, Rule 37 . . . .54 further processing of Art.121, Rule 135, RRF Art.2(12) . . . . . . . . . . . . . . . . . . . . . . . . . . . .148, 198 inspection of files Art.128, Rule 145, Rule 149 . . . . . . . . . . . . . . . . . . . .160, 161, 164 international application as Art.153, Rules 159-164 . . . . . . . . . . . . . . . . . . . . . . . . . . . .181-186 keeping of files Rule 147 . . . . . . . . . . . . . . . . . . . . . . . .162 languages Art.14, Rule 3, Rule 36(2) . . . . . . . . . . . .5, 6, 52 limitation on withdrawal pending decision on entitlement Rule 15 . . . . . . . . . . . . . . . . . . . .39 mention of the inventor Art.81, Rule 20 . . . . . . . . . . . . . .67 multiple or joint applicants Art.59 . . . . . . . . . . . . . . . . . .36 nucleotide sequences Rule 30 . . . . . . . . . . . . . . . . . . . . .70 persons entitled to file Art.58 . . . . . . . . . . . . . . . . . . . . . .36 prior right effects of Art.139(1) . . . . . . . . . . . . . . . . . . .175 prohibited matter Rule 48 . . . . . . . . . . . . . . . . . . . . . . . .59 provisional protection Art.67 . . . . . . . . . . . . . . . . . . . . . .45 provisions governing content and form of Rule 41-49 . . . . . . . . . . . . . . . . . . . . . . . . . .56-59 publication application Art.93, Rule 67-69 . . . . . . . . . . . . . . . .95-96 PCT application replaces Art.153(3) . . . . . . . . . . . . .181 re-establishment of rights Art.122, Rule 136 . . . . .150, 151 refusal after decision on entitlement Art.61(1)(c) . . . . . . . . . .38

by Examining Division Art.97(2) . . . . . . . . . . . . . . . . .103 following formalities examination Art.90(5) . . . . . . . . .87 registration of a transfer Rule 22 . . . . . . . . . . . . . . . . . . . . . . . . . .48 of licences Rule 23, Rule 24 . . . . . . . . . . . . . . . . .48, 49 renewal fees Art.86 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .78 replacement when applicant found not entitled Art.61(1)(b), Rule 17 . . . . . . . . . . . . . . . .38, 39 request for examination of Art.94, Rule 70 . . . . . . . . . . . .97, 98 for grant Art.78(1)(a), Rule 41 . . . . . . . . . . . . . . . . . . .56 requirements for Art.78(1), Rule 49 . . . . . . . . . . . . . .56, 59 restitutio in integrum, see re-establishment of rights rights conferred by publication of Art.67 . . . . . . . . . . . . .45 search fee for Rule 38, RRF Art.2(2) . . . . . . . . . . . .56, 197 secrecy provisions, effect of Art.77(2), Rule 37(1)(b) . . . . . . . . . . . . . . . . . . . . . . . . .54

state of the art Art.54(2)-(4) . . . . . . . . . . . . . . . . . . . . . .32 sub-licences of Rule 24 . . . . . . . . . . . . . . . . . . . . . . . . . .49 transfer of Art.71, Art.72, Rule 22 . . . . . . . . . . . . . . .47, 48 unity of application Art.118 . . . . . . . . . . . . . . . . . . . . . . . .143 of invention Art.82, Rule 44 . . . . . . . . . . . . . . . . . . . . .69 European Patent Convention accession to Art.166 . . . . . . . . . . . . . . . . . . . . . . . . . . .191 all languages equally authentic Art.177 . . . . . . . . . . . . .193 amendment of Art.33(1), Art.35(3), Art.172 . . . .21, 22, 192 denunciation of Art.174 . . . . . . . . . . . . . . . . . . . . . . . . .193 duration of Art.171 . . . . . . . . . . . . . . . . . . . . . . . . . . . .192 entry into force Art.169 . . . . . . . . . . . . . . . . . . . . . . . . .191 ratification of Art.165 . . . . . . . . . . . . . . . . . . . . . . . . . . .190 revision of Art.172 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .192 territorial field of application Art.168 . . . . . . . . . . . . . . .191 EPO administrative structure and management Art.10-25 . .3-19 as designated or elected Office Art.153, Rule 159 . . . . . . . . . . . . . . . . . . . . . . . . .181-182 as organ of the European Patent Organisation Art.4(2)(a) . .2 as receiving Office Art.151, Rule 157 . . . . . . . . . . . . . . .179 decisions of Rule 111 - 113 . . . . . . . . . . . . . . . . . .135-136 departments of Art.15 . . . . . . . . . . . . . . . . . . . . . . . . . . .12 International Preliminary Examining Authority Art.152, Rule 158 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .180 International Searching Authority Art.152, Rule 158 . . . .180 languages Art.14 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5 President Art.5(3), Art.10 . . . . . . . . . . . . . . . . . . . . . . .2, 3 special departments Art.143 . . . . . . . . . . . . . . . . . . . . .176 sub-offices Art.7, . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3 Vice-Presidents Art.10(3), Art.11(2), Rule 9(2) . . . . . .4, 12 European Patent Register entries in Rule 143 . . . . . . . . . . . . . . . . . . . . . . . . . . . .159 establishment of Art.127 . . . . . . . . . . . . . . . . . . . . . . . .159 languages Art.14(8) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6 Legal Division responsible for Art.20(1) . . . . . . . . . . . . . .15 rectification of the designation of an inventor Rule 21 . . .66 registering licences and other rights Rule 23, Rule 24 48-49 registering transfers Rule 22, Rule 85 . . . . . . . . . . . . . . .48 European patent specification content and form of Rule 73 . . . . . . . . . . . . . . . . . . . . .104 declaration of priority included in Rule 52(5) . . . . . . . . . .84

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Index in amended form following limitation Art.105c, Rule 96 . . . . . . . . . . . .121 following opposition Art.103, Rule 87 . . . . . . . . .112-113 mention of the inventor included in Rule 20(1) . . . . . . . . .67 publication after grant Art.98 . . . . . . . . . . . . . . . . . . . . . . . . . . . .104 in amended form following limitation Art.105c . . . . . .121 in amended form following opposition Art.103 . . . . . .112 in language of proceedings Art.14(6) . . . . . . . . . . . . . . .6 translation of Art.65 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .43 European qualifying examination as requirement for entry on list of profession representatives Art.134(2)(c) . . . . . . . . . . . . . . . . . . . .168 qualifications and training for determined by Administrative Council Art.134a(1)(b) . . . . . . . . . . . . . .170 European search report comments by the applicant Rule 70(2) . . . . . . . . . . . . . . .98 content of Rule 61 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .92 drawing up of Art.17, Art.92 . . . . . . . . . . . . . . . . . . .13, 92 extended Rule 62 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .93 fees for RRF Art.2(2), RRF Art.9 . . . . . . . . . . . . . .197, 201 in language of the proceedings Rule 61(5) . . . . . . . . . . . .92 incomplete Rule 63 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .93 PCT search treated as Art.153(6) . . . . . . . . . . . . . . . . .181 publication of Art.92, Rule 68, Rule 69 . . . . . . . . . . .92, 96 response to Rule 70a . . . . . . . . . . . . . . . . . . . . . . . . . . . .99 Search Division responsible for Art.17 . . . . . . . . . . . . . . .12 supplementary Art.153(7), . . . . . . . . . . . . . . . . . . . . . .182 where the invention lacks unity Rule 64, Rule 164 . .94, 185 evidence conservation of Rule 123 . . . . . . . . . . . . . . . . . . . . . . . .142 disregarding late filed Art.114(2), Rule 116(1) . . . .136, 138 may be submitted in any language Rule 3(3) . . . . . . . . . . .6 new at Oral Proceedings G4/92 . . . . . . . . . . . . . . . . . . .222 taking of Art.117, Rule 117-123 . . . . . . . . . . . . . .139-142 examination Examining Divisions responsible for Art.18(1) . . . . . . . . .13 request for Art.94(1), Rule 70 . . . . . . . . . . . . . . . . . .97, 98 procedure Rule 71 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .99 examination as to formal requirements correction of deficiencies Rule 58, Rule 59, Rule 60 .89, 66 following accordance of date of filing Art.90(3)-(5), Rule 57 . . . . . . . . . . . . . . . . . . . . . . . .87, 88

Receiving Section responsible for Art.16 . . . . . . . . . . . . .12 examination by the EPO of its own motion power to Art.114(1) . . . . . . . . . . . . . . . . . . . . . . .136 examination fee amount RRF Art.2(6) . . . . . . . . . . . . . . . . . . . . . . . . . . .196 reduction if EPO IPEA RRF Art.14(2) . . . . . . . . . . . . . . . .202 refund of RRF Art.11 . . . . . . . . . . . . . . . . . . . . . . . . . . .202 examination on filing correction of deficiencies Rule 58, Rule 59, Rule 60 .89, 67 following accordance of date of filing Art.90(3)-(5), Rule 57 . . . . . . . . . . . . . . . . . . . . . . . .87, 88 missing parts Rule 56 . . . . . . . . . . . . . . . . . . . . . . . . . . .87 procedure if no filing date accorded Art.90(2), Rule 55 . .87 Receiving Section responsible for Art.16 . . . . . . . . . . . . .12 to determine date of filing Art.90(1) . . . . . . . . . . . . . . . . .87 examination procedure requirements for Art.94, Rule 71 . . . . . . . . . . . . . . . .97, 99 suspension of Rule 14, Rule 142 . . . . . . . . . . . . . . .38, 157 Examining Divisions allocation of duties to Rule 11 . . . . . . . . . . . . . . . . . . . . .12 appeals from decisions of Art.21(1),(3), Art.106(1) .15, 123 composition Art.18(2), Art.33(3) . . . . . . . . . . . . . . . .13, 21 decision on conservation of evidence Rule 123(4) . . . . .142 decision on PCT filing date Rule 159(2) . . . . . . . . . . . . .182 decisions of Art.97 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .103 form of decisions of Rule 111 . . . . . . . . . . . . . . . . . . . .135 organisation Rule 9(1) . . . . . . . . . . . . . . . . . . . . . . . . . . .12 relationship with Receiving Section Rule 10 . . . . . . . . . . .13 responsibilities of in limitation proceedings Rule 91 . . . . . . . . . . . . . . . .118 in reviewing PCT filing dates Rule 159(2) . . . . . . . . . .182 in substantive examination Art.18(1) . . . . . . . . . . . . .13 technical opinions by Art.25 . . . . . . . . . . . . . . . . . . . . . .19 exclusion of Board Members application of principles to other departments G5/91 . . . . . . . . . . . . . . . . . . . . . . . . . . . .213 at Board Member’s request G1/05 . . . . . . . . . . . . . . . . .213 in general Art 24 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .18 reasonable suspicion required for G1/05 . . . . . . . . . . . .213 exhibitions certificate of Rule 25, Rule 159(1)(h) . . . . . . . . . . . .34, 182

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Index displaying inventions at Art.55(1)(b), Art.55(2) . . . . . . . .34 experts access to biological material by Rule 32 . . . . . . . . . . . . .71 commissioning of Rule 121 . . . . . . . . . . . . . . . . . . . . . .141 evidence of Art.117 Rule 117 . . . . . . . . . . . . . . . .139, 140 informed in letters rogatory procedure Rule 150(5) . . . .165 reimbursement of expenses Rule 122(2),(3) . . . . .141-142 reports of Rule 121, Rule 122 . . . . . . . . . . . . . . . . . . . .141 testimony and statements of Rule 124 . . . . . . . . . . . . . .139 extensions of time see time limits extension of subject matter as ground of opposition Art.100(c) . . . . . . . . . . . . . . . .107 as ground of revocation Art.138(1)(c),(d) . . . . . . . . . . .174 divisional applications Art.76(1) . . . . . . . . . . . . . . . . . . .51 inadmissible Art.123(2),(3) . . . . . . . . . . . . . . . . . . . . . .152

F facts and evidence date for submission Rule 116 . . . . . . . . . . . . . . . . . . . .138 power to disregard Art.114(2) . . . . . . . . . . . . . . . . . . . .136 features of the invention claims defined in terms of Rule 43(1) . . . . . . . . . . . . . . .75 determining unity of invention Rule 44(1) . . . . . . . . . . . .69 fees as provided for in the EPC RRF Art.1(a), RRF Art.2 . . . .197 as provided for in the Implementing Regulations RRF Art.1(a), RRF Art.2 . . . . . . . . . . . . . . .197 due date RRF Art.4 . . . . . . . . . . . . . . . . . . . . . . . . . . . .200 entitlement to reduction Rule 6(3) RRF Art.14, G6/91 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .8, 200, 224 laid down by the President of the Office RRF Art.3 . . . . .199 payment of RRF Art.5 . . . . . . . . . . . . . . . . . . . . . . . . . .200 pursuant to the PCT RRF Art.1(b) . . . . . . . . . . . . . . . . . .197 reduction of Rule 6(3), RRF Art.14 . . . . . . . . . . . . . . .8, 202 refund of additional search fees Rule 64(2) . . . . . . . . . . . . . . . .94 appeal fee Rule 103 . . . . . . . . . . . . . . . . . . . . . . . . .129 examination fee RRF Art.11 . . . . . . . . . . . . . . . . . . . .202 fee for technical opinion RRF Art.10 . . . . . . . . . . . . .202 fee for petition for review Rule 110 . . . . . . . . . . . . . .132 insignificant amounts RRF Art.12 . . . . . . . . . . . . . . .202 figures see drawings

files communication of information contained in Rule 146 . . .161 keeping of Rule 147 . . . . . . . . . . . . . . . . . . . . . . . . . . .162 filing at national offices Art.75(1)(b) . . . . . . . . . . . . . . . . . . . . .50 at the EPO Art.75(1)(a), Rule 35(1) . . . . . . . . . . . . . . . . .50 by reference to earlier application Rule 40(1)(c) . . . . . . .64 divisional applications Art.76(1), Rule 36(3) . . . . . . .51, 52 entitlement to file Art.58 . . . . . . . . . . . . . . . . . . . . . . . . .36 equivalence of European with national Art.66 . . . . . . . . . .45 priority based on first Art.87(4)(5) . . . . . . . . . . . . . . . . . .82 of documents Rule 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . .98 filing fee additional for applications with more than 35 pages Art 78(2), Rule 38(2), RRF Art 2(1a)) . . . . . . . . . . . .56,197 checked for on filing Art.90(3)-(5), Rule 57(e) . . . . . .87, 89 deadline for payment on a divisional application Rule 36(2) . . . . . . . . . . . . . . . . .52 new application Rule 38 . . . . . . . . . . . . . . . . . . . . . . .56 replacement application Rule 17(2) . . . . . . . . . . . . . . .40 reduction if filed in non-EPO language Rule 6(3), RRF Art.14 . . . . . . . . . . . . . . . . .8, 202 refunded if application not forwarded Rule 37(2) . . . . . . .54 amount RRF Art.2(1) . . . . . . . . . . . . . . . . . . . . . . . . . . .197 formalities examination correction of deficiencies Rule 58, Rule 59, Rule 60 .89, 67 following accordance of date of filing Art.90(3)-(5), Rule 57 . . . . . . . . . . . . . . . . . . . .87, 88 Receiving Section responsible for Art.16 . . . . . . . . . . . . .12 formalities officers delegation of duties to G1/02 . . . . . . . . . . . . . . . . . . . . .209 forwarding of European patent application deadlines for Rule 37(1) . . . . . . . . . . . . . . . . . . . . . . . . .54 requirement on National Offices Art.77, . . . . . . . . . . . . . .54 withdrawal due to failure to Rule 37(2) . . . . . . . . . . . . . .54 fundamental procedural defects criminal act Art. 112a(2)(e) . . . . . . . . . . . . . . . . . . . . . .130 failure to decide on request Rule 104(b) . . . . . . . . . . . .131 failure to hold oral proceedings Rule 104(a) . . . . . . . . . .131 involvement of excluded Board member Art.112a(2)(a) . . . . . . . . . . . . . . . . . . . . . . . . .130 involvement of non-Board member Art.112a(2)(b) . . . .130 violation of right to comment Art. 112a(2)(c) . . . . . . . . .130

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Index further processing availability of Art.121(1) . . . . . . . . . . . . . . . . . . . . . . . .148 effect of Art.121(3) . . . . . . . . . . . . . . . . . . . . . . . . . . . .148 exclusions from Art.121(4), Rule 135(2) . . . . . . . . . . . .148 fee for RRF Art.2(12) . . . . . . . . . . . . . . . . . . . . . . . . . . .196 procedure for Rule 135(1) . . . . . . . . . . . . . . . . . . . . . . .148

G games rules for excluded from patentability Art.52(2)(c) . . . . . . .28 general principles of procedural law of the Contracting States Art.125 . . . .157 germ line of human beings modification of excluded from patentability Rule 28(b) . . .30 good faith and legitimate expectations does not oblige EPO to notify fee is missing G2/97 . . . . .207 grant of a European patent conclusion of the grant procedure Rule 71a . . . . . . . . . .100 decision on Art.97, Rule 72 . . . . . . . . . . . . . . . . . . . . . .103 delayed pending payment of renewal fee Rule 71a(4) . .100 fees due on Rule 71(3), RRF Art.2(7)&(8) . . . . . . . .99, 198 publication of in the European Patent Bulletin Art.97(3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .103 request for Art.78(1)(a), Rule 41 . . . . . . . . . . . . . . . . . . .56 text of the European patent application forming the basis for grant Rule 71(3) . . . . . . . . . . . . . . . . . . . .100 ground of opposition appeal limited by G9/91, G10/91, G7/95 . . . .215, 207, 216 defined Art.100 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .107 lack of unity not a G1/91 . . . . . . . . . . . . . . . . . . . . . . . .215 new introduced by intervener G1/94, G3/04 . . . . . . . . . . . . . . . . . . . .214 with consent G10/91, G1/95 . . . . . . . . . . . . . . .207, 215 novelty and inventive step distinct G7/95 . . . . . . . . . . . .216 limit scope of opposition G9/91, G10/91, G7/95 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .215, 207, 216

I Implementing Regulations amendment of Art.33(1)(c) . . . . . . . . . . . . . . . . . . . . . . .21 as part of EPC Art.164(1) . . . . . . . . . . . . . . . . . . . . . . . .190 inadmissible extension of patent application Art.123(2) . . . . . . . . . . . . . . . . . . .152 of patent Art.123(3) . . . . . . . . . . . . . . . . . . . . . . . . . . . .153 industrial application definition of Art.57 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .36 description to disclose Rule 42(1)(f) . . . . . . . . . . . . . . . .58 lack of as ground of opposition Art.100(a) . . . . . . . . . . . . . .107 as ground of revocation Art.138(1)(a) . . . . . . . . . . . .174 requirement for Art.52(1) . . . . . . . . . . . . . . . . . . . . . . . .28 information presentation of excluded from patentability Art.52(2)(d) . . . . . . . . . . . . . . . . . . . . . . . . .28 infringement of a European patent Art.64(3) . . . . . . . . . . . . . . . . . . . . .43 insignificant amounts refund of RRF Art.12 . . . . . . . . . . . . . . . . . . . . . . . . . . .202 inspection of files by courts and authorities of Contracting States Art.131, Rule 149 . . . . . . . . . . . . . . . . . . . . . . .164 by others Art.128 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .160 parts excluded from Rule 144 . . . . . . . . . . . . . . . . . . . .161 procedures for Rule 145 . . . . . . . . . . . . . . . . . . . . . . . .161 Institute of Professional Representatives establishment and membership of Art.134a . . . . . . . . . .170 intergovernmental conference see conference of ministers International application see PCT application international exhibitions see exhibitions international filing see PCT application

H human body excluded from patentability Rule 29 . . . . . . . . . . . . . . . . .30

international preliminary examination additional payments for Rule 158(2) . . . . . . . . . . . . . . .180 authority for EPO to act as Art.152 . . . . . . . . . . . . . . . . .180

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Index fee for RRF Art.2(19) . . . . . . . . . . . . . . . . . . . . . . . . . . .199 reduction in fees following RRF Art.14(2) . . . . . . . . . . . .202 interruption in the delivery of mail extensions of time due to Rule 134(2) . . . . . . . . . . . . . .146 interruption of proceedings due to death or incapacity Rule 142 . . . . . . . . . . . . . . . . . . .157 entitlement dispute Rule 14 . . . . . . . . . . . . . . . . . . . . .38 intervention based on new grounds G1/94, G3/04 . . . . . . . . . . . . . .214 in opposition proceedings Art.105, Rule 89 . . . . . .114, 115 in appeal proceedings G1/94 . . . . . . . . . . . . . . . . . . . . .214 not permissible after conclusion of written proceedings G12/91 . . . . .214 if no appeal filed G4/91 . . . . . . . . . . . . . . . . . . . . . . .214 invention application to describe Art.78(1)(b), Rule 42 . . . . . . .56, 57 defined by technical features Rule 43(1) . . . . . . . . . . . . .75 entitlement to employee’s Art.60(1) . . . . . . . . . . . . . . . . .37 exceptions to patentability Art.53 . . . . . . . . . . . . . . . . . . .29 industrial application Art.57 . . . . . . . . . . . . . . . . . . . . . . .36 inventive step Art.56 . . . . . . . . . . . . . . . . . . . . . . . . . . . .35 non-prejudicial disclosure Art.55 . . . . . . . . . . . . . . . . . . .34 novelty Art.54 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .32 patentable Art.52 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .28 sufficiency of disclosure Art.83 . . . . . . . . . . . . . . . . . . . .70 title of Rule 41(2)(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . .57 unity of in general Art.82, Rule 44 . . . . . . . . . . . . . . . . . . . . . .69 in PCT applications Rule 158 . . . . . . . . . . . . . . . . . . .180 multiple independent claims Rule 43(2) . . . . . . . . . . . .75 reconsideration of Rule 164 . . . . . . . . . . . . . . . . . . . .185 search report when lacking Rule 64 . . . . . . . . . . . . . . .94 inventive step definition of Art.56 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .35 requirement for Art.52(1) . . . . . . . . . . . . . . . . . . . . . . . .28 inventor designation of entries in the European Patent Register Rule 143(1)(g) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .159 form of Rule 19 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .66 period for filing Rule 60, Rule 163(1) . . . . . . . . . .67, 184

presence of checked on filing Art.90(3)-(5), Rule 57(f) . . . . . . . . . . . . . . . .87, 88 published Rule 20 . . . . . . . . . . . . . . . . . . . . . . . . . . . .67 late filing of Rule 60 . . . . . . . . . . . . . . . . . . . . . . . . . .67 rectification of Rule 21 . . . . . . . . . . . . . . . . . . . . . . . .67 waiver of publication of Rule 20, Rule 144(c) . . . .67, 161 when required Art.81 . . . . . . . . . . . . . . . . . . . . . . . . .66 employee Art.60(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .37 excluded from inspection Rule 144(c) . . . . . . . . . . . . . .161 multiple inventors Art.60(2) . . . . . . . . . . . . . . . . . . . . . . .37 right of the to be mentioned Art.62 . . . . . . . . . . . . . . . . .42 right to a European patent Art.60(1) . . . . . . . . . . . . . . . . .37 invitation during appeal proceedings Rule 100(2) . . . . . . . . . . . . .126 during examination procedure Rule 71(1) . . . . . . . . . . . .99 during oppositions Art.101(1) Rule 77(2), Rule 79(1),(3), Rule 81, Rule 82, Rule 83 . . . . . . . . . . . . . . .108-110, 112 prior to Oral Proceedings Rule 116(2) . . . . . . . . . . . . . .139 to appoint representative Rule 152(2) . . . . . . . . . . . . . .167 to correct deficiencies in Euro-PCT applications Rule 163 . . . . . . . . . . . . . . .184 in European patent applications Rule 58, Rule 59 . . . .89 in notice of opposition Rule 77(2) . . . . . . . . . . . . . . .109 in request for limitation Rule 94 . . . . . . . . . . . . . . . . .118 to file missing parts Rule 56(1) . . . . . . . . . . . . . . . . . . . .87 to provide information on prior art Art.124, Rule 141 . . . . . . . . . . . . . . . . . . . . . . . . .155, 156

J joint applicants see applicants joint designation see designation of Contracting States joint proprietors see proprietor of the patent

L language of proceedings amendment to be filed in Rule 3(2) . . . . . . . . . . . . . . . . . .6 application published in Art.14(5) . . . . . . . . . . . . . . . . . . .6 authentic text determined by Art.70(1) . . . . . . . . . . . . . .48 definition of Art.14(3) . . . . . . . . . . . . . . . . . . . . . . . . . . . .6 exceptions in oral proceedings Rule 4 . . . . . . . . . . . . . . . .7 for ex-PCT applications G4/08 . . . . . . . . . . . . . . . . . . . .224 patent published in Art.14(6) . . . . . . . . . . . . . . . . . . . . . . .6 search report drawn up in Rule 61(5) . . . . . . . . . . . . . . . .92

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Index language(s) before the EPO Art.14, Rules 3-7, G4/08 . . . . . . . .5-8, 224 European divisional application Rule 36(2) . . . . . . . . . . . .52 European patent application Art.14(2) . . . . . . . . . . . . . . . .5 Evidence documentary Rule 3(3) . . . . . . . . . . . . . . . . . . . . . . . . .6 oral Rule 4(3),(6) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .7 in oral proceedings Rule 4 . . . . . . . . . . . . . . . . . . . . . . . . .7 in general Art.14, Rules 3-7 . . . . . . . . . . . . . . . . . . . . . .5-8 in written proceedings Rule 3 . . . . . . . . . . . . . . . . . . . . . .6 PCT application filed at EPO Rule 157(2) . . . . . . . . . . . . . . . . . . . . . .179 in EPO language Art.153(3), G4/08 . . . . . . . . . .181, 224 in non-EPO language Art.153(4) . . . . . . . . . . . . . . . .182 search report Rule 61(5) . . . . . . . . . . . . . . . . . . . . . . . . .92 lapse of the European patent continuation of opposition after Rule 84(1) . . . . . . . . . . .110 opposition after Rule 75 . . . . . . . . . . . . . . . . . . . . . . . . .105 recorded in register Rule 143(1)(p) . . . . . . . . . . . . . . . .159 Legal Division appeal from decisions of Art.106(1) . . . . . . . . . . . . . . . .122 decisions taken by Art.20 . . . . . . . . . . . . . . . . . . . . . . . .15 establishment of Art.15(e) . . . . . . . . . . . . . . . . . . . . . . . .12 form of decisions Rule 111 . . . . . . . . . . . . . . . . . . . . . .135 organisation of Rule 9 . . . . . . . . . . . . . . . . . . . . . . . . . . .12 responsibilities of Art.20, Rule 11(2) . . . . . . . . . . . . .15, 12 letters rogatory procedure for Rule 150 . . . . . . . . . . . . . . . . . . . . . . . . .165 licence exclusive Rule 24(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . .49 registration of Rule 22, Rule 23 . . . . . . . . . . . . . . . . .48, 49 sub-licence Rule 24(b) . . . . . . . . . . . . . . . . . . . . . . . . . .49 limitation procedure content of request Rule 92 . . . . . . . . . . . . . . . . . . . . . . .118 decision on request Rule 95 . . . . . . . . . . . . . . . . . . . . . .119 effect of Art. 68 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .45 effect of opposition on Rule 93 . . . . . . . . . . . . . . . . . . . .116 examination of Art.105b, Rule 94, Rule 95 . . .115, 118, 119 Examining Division responsible for Rule 91 . . . . . . . . . .118 limitation fee Art.105a, RRF Art.2(10) . . . . . . . . . .116, 198 relationship with opposition procedure Art 105a(2), Rule 93 . . . . . . . . . . . . . . . . . . . . . . . . . . .116

republication of amended patent Art.105c, Rule 96 . . . .121 subject of proceedings Rule 90 . . . . . . . . . . . . . . . . . . .116 limitation fee amount RRF Art.2(10) . . . . . . . . . . . . . . . . . . . . . . . . . .198 reduction if limitation in non-EPO language Rule 6(3), RRF Art.14 . . . . . . . . . . . . . . . . .8, 202 requirement to pay Art.105a(1) . . . . . . . . . . . . . . . . . . .116 list of depositary institutions and experts publication of by EPO Rule 33(6) . . . . . . . . . . . . . . . . . . .73 list of professional representatives see representatives London Agreement . . . . . . . . . . . . . . . . . . . . . . . .203-206 loss of rights notification of Rule 112 . . . . . . . . . . . . . . . . . . . . . . . . .135

M maintenance of the European patent as amended Art.101(3)(a) . . . . . . . . . . . . . . . . . . . . . . .108 procedure for Rule 82, Rule 87 . . . . . . . . . . . . . . .112, 113 rejection due to failure to fulfil formal requirements G1/90 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .224 mathematical methods excluded from patentability Art.52(2)(a) . . . . . . . . . . . . .28 means of communication extensions due to failure of Rule 134(1) . . . . . . . . . . . . .146 notification by technical Rule 125(2)(b), Rule 127 .143, 144 mental acts schemes, rules and methods for Art.52(2)(c) . . . . . . . . . .28 methods excluded from patentability business Art.52(2)(c) . . . . . . . . . . . . . . . . . . . . . . . . . . .28 diagnostic Art.53(c), G1/04 . . . . . . . . . . . . . . . . . . .29, 217 essentially biological Art.53(b) . . . . . . . . . . . . . . . . . . . . .29 mental acts Art.52(2)(c) . . . . . . . . . . . . . . . . . . . . . . . . .28 playing games Art.52(2)(c) . . . . . . . . . . . . . . . . . . . . . . .28 surgical Art.53(c) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .29 therapy Art.53(c) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .29 microbiological material see deposit microbiological processes definition of Rule 26(6) . . . . . . . . . . . . . . . . . . . . . . . . . .29

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Index patentable Art.53(b), Rule 27 . . . . . . . . . . . . . . . . . .29, 30 micro-organisms see biological material mistakes see errors in documents missing parts late filing of Rule 56 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .87 morality inventions contrary to excluded from patentability Art.53(a) . . . . . . . . . . . . . . . . . . . . . . . . . . .29 matter contrary in a European patent application Rule 48(1)(a),(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .59 stem cells G2/06 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .217

N national application fee for conversion of European patent application Art.137(2)(a), RRF Art.2(14) . . . . . . . .174, 199 national law grounds for revocation under Art.138 . . . . . . . . . . . . . . .174 infringement determined under Art.64(3) . . . . . . . . . . . . .43 prior art effect under Art.139, Art.140 . . . . . . . . . . . . . .175 renewal fees for granted patents Art.141 . . . . . . . . . . . .175 to permit conversion of European Patent Application Art.135-137 . . . . . . . . . . . . . . . . . . . . .172-173 national patent as prior right Art.139(2) . . . . . . . . . . . . . . . . . . . . . . . . .175 national patent application conversion into a Art.135-137, Rule 155 . . . . . . . .172-173 information concerning art cited against Art.124, Rule 141 . . . . . . . . . . . . . . . . . . . . . . . . .155, 156 natural disaster dislocation of the proper functioning of the EPO Rule 134(5) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .147 new European patent application see replacement application non-prejudicial disclosure see disclosure notice of appeal content of Rule 99 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .123 notification

by hand Rule 128 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .144 by post Rule 126 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .144 by technical means Rule 127 . . . . . . . . . . . . . . . . . . . . .144 in general Rule 125 . . . . . . . . . . . . . . . . . . . . . . . . . . . .143 public Rule 129 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .144 requirement for Art.119 . . . . . . . . . . . . . . . . . . . . . . . . .143 time limits running from Rule 131(2) . . . . . . . . . . . . . . .145 via representatives Rule 130 . . . . . . . . . . . . . . . . . . . . .145 novelty definition of Art.54, G6/88, G1/92 . . . . . . . . . . . . . .32, 220 dosage regime can provide basis for G2/08 . . . . . . . . . .219 earlier applications effect on Art.52(3), Rule 165 . . . .28, 32 examination of Art.94(1), Art.97(1) . . . . . . . . . . . . .97, 103 lack of as ground of opposition Art.100(a) . . . . . . . . . . .107 lack of as ground of revocation Art.138(1)(a) . . . . . . . . .174 non-prejudicial disclosures against Art.55 . . . . . . . . . . . .34 requirement for Art.52(1) . . . . . . . . . . . . . . . . . . . . . . . .28 nucleotide sequences European patent application concerning Rule 30 . . . . . . .70

O objections obligations to raise in appeal proceedings Rule 106 . . . .131 official languages of the EPO Art.14(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5 of the Contracting States Art.14(4) . . . . . . . . . . . . . . . . . .6 translations into see translations opponent death or legal incapacity of an Rule 84(2) . . . . . . . . . . .110 identified in notice of opposition Rule 76(2)(a) . . . . . . . .105 parties to proceedings Art.99(3) . . . . . . . . . . . . . . . . . .105 re-establishment of rights by G1/86 . . . . . . . . . . . . . . . .214 transfer of status as G4/88, G2/04 . . . . . . . . . . . . .215, 217 opposition deficiencies in the notice of Rule 77(1),(2) . . . . . . . . . . .109 examination of Art.101, Rule 79, Rule 81, Rule 82 . . . . . . . . . . . . . . . . . . . . . .108-110, 112 form and content of notice of Rule 76 . . . . . . . . . . . . . .105 grounds for defined Art.100 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .107 introduced by intervener G1/94, G3/04 . . . . . . . . . . .214 introduced with consent G10/91, G1/95 . . . . . . .207, 215 limit subsequent appeal G9/91, G10/91 G7/95 . . . . . . . . . . . . . . . . . . . . . . . . . . . .215, 207, 216

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Index novelty and inventive step distinct G7/95 . . . . . . . . . .216 lack of unity not a G1/91 . . . . . . . . . . . . . . . . . . . . . .215 limit scope of opposition G9/91, G10/91, G7/95 . . . . . . . . . . . . . . . . . . . . . . . . . . . .215, 207, 216 joint G3/99 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .216 on behalf of proprietor G9/93 . . . . . . . . . . . . . . . . . . . . . . . . . . . .215 third party G3/97, G4/97 . . . . . . . . . . . . . . . . . . . . . .216 precedence over limitation proceedings Art.105a(2), Rule 93 . . . . . . . . . . . . . . . . . . . . . . . . . . .116 re-establishment of rights G1/86 . . . . . . . . . . . . . . . . . .214 rejection of as inadmissible Rule 77 . . . . . . . . . . . . . . . .109 several oppositions Rule 79(2) . . . . . . . . . . . . . . . . . . . .109 time limit for filing notice of Art.99(1) . . . . . . . . . . . . . .105 transfer of G4/88, G2/04 . . . . . . . . . . . . . . . . . . . .215, 217 Opposition Divisions allocation of duties to Rule 11(1) . . . . . . . . . . . . . . . . . . .12 appeal lying from decisions of the Art.21(4), Art.106(1) . . . . . . . . . . . . . . . . . . . . . . . .15, 122 composition of Art.19(2) . . . . . . . . . . . . . . . . . . . . . . . . .13 decisions of Art.101(2),(3), Art.116(4) . . . . . . . . . .108, 138 establishment of Art.15(d) . . . . . . . . . . . . . . . . . . . . . . . .12 examination of oppositions by Art.101, Rule 81 . . .108, 110 invitation to remedy deficiencies Rule 77(2) . . . . . . . . .109 maintenance of patent by Rule 82 . . . . . . . . . . . . . . . . .112 responsibilities of Art.19(1) . . . . . . . . . . . . . . . . . . . . . . .14 rulings on costs Art.104 . . . . . . . . . . . . . . . . . . . . . . . . .114 opposition fee reduction if opposition in non-EPO language Rule 6(3), RRF Art.14 . . . . . . . . . . . . . . . . .8, 202 requirement to pay Art.99(1) . . . . . . . . . . . . . . . . . . . . .105 amount RRF Art.2(10), . . . . . . . . . . . . . . . . . . . . . . . . .198 opposition procedure amendment of patent during Rule 80 . . . . . . . . . . . . . . .110 costs Art.104, Rule 88 . . . . . . . . . . . . . . . . . . . . . . . . . .114 continuation by the EPO Rule 84 . . . . . . . . . . . . . . . . . .110 deadlines for filing Art.99(1) . . . . . . . . . . . . . . . . . . . . .105 examination of Art.101, Rule 79, Rule 80, Rule 83, Rule 84 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .108-110 form and content of notice Rule 76 . . . . . . . . . . . . . . . .105 grounds of Art.100 . . . . . . . . . . . . . . . . . . . . . . . . . . . .107 intervention in Art.105, Rule 89 . . . . . . . . . . . . . . .114, 115 maintenance of amended patent Rule 82, Rule 87 .112, 113 parties to Art.99(3) . . . . . . . . . . . . . . . . . . . . . . . . . . . .105 rejection of Rule 77 . . . . . . . . . . . . . . . . . . . . . . . . . . . .109

transfer of patent during Rule 85 . . . . . . . . . . . . . . . . . . .48 opposition proceedings amendment of patent during Rule 80, G1/93 . . . . .110, 211 continuation by the EPO Rule 84 . . . . . . . . . . . . . . . . . .110 costs Art.104, Rule 88 . . . . . . . . . . . . . . . . . . . . . . . . . .114 documents in Rule 86 . . . . . . . . . . . . . . . . . . . . . . . . . .111 examination of opposition Rule 81 . . . . . . . . . . . . . . . . .110 interruption of Rule 142 . . . . . . . . . . . . . . . . . . . . . . . . .157 intervention in Art.105, Rule 89 . . . . . . . . . . . . . .114, 115 maintenance of amended patent Rule 82, Rule 87 . . . . . . . . . . . . . . . . . . . . . . . . . .112, 113 new specification of the European patent Rule 87 . . . . .113 parties to Art.99(3) . . . . . . . . . . . . . . . . . . . . . . . . . . . .105 precedence over limitation proceedings Art.105a(2), Rule 93 . . . . . . . . . . . . . . . . . . . . . . . . . . .116 re-establishment of rights G1/86 . . . . . . . . . . . . . . . . . .214 rejection of opposition Rule 77(3) . . . . . . . . . . . . . . . . .109 request to remedy deficiencies Rule 77(2) . . . . . . . . . . .109 requests for documents Rule 83 . . . . . . . . . . . . . . . . . .110 where proprietor not entitled Rule 78 . . . . . . . . . . . . . . .109 oral proceedings costs of Art.104(1), Rule 88 . . . . . . . . . . . . . . . . . . . . .114 failure to attend G4/92 . . . . . . . . . . . . . . . . . . . . . . . . . .222 language of proceedings Rule 4 . . . . . . . . . . . . . . . . . . . . .7 minutes of Rule 124 . . . . . . . . . . . . . . . . . . . . . . . . . . .139 submissions by accompanying person G2/94, G4/95 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .222 summons to Rule 115(1) . . . . . . . . . . . . . . . . . . . . . . . .138 preparation for Rule 116 . . . . . . . . . . . . . . . . . . . . . . . .138 provision for Art.116 . . . . . . . . . . . . . . . . . . . . . . . . . . .138 ordre public inventions contrary to excluded from patentability Art.53(a) G2/06 . . . . . . . . . . . . . . . . . . . . . . . . . . . .29, 218 matter contrary to in a European patent application Rule 48(1)(a),(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .59 other agreements between Contracting States Art.149a . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .177

P Paris Convention priority rights under Art.87(1)(a) . . . . . . . . . . . . . . . . . . .82 patent applications see European patent application, PCT application, national patent application

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Index Patent Cooperation Treaty application of Art.150 . . . . . . . . . . . . . . . . . . . . . . . . . .179 EPO as Designated Office Art.153, Rule 159 . . . . . . . . .181, 182 Elected Office Art.153, Rule 159 . . . . . . . . . . . .181, 182 International Preliminary Examining Authority Art.152, Rule 158 . . . . . . . . . . . . . . . . . . . . . . . . . . .180 International Searching Authority Art.152, Rule 158 . .180 Receiving Office Art.151, Rule 157 . . . . . . . . . . . . . .179 patent proprietor death or legal incapacity of Rule 142(1)(a),(b),(2),(4) . .157 entry in the European Patent Register Rule 143(1)(f) . . .159 joint proprietors Art.118, Rule 72 . . . . . . . . . . . . . .143, 103 opposition communicated to Rule 79(1) . . . . . . . . . . . . .109 when not entitled Art.99(4), Rule 78 . . . . . . . . . . .105, 109 patent specification see European patent specification patentability definition of Art.52-57 . . . . . . . . . . . . . . . . . . . . . . . .28-36 exceptions to Art.52(2), Art.53, Rule 28, Rule 29 . . . . . . . . . . . . . . . . . . . . . . . . .28, 29, 30 lack of as ground of opposition Art.100(a) . . . . . . . . . . . . . .107 refusal of application due to Art.97(1) . . . . . . . . . . . .103 revocation of patent by opposition division Art.101(1), Art.101(2) . . . . . . . . . . . . . . . . .108 revocation under national law Art.138(1)(a) . . . . . . .174 observations by third parties on Art.115, Rule 114 . . . . .137 of computer programs G3/08 . . . . . . . . . . . . . . . . . . . . .209 diagnostic methods G1/04 . . . . . . . . . . . . . . . . . . . . .217 dosage regimes G2/08 . . . . . . . . . . . . . . . . . . . . . . .219 plants obtained by crossing and selection G2/07, G1/08 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .219 plant varieties G1/98 . . . . . . . . . . . . . . . . . . . . . . . . .217 second medical use Art.54(5) . . . . . . . . . . . . . . . . . . .32 stem cells G2/06 . . . . . . . . . . . . . . . . . . . . . . . . . . . .218 treatment by surgery G1/07 . . . . . . . . . . . . . . . . . . . .218

patentable inventions computer programs G3/08 . . . . . . . . . . . . . . . . . . . . . . .209 definition of Art.52 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .28 dosage regimes G2/08 . . . . . . . . . . . . . . . . . . . . . . . . . .219 diagnostic methods G1/04 . . . . . . . . . . . . . . . . . . . . . . .217 plants obtained by crossing and selection G2/07, G1/08 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .219

plant varieties G1/98 . . . . . . . . . . . . . . . . . . . . . . . . . . .217 second medical use Art.54(5) . . . . . . . . . . . . . . . . . . . . . . . .32 stem cells G2/06 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .218 treatment by surgery G1/07 . . . . . . . . . . . . . . . . . . . . . .218 payment date to be considered made RRF Art.7 . . . . . . . . . . . . . .200 insufficient RRF Art.8 . . . . . . . . . . . . . . . . . . . . . . . . . .201 PCT application deemed withdrawn Rule 160(1) . . . . . . . . . . . . . . . . . .183 entry into the regional phase Art.153, Rules 159-164 . . . . . . . . . . . . . . . . . . . . .181-186 filing of at EPO Art.151, Rule 157 . . . . . . . . . . . . . . . . .179 in EPO language Art.153(3) . . . . . . . . . . . . . . . . . . . . . .181 in non-EPO language Art.153(4) . . . . . . . . . . . . . . . . . .182 translation for entry into regional phase Rule 159(1)(a), Rule 160, G4/08 . . . . . . . . . .182, 183, 224 transmittal fee Rule 157(4), RRF Art.2(18) . . . . . .180, 199 transmittal Rule 157 . . . . . . . . . . . . . . . . . . . . . . . . . . .179 petition for review content of Rule 107 . . . . . . . . . . . . . . . . . . . . . . . . . . . .131 deadline for filing Art.112a(4) . . . . . . . . . . . . . . . . . . . .130 deficiencies in Rule 108 . . . . . . . . . . . . . . . . . . . . . . . . .131 examination of Rule 108 . . . . . . . . . . . . . . . . . . . . . . . .131 fee for RRF Art.2(11a) . . . . . . . . . . . . . . . . . . . . . . . . . .198 grounds for Art 112a, Rule 104 . . . . . . . . . . . . . . .130-131 procedure for dealing with Rule 109 . . . . . . . . . . . . . . .132 reimbursement of fee for Rule 110 . . . . . . . . . . . . . . . .132 responsibility for Art.22(1)(c) . . . . . . . . . . . . . . . . . . . . . .17 person skilled in the art. assessment of disclosure by Art.83, Art.100(b), Art.138(1)(b), Rule 31 . . . . . . . . . . . . . . . .69, 107, 174, 69 extent of protection Art.69 . . . . . . . . . . . . . . . . . . . . . . . .46 obvious to Art.56 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .35 plants non-patentable processes for the production of Art.53(b), Rule 26(5) . . . . . . . . . . . . . . . . . . . . . . . . . .29 patentable if not specific variety Rule 27 . . . . . . . . . . . . .30 plant varieties claims covering multiple not excluded G1/98 . . . . . . . . .217 definition of Rule 26(4) . . . . . . . . . . . . . . . . . . . . . . . . . .29 excluded from patentability Art.53(b) . . . . . . . . . . . . . . . .29 plants obtained by crossing and selection G2/07, G1/08 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .219

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Index excluded from patentability Art.52(d) . . . . . . . . . . . . . . . .28

preliminary examination see international preliminary examination President of the EPO additional payment methods RRF Art.5(2) . . . . . . . . . . .200 administrative fees RRF Art.3(1) . . . . . . . . . . . . . . . . . .200 allocation of extra duties Rule 11(2) . . . . . . . . . . . . . . . . .12 appointment of Art.11(1) . . . . . . . . . . . . . . . . . . . . . . . . . .4 appointments to Boards of Appeal Art.11(3) . . . . . . . . . . . .4 authorisations Rule 152(1) . . . . . . . . . . . . . . . . . . . . . .167 determination of insignificant amounts RRF Art.12 . . . .202 direction of special departments Art.143(2), Art.145(1) .176 fees for EPO publications RRF Art.3(2) . . . . . . . . . . . . . .200 file inspection arrangements Rule 145(2) . . . . . . . . . . .161 form of published applications Rule 68(2) . . . . . . . . . . . . . . . .96 published granted patents Rule 73 (2) . . . . . . . . . . . .104 public notice Rule 129(2) . . . . . . . . . . . . . . . . . . . . .144 sequence listings Rule 30(1) . . . . . . . . . . . . . . . . . . . .70 implementation of budget Art.48 . . . . . . . . . . . . . . . . . . .26 issuing priority documents Rule 54 . . . . . . . . . . . . . . . . .83 management of EPO Art.10 . . . . . . . . . . . . . . . . . . . . . . . .3 meetings of Administrative Council Art.29(2) . . . . . . . . . .20 negotiations by Art.33(4) . . . . . . . . . . . . . . . . . . . . . . . . .21 other documents excluded from inspection Rule 144(d) . . .161 entries in European Patent Register Rule 143(2) . . . .159 events to be notified by post Rule 126(1) . . . . . . . . . .144 referral of points of law by Art.112(1)(b) . . . . . . . . . . . .129 refund of search fees RRF Art.9(2) . . . . . . . . . . . . . . . .202 representation of EPO by Art.5(3), G5/88, G8/88 . . . . . .2, 208 submission of budget Art.46(1) . . . . . . . . . . . . . . . . . . . .25 technical preparations for publication Rule 67(1) . . . . . . .95 technical requirements for filing documents Rule 2(1) . . .98 waiver of fees for services RRF Art.4(2) . . . . . . . . . . . . . . . . . .200 nationality requirements Art.134(7) . . . . . . . . . . . . . .168 need to file certified copies Rule 53(2) . . . . . . . . . . . . .84 obligation to file copies of earlier search Rule 141(2) .156

Presidium of the Boards of Appeal adoption of Rules of Procedure by Rule 12(3) . . . . . . . . . .16 allocation of duties by Rule 12(4) . . . . . . . . . . . . . . . . . . .16 constitution of Rule 12(1),(2) . . . . . . . . . . . . . . . . . . .15, 16 presentation of information

prices laid down by the President RRF Art.3(1),(2) . . . . . . . . . .200 principles generally recognised of procedural law Art.125 . . . . . . .157 publication fee amount publication fee RRF Art.2(8) . . . . . . . . . . . . . . . . . . .198 surcharge on RRF Art.2(9) . . . . . . . . . . . . . . . . . . . . .198 failure to pay Rule 71(7) . . . . . . . . . . . . . . . . . . . . . . . .100 following opposition Art.101(3)(a), Rule 82(2) . . . .108, 112 invitation to pay Rule 71(3) . . . . . . . . . . . . . . . . . . . . . . .99 surcharge on Rule 82(3), RRF Art.2(9) . . . . . . . . . .112, 198 prior art definition of for assessing inventive step Art.56 . . . . . . . . . . . . . . .35 for assessing novelty Art.54 . . . . . . . . . . . . . . . . . . . .32 earlier patent applications as Art.54(3) . . . . . . . . . . . . . .32 earlier PCT applications as Rule 165 . . . . . . . . . . . . . . . .32 publication of G1/92 . . . . . . . . . . . . . . . . . . . . . . . . . . .220 obligation to disclose Rule 70b, Rule 141 . . . . . . . . . . .156 prior right see rights prior use public constitutes part of state of the art Art.54(2) . . . . . .32 priority applications giving right to Art.87 . . . . . . . . . . . . . . . . . .82 claim checked on filing Art.90(3)-(5), Rule 57(g) . . . .87-88 corrections of deficiencies in Rule 59 . . . . . . . . . . . . . . . .89 declaration of Art.88(1), Rule 52 . . . . . . . . . . . . . . . .83-84 effect of Art.89 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .86 filing of priority documents Rule 53 . . . . . . . . . . . . . . . . .84 issuing priority documents Rule 54 . . . . . . . . . . . . . . . . .85 multiple priorities Art.88(2),(3) . . . . . . . . . . . . . . . . . . . .86 obligation to disclose search results Rule 141(1) . . . . . .156 period of Art.87(1), Art.88(2) . . . . . . . . . . . . . . . . . . .82-83 priority date see date of priority priority documents checked on filing Art.90(3)-(5), Rule 57(g) . . . . . . . .87-88 deemed filed Rule 53(2) . . . . . . . . . . . . . . . . . . . . . . . . .84 for PCT applications Rule 163(2) . . . . . . . . . . . . . . . . . .184

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Index issuance of Rule 54 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .85 must provide enabling disclosure G3/93 . . . . . . . . . . . . . . .220 relate to same invention G2/98 . . . . . . . . . . . . . . . . .220 requirement to file Art.88(1), Rule 53 . . . . . . . . . . . . .83-84 translations of Rule 53(3) . . . . . . . . . . . . . . . . . . . . . . . .85 priority right availability of Art.87 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .82 claim checked on filing Art.90(3)-(5), Rule 57(g) . . . .87, 89 effect of Art.89 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .86 enabling disclosure required for G3/93 . . . . . . . . . . . . . .220 for same invention G2/98 . . . . . . . . . . . . . . . . . . . . . . . .220 procedures for claiming Art.88, Rule 52, Rule 53 . . . .83-84 privilege language Art.14(4) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6 patent attorney Rule 153 . . . . . . . . . . . . . . . . . . . . . . . .171 procedures in general evidence Art.117, Rule 117, Rule 119, Rule 120, Rule 122, Rule 123 . . . . . . . . . . . . . . . .139-142 examination by EPO of its own motion Art.114 . . . . . . . .136 form of decisions Rule 111 . . . . . . . . . . . . . . . . . . . . . .127 further processing Art.121, Rule 135 . . . . . . . . . . . . . . .148 interruption of proceedings Rule 142 . . . . . . . . . . . . . . .157 limitation on amendments Art.123, Rule 137 . . . . .152-153 minutes Rule 124 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .139 notification Art.119, Rules 125-130 . . . . . . . . . . . .143-145 notification of loss of rights Rule 112 . . . . . . . . . . . . . . .135 observations by third parties Art.115, Rule 114 . . . . . . .137 oral proceedings Art.116, Rule 115, Rule 116 . . . . . . . .138 re-establishment of rights Art.122, Rule 136 . . . . .150-151 reference to general principles Art.125 . . . . . . . . . . . . .157 right to be heard Art.113 . . . . . . . . . . . . . . . . . . . . . . . .135 time limits Art.120, Rules 131-134 . . . . . . . . . . . .145-146

products directly obtained from patentable process Art.64(2) . . . . .43 first medical use of patentable Art.54(4) . . . . . . . . . . . . .32 not excluded from patentability used in methods of treatment and diagnostic methods Art.53(c) . . . . . . . . . . . . . . . . . . .29 of microbiological processes Art.53(b) . . . . . . . . . . . .29 second medical use of patentable Art.54(5) . . . . . . . . . . .32 professional representatives see representatives programs for computers excluded from patentability Art.52(2)(c) . . . . . . . . . . . . .28 patentable G3/08 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .209 proprietor of the patent see patent proprietor protection extent of Art.69 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .46 invalid extension as ground of revocation Art.138(1)(d) .174 not to be extended after grant Art.123(3) . . . . . . . . . . . .153 provisional Art.67 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .45 rights conferred by a European patent Art.64(2) . . . . . . . .43 simultaneous Art.139(3) . . . . . . . . . . . . . . . . . . . . . . . .175 where patent translated into national language Art.70(3),(4) . . . . . . . . . . . . . . . . . . . .47 protest payment of additional fees under Rule 158(3) . . . . . . . .180 protest fee amount RRF Art.2(21) . . . . . . . . . . . . . . . . . . . . . . . . . .199 Protocols forming part of the EPC Art.164 . . . . . . . . . . . . . . . . . . .190 provisional protection conferred by: European Patent Application Art.67 . . . . . . .45 conferred by: PCT application Art.153(4) . . . . . . . . . . . .182

proceedings between the employee and the employer Protocol on Recognition Art.4, 5 . . . . . . . . . . . . . . . . .195 interruption and continuation Rule 142 . . . . . . . . . . . . .157 not public Art.116(3) . . . . . . . . . . . . . . . . . . . . . . . . . . .138 public Art.116(4) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .138 resumption of Rule 142 . . . . . . . . . . . . . . . . . . . . . . . . .157 suspension of Rule 14 . . . . . . . . . . . . . . . . . . . . . . . . . . .38 see also oral proceedings and written proceedings

R receiving office EPO as under the PCT Art.151, Rule 157 . . . . . . . . . . . .179 Receiving Section appeal from decisions of the

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Index Art.21(2), Art.106(1) . . . . . . . . . . . . . . . . . . . . . . .15, 122 examination as to formal requirements by Art.90(3)-(5), Rule 57 . . . . . . . . . . . . . . . . . . . . . . . .87, 88 examination on filing Art.90(1),(2), Rule 55-56 . . . . . . . .87 organisation of Rule 9(2) . . . . . . . . . . . . . . . . . . . . . . . . .12 relationship with Examining Divisions Rule 10 . . . . . . . . .13 responsibilities of Art.16, Rule 11(2) . . . . . . . . . . . . . . . .12 rectification of designation of inventor Rule 21 . . . . . . . . . . . . . . . . . .67 see also corrections of errors re-establishment of rights availability of Art.122(1), G1/86 . . . . . . . . . . . . . . .150, 214 by opponent G1/86 . . . . . . . . . . . . . . . . . . . . . . . . . . . .214 effect of Art.122(3) &(5) . . . . . . . . . . . . . . . . . . . .150-151 excluded if further processing available Rule 136(3) . . .151 fee for RRF Art.2(13) . . . . . . . . . . . . . . . . . . . . . . . . . . .198 procedure for Rule 136 . . . . . . . . . . . . . . . . . . . . . . . . .151 renewal fees following Rule 51(4) . . . . . . . . . . . . . . . . . .79 time limits for Rule 136(1) . . . . . . . . . . . . . . . . . . . . . . .151 reformatio in peius in ex parte proceedings G10/93 . . . . . . . . . . . . . . . . . . .221 in inter partes proceedings G9/92, G4/93, G1/99 . . . . . . .221 refund of appeal fees Rule 103 . . . . . . . . . . . . . . . . . . . . . . . . . . .128 application fees if application not forwarded to EPO Art.77, Rule 37(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .54 examination fee RRF Art.11 . . . . . . . . . . . . . . . . . . . . . .202 excess claims fees following amendment of PCT application Rule 162(3) . . . . . . . . . . . . . . . . . . .184 extra search fees Rule 64(2) . . . . . . . . . . . . . . . . . . . . . .94 fee for petition for review Rule 110 . . . . . . . . . . . . . . . .132 fee for technical opinion RRF Art.10 . . . . . . . . . . . . . . . .202 fees paid under protest Rule 158 . . . . . . . . . . . . . . . . . .180 insignificant amounts RRF Art.12 . . . . . . . . . . . . . . . . .202 limitation fee Rule 93(2) . . . . . . . . . . . . . . . . . . . . . . . .116 search fees RRF Art.9 . . . . . . . . . . . . . . . . . . . . . . . . . .201 reference to earlier application certified copy of Rule 40(3) . . . . . . . . . . . . . . . . . . . . . . .65 translation of Rule 40(3) . . . . . . . . . . . . . . . . . . . . . . . . .65 replacement of description by Rule 40(1)(c) . . . . . . . . . . . . . . . . . . . .65 drawings by Rule 40(2) . . . . . . . . . . . . . . . . . . . . . . . .65 register see European Patent Register

registered letter notification by Rule 126 . . . . . . . . . . . . . . . . . . . . . . . . .144 reimbursement appeal fee Rule 103 . . . . . . . . . . . . . . . . . . . . . . . . . . .129 application fees if application not forwarded to EPO Art.77, Rule 37(2) . . . . . . . . . . . . . . . . . . . . . .54-55 examination fee RRF Art. 11 . . . . . . . . . . . . . . . . . . . . .202 excess claims fees following amendment of PCT application Rule 162(3) . . . . . . . . . . . . . . . . . . . . .184 extra search fees Rule 64(2) . . . . . . . . . . . . . . . . . . . . . .94 fee for petition for review Rule 110 . . . . . . . . . . . . . . . .132 fee for technical opinion RRF Art. 10 . . . . . . . . . . . . . . .202 fees paid under protest Rule 158 . . . . . . . . . . . . . . . . . .180 limitation fee Rule 93(2) . . . . . . . . . . . . . . . . . . . . . . . .116 search fees RRF Art.9 . . . . . . . . . . . . . . . . . . . . . . . . . .201 witnesses and experts Rule 122 (2),(3) . . . . . . . . .141-142 renewal fees amount RRF Art.2(4) . . . . . . . . . . . . . . . . . . . . . . . . . . .197 due date for payment Rule 51 . . . . . . . . . . . . . . . . . . . . .79 grant delayed to allow for payment of Rule 71a(4) . . . . .100 payable on divisional application Rule 51(3) . . . . . . . . . . . . . . . . .80 entry into regional phase Rule 159(1)(g) . . . . . . . . . .182 European Patent Applications Art.86 . . . . . . . . . . . . . .78 European Patents Art.141 . . . . . . . . . . . . . . . . . . . . .175 replacement application Rule 51(6) . . . . . . . . . . . . . . .80 replacement application can be filed even if earlier application no longer pending G3/92 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .224 filed when proprietor found not to be entitled Art.61 . . . . .38 invitation of file designation of inventor Rule 60(2) . . . . . .67 no renewal fees for preceding years Rule 51(6) . . . . . . . .80 original application deemed withdrawn Rule 17(1) . . . . .39 procedure for filing Rule 16 . . . . . . . . . . . . . . . . . . . . . . .39 representation authorisations Rule 152 . . . . . . . . . . . . . . . . . . . . . . . . .167 before special departments Art.144 . . . . . . . . . . . . . . . .176 by accompanying person G2/94, G4/95 . . . . . . . . . . . . .222 by legal practitioners Art.134(8) . . . . . . . . . . . . . . . . . .168 by employee Art.133(3) . . . . . . . . . . . . . . . . . . . . . . . . .166 common representative Rule 151 . . . . . . . . . . . . . . . . .166 general principles Art.133 . . . . . . . . . . . . . . . . . . . . . . .166 obligation to identify in notice of opposition Rule 76(2)(d) . . . . . . . . . . . . . . .105

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Index request for grant Rule 41(2)(c) . . . . . . . . . . . . . . . . . .56 request for limitation/revocation Rule 92(e) . . . . . . . .118 attorney privilege Rule 153 . . . . . . . . . . . . . . . . . . . . . .171 qualification as professional representative Art.134(2) & (3) . . . . . . . . . . . . . . . . . . .168 restricted to professional representatives Art.134(1) . . .168 representatives amendment of the list of professional Rule 154 . . . . . . .169 appointment of common Rule 151 . . . . . . . . . . . . . . . . . . . . . . . . . . .166 checked on filing Art.90(3)-(5), Rule 57(h) . . . . . .87, 88 authorisations Rule 152 . . . . . . . . . . . . . . . . . . . . . . . . .167 common Rule 151 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .166 disciplinary power over Art.134a(1)(c) . . . . . . . . . . . . .170 entitled to act in all proceedings Art.134(5) . . . . . . . . . .168 European qualifying examination requirement to pass Art.134(2)(c) . . . . . . . . . . . . . . .168 training prior to sitting Art.134a(1)(b) . . . . . . . . . . . .170 identified in request for grant Rule 41(2)(d) . . . . . . . . . . . . . . . . . .56 notice of opposition Rule 76(2)(d) . . . . . . . . . . . . . . .105 request for limitation/revocation Rule 92(e) . . . . . . . .118 Institute of Professional Representatives Art.134a(1)(b) . .170 legal practitioners as Art.134(7) . . . . . . . . . . . . . . . . . .168 list of professional amendment of Rule 154 . . . . . . . . . . . . . . . . . . . . . .169 entry onto Art.134(1)-(4) . . . . . . . . . . . . . . . . . . . . . .168 maintained by Legal Division Art.20(1) . . . . . . . . . . . .14 notification to Rule 130 . . . . . . . . . . . . . . . . . . . . . . . . .145 obligation of non-EPC applicants to appoint Art.133(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .166 privileged communications with Rule 153 . . . . . . . . . . .171 qualification as Art.134(2) & (3) . . . . . . . . . . . . . . . . . .168 request for conversion into national patent applications filing and transmission of Rule 155 . . . . . . . . . . . . . . . .172 possibility to Art.135 . . . . . . . . . . . . . . . . . . . . . . . . . . .172 request for examination deadline for filing Rule 70(1) . . . . . . . . . . . . . . . . . . . . . .98 failure to file Art.94(2) . . . . . . . . . . . . . . . . . . . . . . . . . . .97 request for grant content of checked on filing Art.90(3)-(5), Rule 57(b) . . . . . . . . . . . . . . . . . . . . . .87, 88 European patent application to include Art.78(1)(a) . . . . .56 form of Rule 41 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .56

request for limitation or revocation content of Rule 92 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .118 inadmissible Rule 94 . . . . . . . . . . . . . . . . . . . . . . . . . . .118 residence or principal place of business identification in notice of opposition Rule 76(2)(a) . . . . . . . . . . . . . . .105 petition for renewal Rule 107(1)(a) . . . . . . . . . . . . . .131 request for grant Rule 41(2)(c) . . . . . . . . . . . . . . . . . .57 request for limitation/revocation Rule 92(e) . . . . . . . .118 language privilege Art.14(4) . . . . . . . . . . . . . . . . . . . . . . .6 obligations to appoint representative Art.133(2) . . . . . .166 representation by employee Art.133(3) . . . . . . . . . . . . .166 restitutio in integrum see re-establishment of rights revocation of a European patent effect of Art.68 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .45 grounds for Art.138(1) . . . . . . . . . . . . . . . . . . . . . . . . . .174 request for Art.105a . . . . . . . . . . . . . . . . . . . . . . . . . . .116 fee for Art.105a(1), RRF Art.2(10) . . . . . . . . . . . . .116, 198 revocation procedure see limitation procedure right of priority see priority right right to a European patent Art.60 . . . . . . . . . . . . . . . . . .37 rights conferred by a European patent Art.64 . . . . . . . . . . . . . . .43 conferred by a European patent application after publication Art.67 . . . . . . . . . . . . . . . . . . . . . . . . . .45 in rem Rule 23 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .48 of the same date Art.139(3) . . . . . . . . . . . . . . . . . . . . . .175 prior right Art.139(1),(2), Art.140 . . . . . . . . . . . . . . . . .175 transfer of Art.71, Rule 22 . . . . . . . . . . . . . . . . . . . . .47, 48 Rules Relating to Fees adoption and amendment by administrative council Art.33(2)(d) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .20 entry into force RRF Art.15 . . . . . . . . . . . . . . . . . . . . . .202 date of payment RRF Art.7 . . . . . . . . . . . . . . . . . . . . . .200 due date for RRF Art.4 . . . . . . . . . . . . . . . . . . . . . . . . . .200 fees provided for in EPC RRF Art.2 . . . . . . . . . . . . . . . . .197 insufficiency of fees RRF Art.8 . . . . . . . . . . . . . . . . . . . .201 payment of fees RRF Art.5 . . . . . . . . . . . . . . . . . . . . . . .200 power to establish Art.51 . . . . . . . . . . . . . . . . . . . . . . . .27 reductions RRF Art.14 . . . . . . . . . . . . . . . . . . . . . . . . . .202 refunds RRF Art.9-12 . . . . . . . . . . . . . . . . . . . . . .201, 202

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S scientific theories excluded from patentability Art.52(2)(a) . . . . . . . . . . . . .28 search application with multiple independent claims Rule 62a . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .93 content of Rule 61 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .92 drawing up of Art.92 . . . . . . . . . . . . . . . . . . . . . . . . . . . .92 extended European Rule 62 . . . . . . . . . . . . . . . . . . . . . . .93 incomplete Rule 63 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .93 obligations to disclose Rule 141 . . . . . . . . . . . . . . . . . .156 transmittal of Rule 65 . . . . . . . . . . . . . . . . . . . . . . . . . . .94 response to Rule 70a . . . . . . . . . . . . . . . . . . . . . . . . . . . .99 supplementary Art.153(7), Rule 164 . . . . . . . . . . .182, 183 where invention lacks unity Rule 64 . . . . . . . . . . . . . . . . .94 search divisions allocation of duties Rule 11 . . . . . . . . . . . . . . . . . . . . . . .12 organisation Rule 9(2) . . . . . . . . . . . . . . . . . . . . . . . . . . .12 responsibilities Art.17, Rule 11(2) . . . . . . . . . . . . . . .13, 12 search fee additional Rule 64 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .94 amount RRF Art.2(2) . . . . . . . . . . . . . . . . . . . . . . . . . . .197 checked for on filing Art.90(3)-(5), Rule 57(e) . . . . . .87, 89 deadline for payment for divisional application Rule 36(3) . . . . . . . . . . . . . . . . .52 European patent application Rule 38 . . . . . . . . . . . . . .56 replacement application Rule 17(2) . . . . . . . . . . . . . . .39 international search Art.152, Rule 158(1), RRF Art.2(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . .180, 197 refund of RRF Art.9 . . . . . . . . . . . . . . . . . . . . . . . . . . . .201 supplementary European search Rule 159(1)(e), Rule 160(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .182, 183 search report comments by the applicant Rule 70(2) . . . . . . . . . . . . . . .98 content of Rule 61 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .92 drawing up of Art.17, Art.92 . . . . . . . . . . . . . . . . . . .13, 92 earlier deemed filed Rule 141(2) . . . . . . . . . . . . . . . . . .156 extended Rule 62 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .93 fees for RRF Art.2(2), RRF Art.9 . . . . . . . . . . . . . .197, 201 in language of the proceedings Rule 61(5) . . . . . . . . . . . .92 incomplete Rule 63 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .93 obligation to disclose earlier Rule 141(1) . . . . . . . . . . . .156 PCT search treated as Art.153(6) . . . . . . . . . . . . . . . . .181

publication of Art.92, Rule 68, Rule 69 . . . . . . . . . . .92, 96 response to Rule 70a . . . . . . . . . . . . . . . . . . . . . . . . . . . .99 Search Division responsible for Art.17 . . . . . . . . . . . . . . .13 supplementary Art.153(7), . . . . . . . . . . . . . . . . . . . . . .182 where the invention lacks unity Rule 64, Rule 164 . .94, 185 second medical use patentable Art.54(5) . . . . . . . . . . . . . . . . . . . . . . . . . . . .32 secret applications conversion into national applications Art.135(1)(a) . . . .172 not forwarded to EPO Art.77(2) . . . . . . . . . . . . . . . . . . . .54 to be filed with national authorities Art.75(2) . . . . . . . . . .50 sequence listing standardised representation of Rule 30 . . . . . . . . . . . . . .69 simultaneous protection permitted by national law Art.139(3) . . . . . . . . . . . . . . .175 skilled person see person skilled in the art specification of the European patent see European patent specification state of the art see prior art statements disparaging Rule 48(1)(b) . . . . . . . . . . . . . . . . . . . . . . . .59 irrelevant Rule 48(1)(c) . . . . . . . . . . . . . . . . . . . . . . . . . .59 stem cells conditions for patentability of G2/06 . . . . . . . . . . . . . . . .218 substances and compositions first medical use patentable Art.54(4) . . . . . . . . . . . . . . .32 novel dosage regime potentially patentable G2/08 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .219 second or further medical use patentable Art.54(5) . . . . .32 used in methods of treatment patentable Art.53(c) . . . . .29 surgery definition of G1/07 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .218 methods for treatment by excluded from patentability Art.53(c) . . . . . . . . . . . . . . . . . . . . . . . . . . .29 suspension of proceedings due to death or legal incapacity Rule 142 . . . . . . . . . . . .157 when entitlement of proprietor challenged Rule 14 . . . . .38

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T technical opinion fee for a RRF Art.2(20) . . . . . . . . . . . . . . . . . . . . . . . . .199 on infringement Art.25 . . . . . . . . . . . . . . . . . . . . . . . . . . .19 refund of fee for RRF Art.10 . . . . . . . . . . . . . . . . . . . . . .202 technical means of communication extension of time limits due to failure of Rule 134(1) . . .146 filing of documents by Rule 2 . . . . . . . . . . . . . . . . . . . . . .98 notification by Rule 127 . . . . . . . . . . . . . . . . . . . . . . . . .144 “ten” day rule origin of Art.119, Rule 126(2) . . . . . . . . . . . . . . . .143, 144 therapy methods for treatment by excluded from patentability Art.53(c) . . . . . . . . . . . . . . . . . . . . . . .29 third parties observations on patentability by Art.115, Rule 114 . . . .137 time limits amendment of by Administrative Council Art.33(1)(a) . . .21 calculation of Rule 131 . . . . . . . . . . . . . . . . . . . . . . . . .145 excluded from further processing Art 121(4), Rule 135(2) . . . . . . . . . . . . . . . . . . . . . . . . .148 extension of due to interruption of communications Rule 134 . . . .146 in general Rule 132 . . . . . . . . . . . . . . . . . . . . . . . . . .146 when EPO closed Rule 134 . . . . . . . . . . . . . . . . . . . .146 in general Art.120 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .145 interruption Rule 14(4), Rule 142(4) . . . . . . . . . . . .38, 157 specified by EPO Rule 132 . . . . . . . . . . . . . . . . . . . . . . .146 relationship with insufficient payments RRF Art.8 . . . . . . . . . . . . . . . .199 late payments RRF Art.7(3) . . . . . . . . . . . . . . . . . . . .201 “ten” day extension of Art.119, Rule 126(2) . . . . . .143, 144 transfer of rights applicable law Art.74 . . . . . . . . . . . . . . . . . . . . . . . . . . . .49 during the opposition period or during opposition proceedings Rule 85 . . . . . . . . . . . . . . . . . . . . . . . . . . . .48 in one or more Contracting States Art.71 . . . . . . . . . . . . .47 of European patent application Art.72 . . . . . . . . . . . . . . .47 of opposition G4/88, G2/04 . . . . . . . . . . . . . . . . . .215, 217 partial Rule 18 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .40 registration of Rule 22 . . . . . . . . . . . . . . . . . . . . . . . . . . .48 to more than one person Rule 151(2) . . . . . . . . . . . . . . .166

translation assumed accurate Rule 7 . . . . . . . . . . . . . . . . . . . . . . . . .8 authentic text of European patent application or European patent Art.70 . . . . . . . . . . . . . . .47 certification of Rule 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .7 correction of Art.70(4)(a) . . . . . . . . . . . . . . . . . . . . . . . . .47 checked for on filing Art.90(3)-(5), Rule 57(a) . . . . . .87, 88 determining language of proceedings Art.14(3) . . . . . . . . .6 European patent application due date for Rule 6(1) . . . . . . . . . . . . . . . . . . . . . . . . . .8 into EPO official language Art.14(2) . . . . . . . . . . . . . . . .5 European patent costs of publication Art.65(2) . . . . . . . . . . . . . . . . . . .44 period for supplying the Art.65(1) . . . . . . . . . . . . . . . .43 waiver of requirements for London Agreement Art.1 . . . . . . . . . . . . . . . . . . . . .203 in oral proceedings Rule 4 . . . . . . . . . . . . . . . . . . . . . . . . .7 letters rogatory Rule 150(2) . . . . . . . . . . . . . . . . . . . . . .165 not filed in due time Art.14(2),(4) . . . . . . . . . . . . . . . . . . . .6 of claims on grant Rule 71(3) . . . . . . . . . . . . . . . . . . . . . . . . . . .99 to obtain provisional protection Art.67(3) . . . . . . . . . . .45 of evidence Rule 3(3) . . . . . . . . . . . . . . . . . . . . . . . . . . . .6 of international application Art.153(4), Rule 159(1)(a), Rule 160(1) . . . . . . . .181, 183 of earlier application when filing by reference Rule 40(3) . . . . . . . . . . . . . . . . . . . . . . . . . . . .64 on conversion into a national patent application Art.137(2)(b) . . . . . . . . . . . . . . . . . . . . . . . .174 reduction of fees Rule 6(3), RRF Art.14(1) . . . . . . . . .8, 202 waiver of London Agreement Art 1. . . . . . . . . . . . . . . .203 transmittal of European patent application Art.77, Rule 37 . . . . . . . .54 of PCT application Rule 157(3) . . . . . . . . . . . . . . . . . . .180 transmittal fee for an international application Rule 157(4), RRF Art.2(18) . . . . . . . . . . . . . . . . . .176, 199 travel expenses reimbursement of Rule 122(2) . . . . . . . . . . . . . . . . . . . .141

U unitary patents for a group of Contracting States Art.142 . . . . . . . . . . . .176

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Index unity of invention definition of Art.82, Rule 44 . . . . . . . . . . . . . . . . . . . . . . .69 in the international phase Rule 158, G1/89, G2/89 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .180, 223 not relevant in opposition proceedings G1/91 . . . . . . . .215 permitted multiple independent claims Rule 43(2) . . . . . .75 reconsideration of Rule 164 . . . . . . . . . . . . . . . . . . . . . .185 search report when invention lacks Rule 64 . . . . . . . . . . .94 utility certificate national Art.140 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .175 priority claim based on Art.87 . . . . . . . . . . . . . . . . . . . . .82 utility model national Art.140 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .175 priority claim based on Art.87 . . . . . . . . . . . . . . . . . . . . .82

W waiver of translations see London Agreement war extension of patent term due to Art.63(2)(a) . . . . . . . . . .43 withdrawal limitation on Rule 15 . . . . . . . . . . . . . . . . . . . . . . . . . . . .39 written proceedings language to be used Rule 3 . . . . . . . . . . . . . . . . . . . . . . . .6 written form Rule 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 98 WTO priority rights arising from Art.87(1)(b) . . . . . . . . . . . . . .82

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“Nicholas Fox’s book performs a valuable service in helping its readers find what they already know, check what they don’t know and pinpoint what they ought to know.”

Jeremy Phillips, Professorial Fellow, Queen Mary Intellectual Property Research Institute “By a practitioner for a practitioner. Handy, convenient and complete.”

Walter Holzer, Former President of the Institute of Professional Representatives before the European Patent Office “This is not a book for every firm merely to buy and keep in its library.

It is a book for all practitioners to buy and keep on their desk.”

Paul Cole, Patent Attorney and Visiting Professor, Centre for Legal Studies, Bournemouth University Fully updated to account for the latest EPO rule changes, A Guide to the EPC 2000 contains an extensively annotated and cross-referenced copy of the revised Convention and Implementing Regulations, as well as the Rules Relating to Fees. Articles and their most relevant rules are printed together to enable them to be read in context. Practical commentaries highlight the major changes and rule re-numberings, illustrating how the articles and rules interact in practice.

About the Author: Nicholas Fox is a solicitor at Simmons & Simmons specialising in intellectual property law with a focus on electronics, telecoms and software patent litigation. In addition to being a solicitor, Nicholas is also qualified as a European and Chartered British patent attorney and is admitted to the bar of the state of New York.

He has been a guest lecturer for the MSc and certificate courses for patent attorneys at Queen Mary, University of London, lectures on litigation for the European Patent Academy and has taught European patent law on the JDD European Qualifying Examination course.