INFORMATION FROM THE EPO
Notices of the President of the EPO
Notice of the President of the European Patent Office dated 13 May 1992 concerning reservations entered by Spain and Greece under Article 167 EPC
1. Present situation
When depositing their instruments of ratification or accession respectively, Greece and Spain entered reservations under Article 167(2)(a) EPC1.
By virtue of the reservation entered by the Hellenic Republic, European patents are ineffective in Greece in so far as they confer protection on pharmaceutical products as such.
By virtue of the reservation entered by the Kingdom of Spain, European patents are ineffective in Spain in so far as they confer protection on chemical products as such or on pharmaceutical products as such.
The term of these reservations, which were due to expire on 7 October 1987, was extended by five years under Article 167(3) EPC by Administrative Council decision of 5 December 19862.
2. Expiry of the reservations
They will thus cease to have effect after 7 October 1992 (Article 167(6) EPC), and from 8 October 1992 there will no longer be any reservations in force in any of the Contracting States.
European patent applications designating Spain or Greece and filed from 8 October 1992 may therefore contain claims relating to chemical or pharmaceutical products as such.
Under Article 167(5) EPC it is the filing date of the European patent application which is decisive, whether or not priority of a previous application is claimed. The reservations entered by Spain and Greece therefore only apply to European patent applications filed before 8 October 1992, and to European patents granted on the basis of such applications, their effect continuing for the term of the patent concerned.3
3. Translation of claims covered by Spain's reservation
For European patent applications and patents to enjoy provisional or definitive protection in Spain, a translation in Spanish of the claims and patent specification respectively must be supplied (Articles 67 and 65 EPC - Articles 5 and 7 of Royal Decree 2424/1986 of 10 October 1986 on application of the EPC).
For European patent applications designating Spain, filed before 8 October 1992 (and European patents granted on the basis of such applications) and containing claims covered by Spain's reservation, the following arrangements have been agreed between the Registro de la Propiedad Industrial (RPI) and the EPO.
In future, the RPI will publish the Spanish translations of such claims without requiring amendment or deletion. It will however indicate them, with a note to the effect that they are covered by the reservation.
Applicants are therefore strongly advised to submit a separate set of claims when filing a European patent application designating Spain, if this is necessary to avoid the publication of claims relating to chemical or pharmaceutical products as such.
This advice also applies to European patent applications designating Greece and containing claims relating to pharmaceutical products as such.
The attention of applicants filing European patent applications containing claims covered by the reservations is also drawn to the fact that they can submit a separate set of appropriate claims up to the time when, in response to the communication under Rule 51(4) EPC (EPA/EPO/OEB Form 2004), they indicate approval of the text in which the Examining Division intends to grant the European patent (see however Guidelines for Examination in the EPO, C-III, 8.3 and VI, 4.9).
The EPO always examines whether the separate sets of claims satisfy the requirements laid down in the EPC.
3 It should be noted, however, that in the event of litigation concerning the scope of the said reservations, it shall be for the competent national courts to decide.