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VII. Conversion of European patent applications

 
 

Conversion of European patent applications or patents into national patent applications

VII.


1. Basis for conversion

Under Article 135(1) EPC, the central industrial property office of a designated contracting state may apply the procedure for the grant of a national patent at the request of the applicant for or proprietor of a European patent, in the following circumstances:

(a) where the application is deemed to be withdrawn pursuant to Article 77(3) EPC (delay by national authorities in forwarding the European application);

(b) in such other cases as are provided for by the national law in which the European patent application is refused or withdrawn or deemed to be withdrawn, or the European patent is revoked under the EPC.

2. Time limit for filing the request for conversion

The request for conversion must be filed within three months after the date on which

(a) the European patent application has been withdrawn or

(b) a communication has been notified that the application is deemed to be withdrawn, or

(c) a decision has been notified refusing the application or revoking the European patent.

The equivalence of the European patent to a regular national filing lapses if the request is not filed in due time (Rule 155(1), second sentence, EPC).

3. Submission of the request for conversion

(a) Unless the European patent application is deemed to be withdrawn pursuant to Article 77(3) EPC, the request for conversion must be filed with the European Patent Office. It is not deemed to be filed until the conversion fee has been paid to the Office (Article 135(3), second sentence, EPC).

(b) If the applicant has been notified that the European patent application is deemed to be withdrawn pursuant to Article 77(3) EPC, the request must be filed with the central industrial property office with which the application was filed (Article 135(2) EPC).

4. Transmission of the request

(a) The requests for conversion which must be filed with the European Patent Office (cf. 3(a) above) are transmitted by the Office to the central industrial property offices of the contracting states specified therein, accompanied by a copy of the files relating to the European patent application or the European patent (Article 135(3), Rule 155(2) EPC).

(b) Where the request for conversion has to be filed with a national patent office (cf. 3(b) above), that Office, subject to the provisions of national security, transmits the request, together with a copy of the European patent application, directly to the central industrial property offices of the contracting states specified by the applicant in the request. The effect referred to in Article 66 EPC (i.e. equivalence of the European patent application to a regular national filing in the contracting states designated) lapses if the request for conversion is not transmitted within twenty months after the date of filing or date of priority (Rule 155(3) EPC).

5. Explanatory notes concerning the table

The table below indicates the basis for conversion under the national law of all the contracting states to the EPC and contains useful information regarding the formal requirements of the competent national authorities, the time limits involved and regulations concerning representation or addresses for service if the applicant or his representative before the EPO has neither a residence nor his principal place of business in the contracting states in question.

All European patent applications transmitted pursuant to Article 135(2) or 135(3) EPC are governed by Article 137(1) EPC, which lays down that these applications may not be subjected to formal requirements of national law which are different from or additional to those provided for in the EPC.

The translation referred to in the table should be understood to mean a translation of the original text of the European patent application and, where appropriate, of the text, as amended during proceedings before the EPO, which the applicant wishes to submit to the national procedure (Article 137(2) (b) EPC).

This table contains no information on extension states since Article 135 EPC does not apply to these states.