INFORMATION FROM THE EPO
Notice from the European Patent Office dated 12 November 2004 concerning revision of the Request for Grant form (Form 1001)
In January 2005, a new version of the Request for Grant form (EPA/EPO/OEB Form 1001, Version 01.05) will be issued. The following amendments have been made to version 05.04 which was printed and made available for distribution in July 20041:
1. The footnote to Section 32.1 now includes the new contracting states Iceland (IS) and Lithuania (LT)2. The Section 32.1 declaration, which covers all EPC contracting states at the time the application is filed, is worded in such a way that when Form 1001 is used any new contracting states are also designated, even if they have not yet been included in the footnote. The Notes on the Request for Grant have been amended accordingly to include a request in Icelandic and Lithuanian in Part II, Section 53.
2. Serbia and Montenegro (YU) became a new extension state with effect from 1 November 20044. An extension agreement for Bosnia-Herzegovina (BA) came into force on 1 December 20045. The list of countries for which extension fees can be paid has been supplemented accordingly in Section 34. In addition, Lithuania, formerly an extension state and now a contracting state, has been removed from Section 34.
3. Application number
The EPO will adopt WIPO Standard 10/C in future when assigning application numbers to earlier filings in connection with priority declarations. From January 2005 it will indicate two numbers6 in the Receipt for documents on page 6 of the Request for Grant: the first, which must be quoted in all correspondence with the EPO, is the eight-digit application number followed by a dot and a check digit.
The second number (the one after the slash) is in accordance with WIPO ST. 10/C, ie it uses the organisation or country code before the eight-digit number but is without a check digit. This is the number to use when the application is being claimed as priority, and is also the one given to priority documents. Section 25 of the Notes explains this procedural change.
4. Divisional applications and declarations of priority
The Notes make it clear that any priority rights associated with a previous application (parent application) extend as of right to the divisional application (see Article 76(1) EPC). However, this is only the case when the priority right(s) associated with the parent application has/have not lapsed before the divisional application is filed (see Guidelines for Examination in the EPO as at December 2003, A-IV, 1.2.2).
It is therefore not necessary to submit a priority declaration in respect of a divisional application. Priority rights will not be lost if incorrect or incomplete information is provided in Section 25 of Form 1001. The applicant may, if he so wishes, forgo his claim in respect of a divisional application to the priority generated by the parent application. To do so he must submit to the EPO under separate cover an express waiver signed by hand.
The latest version (01.05) of the Request for Grant form (Form 1001) and the Notes appears below.
The revised Request for Grant (Form 1001) is available in paper form7. It is also available in editable PDF form on the EPO website at http://www.european-patent-office.org. Copies of the previous version of the form can be used without legal prejudice to the applicant, although it is recommended that the latest version be used.
For technical reasons, the forms embedded in this article are only available in the PDF version.
2 OJ EPO 2004, 479 and 481.
3 See Section 32.1 of the Request for Grant form (EPA/EPO/OEB Form 1001, 01.05)
If the examination fee is to be reduced in accordance with Rule 6(3) EPC and Article 12(1) RFees, the request for grant can be submitted in Icelandic as follows: "Hér með er farið fram á veitingu evrópsks einkaleyfis og rannsókn á einkaleyfishæfi umsóknarinnar skv. 94. grein".
In Lithuanian it can be submitted as follows: "Prašoma atlikti paraiškos ekspertizę pagal 94 straipsnį".
Since Section 5 (left column) of Form 1001 already contains a printed written request for examination in the official languages of the EPO, it is recommended that the written request for examination in Icelandic or Lithuanian be entered in the right column of Section 5. The request for examination in this language can, however, be made at a later date up to the time the examination fee is paid (see decision J 21/98, published in OJ EPO 2000, 406).
6 Example: 02075001.4 / EP02075001.
7 The Request for Grant form ("EPA/EPO/OEB Form 1001 01.05") is available free of charge from the EPO (preferably from Vienna, but also from Munich, The Hague and Berlin) as well as from the central industrial property offices of the contracting states.