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Guidelines for Examination

 
 

2. Request for documents

Documents referred to by a party to opposition proceedings must be filed together with the notice of opposition or the written submissions. A single copy of these documents is sufficient. If such documents are neither enclosed nor filed in due time upon invitation by the formalities officer, the Opposition Division may decide not to take any arguments based on them into account.

In implementing this provision the desired aim of speeding up the procedure should be borne in mind as much as the common interest in taking obviously relevant submissions into account.

If during the opposition proceedings it becomes apparent that the previous application from which the opposed patent claims priority is not in an official language of the European Patent Office and the validity of the priority claim is relevant to the determination of the patentability of the subject-matter of the patent concerned, the Opposition Division will invite the 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 on the basis of which the opposed patent was granted is a complete translation of the previous application. For the procedure for inviting the patent proprietor to file such a translation or declaration see A‑III, 6.8 and F‑VI, 3.4. Such an invitation is not to be issued if the translation of the previous application or the declaration was available to the European Patent Office and is to be included in the file of the European patent application under Rule 53(2).

Failure by the proprietor of the European patent to supply a required translation or declaration in due time will lead to the priority right being lost. This will have the effect that the intermediate document(s) which resulted in the validity of the priority claimed becoming relevant for the assessment of patentability will belong to the prior art under Art. 54(2) or Art. 54(3), as applicable (see A‑III, 6.8.3). The proprietor will be notified of this loss of rights (see A‑III, 6.11). As a means of redress he may request either re-establishment of rights under Art. 122 and Rule 136 (see E‑VII, 2.2) or a decision under Rule 112(2) (see E‑VII, 1.9.3).

References

Rule 83

Rule 53(3)