ADMINISTRATIVE COUNCIL
Decisions of the Administrative Council
Decision of the Administrative Council of 13 December 1994 amending the European Patent Convention, its Implementing Regulations and the Rules relating to Fees
THE ADMINISTRATIVE COUNCIL OF THE EUROPEAN PATENT ORGANISATION,
Having regard to the European Patent Convention, and in particular Article 33(1)(a) and (b) and (2)(d) thereof,
On a proposal from the President of the European Patent Office,
Having regard to the opinion of the Working Party on Harmonisation,
HAS DECIDED AS FOLLOWS:
Article 1
(1) Article 65(1), second sentence, of the European Patent Convention, Rules 20, 35(12), 38(3), third and fourth sentences, and (4), 85(3), 87 and 104b(3) of the Implementing Regulations to the Convention and Articles 2, item 1, and 3, paragraph 3, of the Rules relating to Fees shall read as set out in the annex to this decision.
(2) Rules 57a, 71a and 86(4) as set out in the annex to this decision shall be incorporated into the Implementing Regulations to the Convention.
Article 2
Article 65(1), second sentence, of the European Patent Convention as amended by this decision shall enter into force on 1 January 1996. This decision shall otherwise enter into force on 1 June 1995.
Done at Munich, 13 December 1994
For the Administrative Council
The Chairman
Per Lund THOFT
ANNEX
I. AMENDMENT OF THE CONVENTION
Article 65(1), second sentence, EPC
(1) ... The period for supplying the translation shall end three months after the date on which the mention of the grant of the European patent or of the maintenance of the European patent as amended is published in the European Patent Bulletin, unless the State concerned prescribes a longer period.
II. AMENDMENTS TO THE IMPLEMENTING REGULATIONS
Registering a transfer
(1) A transfer of a European patent application shall be recorded in the Register of European Patents at the request of an interested party and on production of documents satisfying the European Patent Office that the transfer has taken place.
(2) The request shall not be deemed to have been filed until such time as an administrative fee has been paid. It may be rejected only in the event of failure to comply with the conditions laid down in paragraph 1.
(3) A transfer shall have effect vis-à-vis the European Patent Office only when and to the extent that the documents referred to in paragraph 1 have been produced.
(12) Physical values shall be expressed in the units recognised in international practice, wherever appropriate in terms of the metric system using SI units. Any data not meeting this requirement must also be expressed in the units recognised in international practice. For mathematical formulae the symbols in general use shall be employed. For chemical formulae the symbols, atomic weights and molecular formulae in general use shall be employed. In general, use should be made of the technical terms, signs and symbols generally accepted in the field in question.
Rule 38(3) , third and fourth sentences, EPC
(3) ... The President of the European Patent Office may provide that a copy of the previous application, if it is available to the European Patent Office, shall be included in the file of the European patent application, and lay down the conditions for doing so. He may in particular provide that an administrative fee is payable.
(4) Where a translation of the previous application into one of the official languages of the European Patent Office is required, it must be filed within a time limit to be set by the European Patent Office but at the latest within the time limit under Rule 51, paragraph 6, or a declaration must be submitted that the European patent application is a complete translation of the previous application. Paragraph 3, third sentence, shall apply mutatis mutandis.
Rule 57a EPC (new)
Amendment of the European patent
Without prejudice to Rule 87, the description, claims and drawings may be amended, provided that the amendments are occasioned by grounds for opposition specified in Article 100, even if the respective ground has not been invoked by the opponent.
Rule 71a EPC (new)
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 shall be fixed. Rule 84 shall not apply. New facts and evidence 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 sentence, documents which meet the requirements of the Convention. Paragraph 1, third and fourth sentences, shall apply mutatis mutandis.
(3) Paragraphs 1 and 2 shall apply mutatis mutandis to the time limits provided for in the Convention in the case of transactions carried out with the competent authority in accordance with Article 75, paragraph 1(b) or paragraph 2(b).
Rule 86(4) EPC (new)
(4) 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.
Different claims, description and drawings for different States
If the European Patent Office notes that, in respect of one or some of the designated Contracting States, the content of an earlier European patent application forms part of the state of the art pursuant to Article 54, paragraphs 3 and 4, or if it is informed of the existence of a prior right under Article 139, paragraph 2, the European patent application or European patent may contain for such State or States claims and, if the European Patent Office considers it necessary, a description and drawings which are different from those for the other designated Contracting States.
Rule 104b(3) EPC
(3) Where the priority of an earlier application is claimed and the file number or copy provided for in Article 88, paragraph 1, and Rule 38, paragraphs 1 to 3, of this Convention, have not yet been submitted at the expiry of the period of twenty-one or thirty-one months, whichever applies, referred to in paragraph 1, the European Patent Office shall invite the applicant to furnish the number or copy of the earlier application within such period as it shall specify. Rule 38, paragraph 3, third sentence, shall apply to the filing of the copy of the earlier application.
III. AMENDMENTS TO THE RULES RELATING TO FEES
Article 2, item 1, RFees
1. Filing fee (Article 78, paragraph 2); national basic fee (Rule 104b, paragraph (1)(b)(i)) DEM 600.
Article 3(3) RFees
(3) The amounts of the fees provided for in Article 2 and of the fees and costs laid down in accordance with paragraph 1 shall be published in the Official Journal of the European Patent Office.