Pages 409-423

INFORMATION FROM THE EPO

Notice dated 1 June 1995 concerning amendment of the European Patent Convention, the Implementing Regulations and the Rules relating to Fees

By decision dated 13 December 1994 (see OJ EPO 1995, 9) the Administrative Council amended the Convention, the Implementing Regulations and the Rules relating to Fees.

The changes are mainly designed to simplify and streamline EPO procedures. Some of them also resolve and clarify the law. The revised or new texts are explained below. Consequential amendments to the EPO's Guidelines for Examination are also indicated (see page 424 below).

The amendments to the Implementing Regulations and the Rules relating to Fees entered into force on 1 June 1995, and apply to all proceedings pending on that date. The new version of Article 65(1), second sentence, EPC enters into force on 1 January 1996.

I. Amendment of the Convention

Minimum period for filing the translation of the European patent specification

Article 65(1), second sentence, EPC now reads as follows:

(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.

1. In line with existing practice in contracting states1, the minimum period for filing the national translations under Article 65(1), second sentence, is thus now set at three months as from mention of grant.

2. This does away with the complicated calculation of the time limit under Article 65 (triggered by the start of the period for paying the fee for grant) and fixes a minimum period between grant and supplying the translation which gives applicants enough time to react.

3. The new version of Article 65 also gives legal force to the harmonisation achieved to date, and also makes it binding on states acceding to the EPC in the future.

II. Amendment of the Implementing Regulations

Registering a transfer

Rule 20 EPC now reads as follows:

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.

1. Hitherto, formal documentary proof was required when requesting the recording of transfers of European patent applications in the Register of European Patents. The EPC system was thus much more burdensome than the PCT one (Rule 92^bis.1 PCT) for all concerned. It was often difficult for applicants to obtain the papers required, and for the Office then to make use of them (eg because it had to establish which parts of a long merger or shareholders' agreement were relevant for the transfer).

2. The new text simplifies the transfer verification process by bringing it more into line with the PCT system. In future, formal transfer documents are no longer required, and any written evidence of the transfer - in particular a declaration by the previous proprietor agreeing to it - is admissible for Register purposes. In the great majority of cases, the Office will no longer need to scrutinise the documents hitherto required, although in case of doubt it can still insist on seeing them. This will ensure that the data in the Register remains reliable for users.

3. The legal-effect requirements for transfers (see Article 72 EPC) are not affected.

4. The procedure under Rules 20 to 22 EPC is explained in more detail in new Guidelines E-XIII.

Units of measurement

Rule 35(12) EPC now reads as follows:

(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.

1. EPO practice is to require the units prescribed in the EU countries (SI units, EC directive 76/770/EEC). It is based on Rule 35(12), fifth sentence, requiring that for physical values the units recognised in international practice be used.

2. In decision T 561/91 of 5 December 1991 (OJ EPO 1993, 736), Board 3.3.3 ruled however that use of SI units was not compulsory, on the grounds that Rule 35(12), first sentence, also allowed other metric units. In T 589/89 of 5 February 1992 the same board took the opposite view, namely that Rule 35(12), first sentence, meant only that "inch/pound" units were excluded. In a third decision (T 176/91 of 10 December 1992) the board reiterated its ruling from the first decision.

3. The legal position thus required clarification, particularly since the need for SI units is undisputed, and their use is anyway prescribed in most contracting states.

4. The new wording of Rule 35(12) makes it clear that physical values are to be expressed using the units recognised in international practice, namely the metric system using SI units. The new wording has considerable advantages over the old version. The special clause for temperatures (which was incomplete because it did not allow Kelvin) becomes superfluous: these are covered by SI units. So does that for weights and measures. If unauthorised units are used it is still possible to convert them subsequently into internationally recognised ones.

5. New Rule 35(12) will not mean different standards being applied to European applications filed direct or via the PCT; its main purpose is to enshrine current practice in the legislation.

Declaration of priority and priority documents

Rule 38(3), third sentence, EPC now reads as follows:

(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.

1. An applicant wishing to claim the priority of a previous application must file a copy and (where necessary) a translation of it (Article 88(1) EPC). Under Rule 38(3), first and second sentences, the applicant has 16 months to file the priority document. By derogation from this, however, old Rule 38(3), third sentence, provided for the EPO to include a copy in the file (free of charge) if the previous application was a European one or an international application filed with the EPO, ie if the original text and the filing data needed are available in the EPO.

2. The aim of the new version of Rule 38(3), third sentence, is to extend the existing beneficial arrangements to other cases where the previous application is available to the Office and the priority document can thus easily be added to the file of a new application. This will apply in particular once ELFOS is introduced and the copy of the earlier application is already available in electronic form. To ensure however in future that the possibilities opened up by the use of new technologies can be rapidly utilised, the new text empowers the President of the EPO to lay down the procedural details.

3. On the basis of Rule 38(3) as amended, the President has meanwhile taken steps (see decision dated 11. April 1995, OJ EPO 1995, 408) to ensure that practice under the old version of Rule 38(3), third sentence, continues to apply.

Translation of the previous application

Rule 38(4) EPC now reads as follows:

(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 104b(3) EPC now reads as follows:

(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.

1. If a European patent application claimed the priority of an earlier application, the applicant hitherto had to file a translation of the priority document within 21 or 31 months as from the priority date if the document was not drafted in one of the EPO official languages.

2. This was a very burdensome arrangement for applicants and Office, especially bearing in mind that priority is claimed in over 90% of all European patent applications and that in around one third of these cases the earlier application is not in an EPO official language. As a result, some 16 000 translations are filed every year, of which nearly 6 000 are filed by applicants from contracting states whose official language is not an EPO official language.

3. Only a fraction of these translations is actually needed in examination proceedings, because as a rule the entitlement to priority is substantively scrutinised only if relevant for the patentability of the invention, notably in the event of pertinent citations from the priority interval.

4. But if translations of priority documents are needed for examination proceedings only in individual cases, there is no real reason to have a catch-all provision requiring their submission at the start of those proceedings. Under the new text, therefore, the period for filing the translation of the previous application ends together with the grant procedure itself - namely on expiry of the time limit under Rule 51(6) - unless the EPO asks for it earlier.

5. This ensures that a translation of the priority document is available if actually needed in examination proceedings. At the same time, it avoids needless filing of translations in those cases (approx. 30%) which do not proceed to grant, and in standard cases defers filing until the end of the grant procedure.

6. The new rule does not affect the legal and procedural consequences involved in the formal claiming of priority. As the law currently stands, filing the translation is not one of the formalities which affects the decisive date of publication or the date for paying the designation fees. The legal consequence of failure to file the translation is loss of the priority right, if the applicant fails to furnish the translation in good time even after being requested to do so by the Office.

7. Nor does the new text affect the information interests of third parties. A translation of the priority document is normally available if the relevance of material from the priority interval needs to be studied with a view to initiating opposition or revocation proceedings. Third parties can also use Article 115 EPC to cite prior art from the priority interval during examination proceedings, thereby provoking an early request for a translation.

8. The new version also introduces into law the Office's existing practice whereby the translation of the previous application is deemed to have been filed if within the Rule 38(4) time limits the applicant declares that the European patent application claiming the priority is a complete translation of the priority application. This practice has already helped in the past to reduce administrative work and cut costs.

9. The new provision applies to all proceedings in which the previous period of 21 months or the period set by the Office with form 1111 for filing the translation of the priority document expires on or after 1 June 1995.

10. Sections A-III, 6.8, A-VII, 3.5, C-V, 3.2 and 3.3, and C-VI, 15.2 of the Guidelines have been amended accordingly.

Amendment of the European patent

New Rule 57a EPC reads as follows:

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.

1. For the opposition procedure, the Implementing Regulations hitherto lacked a clear corollary to Rule 86 (amendment of the European patent application) governing the proprietor's right to amend his patent. Limitations placed on this right were justified by reference to Rules 57(1) and 58(2), by analogous application of Rule 86, or in terms of the sense and purpose of opposition proceedings. So far, boards of appeal have allowed amendments only where occasioned by the opposition.

2. New Rule 57a creates a lex specialis for amendments during opposition proceedings. It addresses the purely substantive aspects of the proprietor's entitlement to amend his patent, and does not specify the point in time up to which amendment is allowed: here existing practice would remain unchanged. Its restriction of the right to amend is in line with the sense and purpose of opposition proceedings, and does away with the need for a discretionary provision like Rule 86(3).

3. Under Rule 57a, amendments during opposition proceedings are admissible if occasioned by the grounds for opposition - irrespective of whether the opponent actually cited the ground in question. For example, in opposition proceedings admissibly opened on grounds of non-patentability, the patent proprietor could also make amendments to remove added subject-matter.

4. Furthermore, amendments occasioned by national prior rights - which are not included in the grounds for opposition specified in Article 100 EPC - are now also admissible during opposition proceedings. The reference to Rule 87, which also applies to opposition proceedings, expressly makes this clear.

5. Rule 57a is addressed in more detail in the Guidelines D-III, 5, and IV, 5.3.

Preparation of oral proceedings

New Rule 71a EPC reads as follows:

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.

1. The aim of oral proceedings is to reach a decision closing the case. This presupposes that the earlier written proceedings have prepared the ground properly (airing of facts, narrowing down the matters to be discussed). The way the EPO normally does this, at least in examination and opposition proceedings, is that the examining or opposition division sets out in the summons the questions it considers relevant.

2. The parties, for their part, normally prepare for oral proceedings by setting out their arguments in written submissions. If these are to help expedite matters, they need to reach the Office and any other parties in time for them to be able to comment on their substance at the oral proceedings. Documents handed in during or just before those proceedings do not fulfil this requirement, and often lead instead to complaints from the other party that he has been taken off guard and is not prepared to discuss the new points raised.

3. New Rule 71a(1) therefore introduces into the law existing EPO practice of issuing a summons setting a deadline for any written submissions. It also makes it clear that new facts and evidence put forward after that date need only be taken into account if based on a change in the subject of the proceedings, for example because the other party has raised new material in his own preparatory papers.

4. Rule 71a(1) also firms up the Office's discretionary powers enshrined in Article 114(2) by describing one situation in which late submission may be allowed. It makes clear to applicants the procedural consequences of a late submission; Rule 71a does not restrict the EPO's discretion under Article 114 EPC, but does give the Office more flexibility. It thus supplements the line already developed by the boards of appeal to deal with abuses of the procedure - ie to refuse to consider facts or evidence put forward late without good reason.

5. Rule 71a(2) is also designed to speed up the procedure, and to prevent parties being unfairly confronted with new documents and/or facts in oral proceedings. If the applicant or patent proprietor has been told beforehand that refusal or revocation is likely (and why), then he can reasonably be expected to react if given adequate time to do so.

6. The procedure under Rule71a is described in more detail in revised Guidelines E-III, 6 and 8.6.

Extension of time limits

Rule 85(3) EPC now reads as follows:

  (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).

The old wording of Rule 85(3) EPC was imprecise, and did not make clear that paragraphs 1 and 2 apply in all cases in which the applicant carries out transactions before the competent national authority within the meaning of Article 75(1)(b) or (2)(b). The new version makes clear that this is always the case, irrespective of whether a European patent application may or must be filed with the competent national authority.

Switching to unsearched subject-matter

New Rule 86(4) EPC reads as follows:

(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.

1. Hitherto, the Convention contained nothing to stop applicants switching to unsearched subject-matter in the reply to the first communication from the examiner. This enabled them to get several searches and examinations for the price of one, which was unfair. Regarding amendments to the original claims, the Enlarged Board of Appeal has confirmed (in G 2/92; OJ EPO 1993, 591) existing EPO practice that where an applicant fails to pay further search fees requested by the search division for non-unitary subject-matter he cannot pursue that subject-matter in the original application, but only in a divisional one.

2. The Office however lacked the means to react appropriately when such subject-matter was claimed only after the search. If, for example, in replying to the first communication the applicant dropped his existing claims and replaced them with originally non-unitary subject-matter extracted from the description, then his application did not lack unity - because the different subject-matter was claimed not simultaneously but in sequence.

3. The EPC however assumes that a search fee must always be paid for an invention presented for examination (see G 2/92). This implicitly rules out amendments to the application which circumvent this principle. New Rule 86(4) makes this clear. In such a case the applicant can always pursue the amended part of his original application as a divisional application under Article 76 (see new Guidelines C-VI, 5.2(ii)).

Different claims, description and drawings for different states

Rule 87 EPC now reads as follows:

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.

1. If European prior rights within the meaning of Article 54(3) and (4) are noted during examination proceedings, Rule 87 allows the grant of different versions of the European patent for the contracting states concerned. Hitherto, the Convention did not contain a similar provision for national prior rights, despite the fact that these can be cited against European patents in national revocation proceedings (Articles 138 and 139(2)).

2. This cannot really be justified simply by arguing that national prior rights - unlike the European variety - do not form part of the state of the art under Article 54 for the purposes of European examination proceedings. In either case, the applicant and subsequent patent proprietor has a legitimate interest in ensuring that his claims are delimited in such a way as to ensure that his patent is viable also in those contracting states where prior rights - whether European or national - confront it.

3. EPO practice takes this into account, allowing the submission of separate claims in examination or opposition proceedings where relevant national prior rights are shown to exist (see Legal Advice No. 9/81, OJ EPO 1981, 68).

4. The new version of Rule 87 simply confirms that practice, making it quite clear that separate claims and different descriptions are admissible in EPO proceedings where national prior rights too are shown to exist. This clarification was required in particular following decision T 550/88 (OJ EPO 1992, 117), which has sometimes been understood to exclude, in admissibly opened opposition proceedings, amendments occasioned by national prior rights.

III. Amendments to the Rules relating to Fees

Article 2, item 1, RFees now reads as follows:

1. Filing fee (Article 78, paragraph 2; national basic fee (Rule 104b, paragraph (1)(b)(i)) DEM 600

This is a purely editorial change making it clear that the national basic fee payable to the EPO as part of the national fee under Article 158(2) EPC when an international application enters the regional phase is the same amount as the European filing fee.

Article 3(3) RFees now reads as follows:

(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.

1. Following the EPO's takeover of INPADOC and expansion of the activities of Principal Directorate Patent Information, the number of EPO publications and services has increased considerably. The Office has therefore started publishing the prices of all the Vienna sub-office's publications, products and services in a separate "epidos" price list instead of the EPO fees schedule (supplement to the Official Journal).

2. The new version of Article 3(3) RFees makes it clear that the fees and costs under Articles 2 and 3(1) RFees are published in the EPO Official Journal and that the prices mentioned in Article 3(2) can be notified if need be in separate price lists independently of the Official Journal. The Official Journal's "Fees" section and cross-references in the separate lists ensure that users remain fully informed.