EUROPEAN PATENT OFFICE
Information from the EPO
Notice from the European Patent Office dated 22 February 2021 concerning the amendment of Rules 19 and 143 EPC
1. By decision CA/D 11/20 of 15 December 2020 (OJ EPO 2021, A3), the Administrative Council of the European Patent Organisation amended Rules 19 and 143 of the Implementing Regulations to the EPC. Following the entry into force of amended Rule 19 EPC on 1 April 2021, inventors will no longer be notified by the EPO about their designation. In addition, applicants will no longer be required to indicate the full address of the inventor in the application, only the country and place of residence. Following the entry into force of amended Rule 143 EPC on 1 November 2021, the full addresses of inventors will no longer be published in the European Patent Register. The option afforded to inventors under Rule 20(1) EPC to waive their right to be mentioned remains unaffected by these changes.
2. Due to the deletion of paragraphs 3 and 4 of Rule 19 EPC on the entry into force of amended Rule 19 EPC, the EPO will no longer notify inventors about their designation in a patent application (EPO Form 1048 or 1204). This will also apply to all European patent applications for which a designation of the inventor was filed before 1 April 2021 and for which EPO Form 1048 would have been issued after that date. It will likewise apply to international applications entering the European phase before 1 April 2021 and for which EPO Form 1204 would have been issued after that date.
Removal of the requirement to indicate an inventor's full address in the designation of the inventor (amended Rule 19(1) EPC)
3. Since the inventors will no longer be notified about their designation, there is no longer a need to obtain full addresses. Therefore, as of 1 April 2021, the EPO will no longer require applicants to indicate full addresses (including street and house number) when designating an inventor. Instead, applicants need only provide the inventor's country and place of residence. The place of residence is the city or other municipality where the inventor permanently resides, and includes the postal code (where available). If either the country or the place of residence is missing, the EPO will invite the applicant to remedy this deficiency, and will refuse the application if it is not remedied in time.
4. The online filing tools will be updated to no longer have a dedicated field for entering a full address (i.e. street and house number) when designating an inventor. Nor will there be a dedicated field for "Company" or "Department". Users have to update their Online Filing software for these changes to be incorporated. Please note that if after 1 April 2021 the designation of the inventor is filed either using an old version of the Online Filing software or in paper form with the inventor's full address (i.e. including street name and house number), that information will still be included in the public file as filed (unless Rule 20(1) EPC applies) and will be published in the European Patent Register. Applicants are therefore strongly advised to ensure that they update the Online Filing software to the newest version and submit only the data required under amended Rule 19(1) EPC when filing the designation of the inventor on paper.
5. Rule 19(1) EPC as amended will apply to any designation of the inventor filed or rectified on or after 1 April 2021. It will likewise apply to any international application entering the European phase on or after that date. Until 31 March 2021, the EPO will continue to issue invitations to remedy deficiencies pursuant to Article 90(3) and Rule 60 EPC (EPO Form 1045) and pursuant to Rule 163(1) EPC (EPO Form 1212) if the inventor address is missing or incomplete in the designation. However, no decision to refuse the application will be issued if the time limit to remedy the deficiency indicated in these communications expires on or after 1 April 2021, unless there are other deficiencies in the designation which have not been rectified.
Removal of inventor addresses from the data published in the European Patent Register (amended Rule 143(1)(g) EPC)
7. Following the decision of the Administrative Council, the EPO will no longer publish the full inventor address in the European Patent Register, bringing Rule 143 EPC into line with amended Rule 19(1) EPC. Amended Rule 143(1)(g) EPC will enter into force on 1 November 2021 and will apply to all patent applications published in the European Patent Register on or after that date. In addition, inventors designated on or after 1 April 2021 for applications published before 1 November 2021 will be published in the European Patent Register without their full address, unless the address has nevertheless been provided by the applicant.
8. Instead of the inventor's full address, only the country and place of residence (as defined under point 3 above) will be published for these patent applications. The same applies to inventor designations rectified under Rule 21 EPC.
9. All inventor addresses published before 1 November 2021 will remain unchanged and visible in the European Patent Register. When requesting correction of inventor data in the European Patent Register after 31 October 2021, only the country and place of residence may be corrected. On the occasion of such requests, the existing street address will be deleted.