Selected recent and upcoming formal and
procedural changes
Christina ten Hövel
April 2015
Contents
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Validation agreement Morocco
Designation fee
Amended Rule 164 EPC
Unitary Patent
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Validation agreement Morocco
As of 01.03.2015
OJ EPO 2015, A18-A20
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Validation agreement
The validation agreement with Morocco entered into force on
01.03.2015.
• EPO Form 1001
• EPO Form 1200
refer, to “validation”, “validation fee”, validation agreement”.
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Validation agreement
The same time limits as for “extension” will apply for “validation”
• Validation fee: EUR 240 (fee code 420)
• Surcharge: EUR 120 (fee code 450)
It is foreseen that 2 other validation agreements (Tunisia and
Moldova) will enter into force by the end of 2015
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EPO Form 1001
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Designation fee
Arts. 9(1) and 11(b) RFees, J 25/10
Rule 39 (1) EPC
Guidelines for Examination, A-X, 5,2
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Due date of Designation fee
• The designation fee is due upon publication of the mention of the
European search report
• The fee must be paid within a basic time limit of six months after
publication of the European Search report
•
if the payment is received earlier, only be effective as from the due
date
• The early payment of the designation fee is to be refunded if the
application is refused, withdrawn or deemed withdrawn before
publication of the mention of the European search report
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Amended Rule 164 EPC – as of
01.11.2014
with amendments
to the Rules relating to Fees
CA 91/13,
OJ EPO 2014, A70
Annex A.1 to the Arrangements for deposit accounts (ADA) supplementary publication 4,
OJ EPO 2014, 13
PPN 10/2014
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Rule 164 (1) EPC
Procedure for Supplementary European search reports
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Rule 164(1) EPC
Rule 164(1) EPC applies to EPCTbis applications:
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where the application documents contain a lack of unity, and
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where the supplementary European search report is drawn up on or
after 01.11.2014
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Information and definition of EPCTbis search
reports Rule 164(1) EPC
If the application does not comply with the requirement of unity of
invention,
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a supplementary partial European search report is established,
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the applicant is informed that if the supplementary European search
report is to cover the other inventions, a further search fee must be
paid, for each invention involved (EPO Form 1507US),
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the time limit to pay a further search fee is two months,
– the time limit is non-extendable and, under amended Rule 135(2)
EPC, is excluded for further processing
•
the supplementary European search report is drawn up for those
parts of the European patent application which relate to inventions in
respect of which search fees have been paid.
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Rule 164(2) EPC
Procedure for
communications during Examination
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Rule 164(2) EPC
Rule 164(2) EPC applies to all EPCT applications:
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for which the first communication under Article 94(3) or, as the case
may be, Rule 71(3) EPC is to be drawn up on or after 01.11.2014,
and
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where the EPO was either International Search Authority or
Supplementary International Search Authority ,and
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where the application documents which are to serve as the basis for
examination contain one or more inventions not searched by the EPO
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Information regarding EPCT search results under
Rule 164(2) EPC
If the application contains non-searched inventions, the examining division shall:
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invite the applicant to pay further search fee(s) to cover the invention(s) for
which a search is to be performed (EPO Form 2002A),
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perform a search on the invention(s) for which the further search fee(s) is
(are) validly paid
– the search results under Rule 164(2) EPC are transmitted as an annex
to a communication under Article 94(3) (EPO Form 2001G) and Rule
71(1) EPC or under Art. 71(3) EPC (EPO Form 2004G)
•
continue with the examination proceedings if no further search fee(s) is (are)
validly paid.
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EPO Form 2002A
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The applicant is invited with a communication under Rule 164(2)(a)
EPC (EPO Form 2002A) to pay a search fee for each of the nonsearched inventions found in the application documents
–
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substantive examination is seen to have started and is reflected in the file (F2095)
The examiner informs the applicant of the non-searched invention(s)
on EPO Form 2906, which is annexed to EPO Form 2002A
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New Form 2002A
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EPO Form 2001G
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A communication (EPO Form 2001G) is established
– wherein the applicant is informed of the deficiencies contained
within the application documents and
– to which the results of the search performed on the invention(s) for
which further search fee(s) was (were) received is annexed (EPO
Form 2003)
• search is seen to have started and is reflected in the file (F1704)
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The reasoning (EPO Form 2906) mentions the deficiencies contained
in the application documents and the invention(s) included in the
search results under Rule 164(2)(b) EPC
–
–
claims searched
claims not searched (Rule 62a/63 or 164(3) EPC)
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New - Form 2001G
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New Form 2003.1 – Search results
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New form 2003.2 – Partial search results
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New Form 2003.3 - Declaration
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EPO Form 2004G
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A communication (EPO Form 2004G) is established
– wherein the applicant is informed of the intention to grant and
– to which the result of the search performed on the invention for
which a further search fee was received is annexed (EPO Form
2003)
–
search is seen to have started and is reflected in PHX (F1704)
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EPO Form 2004G
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European Patent Register
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The Register will reflect the new situation of Rule 164(2) EPC
– new event regarding the communication pursuant to Rule
164(2)(b) and Article 94(3) EPC or the communication under
Rules 164(2)(b) and 71(3) EPC
• two separate events are shown in the tabs ‘About this file’
(“Most recent events” field) and ‘Event history’
• a single event is visible in the tab ‘About this file’ (“Examination
procedure” field)
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“Most recent event” and “Event history”
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“Examination procedure”
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Payment of further search fees
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fee code for further searches = 002
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The full search fee (100%) is applicable
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even where SFEE payable on entry into EP phase for EPCTbis was reduced (e.g.
ISA=SE, US, etc.)
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Search fee amount for applications
– with date of filing as from 01.07.2005 = EUR 1.285,– with date of filing before 01.07.2005 = EUR 875,-
•
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fee code for additional copies of cited documents = 055
amount = EUR 40,-
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Payment of further search fees
 No further search fees received:
• Final supplementary search report (= partial search report) or
• continuation of the examination proceedings
 All further search fees duly received:
• Final supplementary search report for all inventions or
• communication from Examining Division with annex of the
search results
 Part of further search fees are duly received:
• Final supplementary search report for the inventions indicated
or
• communication from Examining Division with annex of the
search results for the inventions indicated
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Payment of further search fees
DECA (automatic debiting) cases:
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No reply
• all further search fees will be debited automatically
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Reply timely received
 All further searches are requested
• all further search fees will be debited automatically
 Part of further searches are requested
• the indicated number of further search fees will be debited
automatically
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The examiner will establish the final search report/ the next
communication with annexed search results on the invention(s)
indicated after payment confirmation is received
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Further search fees paid late
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Search fees paid outside the time limit:
– Any further search fee(s) paid will be refunded
– Time limit not eligible for further processing
− Examiner will establish the final search report without performing further
searches ( = partial search report) or
− Examination procedure will continue without performing further
searches
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Rule 164(5) EPC - Refunds
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In case of a doublure, a further search may give rise to a refund of a
search fee
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If the Examining Division finds, upon request, that the communication
under Rule 164(1)(b) or (2)(a) EPC was not justified, any further
search fees paid are refunded
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In the procedure under Rule 164(2) EPC the Examining Division may
deal with this issue in the communication under Rule 164(2)(b) EPC,
which is accompanied by the search results.
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Unitary Patent
future procedure
Regulation (EU) 1257/2012 Enhanced cooperation
Regulation (EU) 1260/2012 Translation arrangements
OJ EPO 2/2013, p.111 - 142
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UNIP in a nutshell
• Unitary Patent Protection (EU) – Post grant process  Unitary
patent will be a European Patent granted by the EPO under the
provisions of the EPC
• Implementation Rules adopted by the Select Committee (Dec. 2014)
• EPO requested by EU to administer the Unitary Patent Procedure
• Unified Patent Court (UPC) will rule on Unitary Patents
• UNIP Procedure to become effective 3 months after the first 13
states have ratified, amongst them the 3 big ones Germany, France
and UK
European Patent Office
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Regulations on Unitary Patent protection
• The UPC Agreement was signed on 19 February 2013 by 25 EU
member states (MS) participating in the Enhanced Cooperation but
not by ES and PL, but by IT.
• It will enter into force after the deposit of the 13th Instrument of
Ratification or Accession, including FR, DE and UK.
• So far, six MS have deposited their Instruments of Ratification =
AT: 7 August 2013, FR: 14 March 2014, SE: 5 June 2014, BE: 6
June 2014, DK: 20 June 2014, MT: 9 December 2014.
• Several MS have already indicated their intention to ratify in 2015.
• The EPO shall be technically ready to receive the first requests by
Q1 2016.
European Patent Office
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The Unitary patent: concept
• Unitary patent is a "European patent with unitary effect"
• The Unitary patent has Unitary character with unitary effect for
the territory of the 25 participating Member States
• A European patent will benefit from Unitary effect on request of
the proprietor(s)
• Single EPC procedure for classic European patents and
European patents with “Unitary protection“
Application and Examination procedure will
remain unchanged
Unitary Patent
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Additional tasks for the EPO
Centralised post-grant administration by EPO:
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Requests for Unitary effect
Register for Unitary patent protection
Receipt/registering statements on licences of rights
Collecting/re-distributing post Grant renewal fees
Receipt and publication of translations during transitional period
Administration of compensation scheme for translation costs
Implementing rules
New and integrated IT systems
The Unitary patent: concept
• The Unitary patent will co-exist with national patents and with
classical European patents
• Various combinations of classical European patent and
European patent with a Unitary protection:
– a Unitary patent for the 25 participating Member States (EU)
possibly together with
– a classical European patent taking effect in one or more
EPC Contracting States, such as for instance ES, IT, CH,
TK, NO
• No double protection
Registration of Unitary effect
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Patent proprietor has to file the request for Unitary patent protection with the
EPO:
– in writing,
– in the language of proceedings,
– no later than one month after the mention of the grant is published in the
European Patent Bulletin
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Unitary effect can only be requested for European patents which were
granted:
– with the same set of claims
– in respect of all the participating member states
– translations only have to be filed during a transitional period of 10 years
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non-observance of time limit and/or correction of deficiencies:
– legal remedies, such as re-establishment of rights available
Unitary Patent Translation
During a transitional period of 10 years:
• Where the language of proceedings at the European Patent Office
is French or German, the patent proprietor will have to provide a
translation of the European patent into English
• Where the language of proceedings at the EPO is English, the
patent proprietor will have to provide a translation of the European
patent into any official language of the European Union
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Unitary Patent: Fees, lapse
Fees:
• the request is free of charge
• renewal fees to be paid to the EPO (amounts, fee codes tba)
Lapse:
• 20 years after the date of filing of the European patent application
• renewal fee (and, if applicable, additional fee are not paid in due
time
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Thank you for your attention!