European patent system
The centralised, fundamentally autonomous and uniform procedure for the grant of European patents, introduced by the European Patent Convention (EPC), is linked in a special way with the national patent law of the member states of the European Patent Organisation, and at a number of stages it "interfaces" with the national legal systems - a feature essential to smooth interaction between European and national law. In each of the contracting states for which it is granted, the European patent has the effect of and is subject to the same conditions as a national patent granted by that state, unless otherwise provided in the EPC (Article 2(2) EPC).
The salient characteristic of these interfaces is that, at the outset or in the course of the European grant procedure or after it has been completed, the patent applicant or proprietor may or must take certain steps before the patent authorities of the contracting states in order to acquire or maintain certain rights in those states. It is therefore of primordial importance for all European applicants and proprietors to be familiar with and carefully observe such procedural steps laid down by national law and the conditions for their validity, if full advantage is to be derived from the European patent system and loss of rights is to be avoided.
This booklet is intended by the European Patent Office as a concise and reliable guide to the most important provisions and requirements of the national law of the contracting states applicable to European patent applications and patents, for the use of European patent applicants and proprietors and all others concerned with the European patent system. It may be considered as it were a "Guide to the Euro-legislation of the contracting states on patents" and thus supplements the guide for applicants - "How to get a European patent". The synopses given in the following tables have been prepared in close collaboration with the authorities of the contracting states responsible for the protection of industrial property, to which the EPO is indebted for their active support and numerous valuable suggestions.
Although we have exercised the greatest care in drawing up the tables, we cannot vouch for the absolute completeness and accuracy of the information given. If only because of their conciseness and the fact that they concentrate on the bare essentials, the tables can be no substitute for consultation of the national legal sources themselves, supplemented where appropriate by professional advice from authorised persons. After all, despite the latest reforms, thorough as they have mostly been, national patent law and practice are not static phenomena but are constantly changing and, of necessity, developing. As a result, it is not even possible to state with any certainty that the legal provisions summarised in the tables will not have been changed by the time this booklet appears. In particular, the reader should not assume that the official fees given at various points in the tables have not been increased in the meantime. It is therefore advisable always to refer back to the official publications of the contracting states so as to keep up to date with the development of national legislation and official practice. The EPO will continue to provide regular and, as far as possible, up-to-date coverage in its Official Journal of legal developments in the contracting states. The reader is in particular referred to the online version of the brochure "National law relating to the EPC"*, which is updated whenever the EPO learns of any relevant changes at national level.
The present 16th edition provides information on the so-called extension states immediately following on the information given for the EPC contracting states.
The European Patent Organisation has concluded agreements on co-operation in the field of patents and on extending the protection conferred by European patents (Extension Agreements) with a number of states which are not party to the EPC.
These agreements form the basis of an extension system providing patent applicants with a simple and cost-effective way of obtaining patent protection in these countries. At the applicant’s request and on payment of the extension fee, European applications (direct or Euro-PCT, provided PCT applications include the designation both for a European patent and for extension states) and patents can be extended to these countries where they will have the same effects as national applications and patents and will enjoy substantially the same protection as patents granted by the EPO for the member states of the European Patent Organisation. At present, extension to the following states may be requested:
Bosnia and Herzegovina (as from 1 December 2004)
Montenegro (as from 1 March 2010)
Note: Extension is possible only for those applications filed after entry into force of the agreements.
The extension system largely corresponds to the EPC system operating in the EPC contracting states, except that it is based not on direct application of the EPC but solely on national law modelled on the EPC. It is therefore subject to the national extension rules of the country concerned.
The rules, which are identical for all states mentioned, are summarised below, while the main requirements in each country are indicated in the tables concerned immediately following on the information for the contracting states. For further information on extension see OJ EPO 2004, 619, OJ EPO 2007, 406, OJ EPO 2009, 603 and OJ EPO 2010, 10.
The extension fee of EUR 102 is payable to the EPO. The time limit for payment of the extension fee is:
- for European applications
Six months from the date on which the European Patent Bulletin mentions the publication of the European search report.
- for Euro-PCT applications
31 months from the date of filing or earliest date of priority or six months from the date on which the international search report was published, whichever date is later.
Withdrawal of the request for extension
The request for extension is deemed withdrawn if the extension fee is not paid or the application is withdrawn, refused or deemed withdrawn.
Subsequent payment of extension fees
If the fee for an extension state has not been paid within the basic period, the applicant can pay the extension fee subsequently in combination with a 50% surcharge
1. within two months of expiry of the basic period (for "re-introduced grace period" see OJ EPO 2009, 603) or
2. within two months of notification of a communication of loss of rights owing to non-payment of a designation fee.
In the latter case, a subsequent payment is possible only if the conditions set out in detail in the Guidelines for Examination, A-III, 12.2, are met. Under those conditions, the applicant can request further processing for the designations deemed to be withdrawn (Article 121; Rule 135 EPC), paying the extension fees at the same time.
Accession to the EPC of an extension state
The extension agreement between an extension state and the European Patent Organisation will terminate with the entry into force of the EPC in that state. It will thereafter no longer be possible to extend European patent applications and patents to the former extension state. The extension system will, however, continue to apply to all European and international applications filed prior to the date of entry into force of the EPC in that state, as well as to all European patents granted in respect of such applications.
The legal situation outlined above exists in Slovenia (termination of the extension agreement with effect from 1 December 2002), in Romania (termination of the extension agreement with effect from 1 March 2003), in Lithuania (termination of the extension agreement with effect from 1 December 2004), in Latvia (termination of the extension agreement with effect from 1 July 2005), in Croatia (termination of the extension agreement with effect from 1 January 2008), in the former Yugoslav Republic of Macedonia (termination of the extension agreement with effect from 1 January 2009), in Albania (termination of the extension agreement with effect from 1 May 2010) and in Serbia (termination of the extension agreement with effect from 1 October 2010).