Abstract
The alignment of the European Patent Convention (EPC) with the filing date requirements of the Patent Law Treaty has resulted in a complex system of procedural requirements, placing a burden on the European Patent Office (EPO) and complicating the work of patent attorneys. In practice, this procedural framework has little effect because applicants only rarely make use of the possibilities offered. This article proposes to simplify the filing date requirements in the Implementing Regulations of the EPC, such as by adding the compulsory presence of at least one claim to the requirements for the accordance of a filing date.
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Notes
Diplomatic Conference for the revision of the EPC. See http://www.epo.org/law-practice/legal-texts/archive/documentation/diplomatic-conference.html (accessed 27 December 2012)
Conference Proceedings of the Conference of the Contracting States to Revise the 1973 EPC (Munich, November 2000). See http://documents.epo.org/projects/babylon/eponet.nsf/0/A3D02EEEBEA84306C12572AE00500CDC/$File/conference_proceedings_en.pdf (accessed 27 December 2012)
The part of the “Guidelines for Examination in the EPO” relating to filing and examination on filing has increased from 7 to 16 pages.
Revision of an article of the PCT requires a conference of the contracting states (Art. 60(1) PCT). By-laws require the WIPO to pay for all the delegates at such a conference, making it prohibitively expensive.
“Guidelines for Examination in the EPO,” Part A, Ch. II, Sec. 4.1 (June 2012 ed.).
“Guidelines for Examination in the EPO,” Part B, Ch. III, Sec. 3.6.
“Guidelines for Examination in the EPO,” Part A, Ch. III, Sec. 15 and Part H, Ch. IV, Sec. 2.3.3.
“Guidelines for Examination in the EPO,” Part B, Ch. XI, Sec. 2.2.
The cooperation of the EPO by making statistical data available is gratefully acknowledged.
The omnibus claim could be included as a default in the Request-for-Grant form (EPO Form 1001) if the other application documents do not contain a claim.
An erroneous reference to the previous application cannot be corrected, as it would imply a replacement of the entire description.
Mulder (2011), p. 173–195.
This would support the new IT Roadmap programme of the EPO, which aims at 100% two-way electronic communication between the EPO and the parties. See http://www.epo.org/applying/online-services/improving/legal.html (accessed 27 December 2012)
In the period from December 2007 (entry into force of the EPC 2000) to April 2010, European patent applications were filed in the following “other” languages: Japanese: 313; Chinese: 69; Other: 10; and Korean: 6.
“Guidelines for Examination in the EPO,” Part A, Ch. II, Sec. 4.1.4 and Ch. III, Sec. 14.
“Guidelines for Examination in the EPO,” Part A, Ch. III, Sec. 14: “Failure to file the translation on time in response to the invitation under Rule 58 results in the application being deemed to be withdrawn according to Art. 14(2). The EPO will then notify the applicant of this loss of rights according to Rule 112(1).”
It is noted that even the Explanatory Notes of the EPO to the Implementing Regulations regarded the translation requirement in Rule 40(3) EPC to be a lex specialis, unrelated to Art. 14(2) EPC, with refusal under Art. 90(5) EPC as a sanction. See document CA/PL 17/06 (Patent Law Committee) of August 2006. See also “Revision of the European Patent Convention (EPC 2000). Synoptic presentation EPC 1973/2000 – Part II: The Implementing Regulations.” 2007 EPO OJ, Special Edition No. 5, Comment in relation to Rule 57 EPC.
In 2008 there were approximately 30 invitations and in 2009 approximately 40 invitations pursuant to Rule 55 EPC; the majority related to an invitation to file a missing certified copy of the previously filed application.
“Guidelines for Examination in the EPO,” Part A, Ch. II, Sec. 4.1.5.
Cf. Art. 51(3) EPC in relation to the legal consequences of non-payment of a fee.
Mulder and Visser (2010a), p. 126–129.
If the applicant does not reply to this invitation in time, all references to the missing items are deemed to be deleted (Rule 56(4)(a) EPC).
The last sentence of Rule 56(1) EPC stipulates that the applicant may not invoke the omission of a communication from the EPO under Rule 56(1) EPC.
If re-dating is undesirable, e.g., in view of priority, the applicant can retract the effect of the re-dating by withdrawing the missing item(s) within 1 month of the communication of Rule 56(2) EPC, in which case the re-dating is deemed not to have occurred (Rule 56(6) EPC).
Note that the application of Rule 56 EPC is not limited to the filing stage of a European patent application. For example, when the receiving section has decided not to re-date the application under Rule 56(2) or (5) EPC, but the search examiner is of the opinion that the subsequently filed missing parts are not “completely contained” in the priority document and/or the requirements of Rule 56(3) EPC are not fulfilled, the search should also take into account prior art which might become relevant for assessing novelty and inventive step of the subject-matter claimed if the application were re-dated pursuant to Rule 56(2) or (5) EPC. If the examining division concludes that the missing elements are not “completely contained” in the priority document, contrary to the original finding of the receiving section, it will communicate this to the applicant and notify him of the new date of filing. The examining division must also inform the applicant that, according to Rule 56(6) EPC, the missing drawings or parts of the description can still be withdrawn within 1 month of the communication from the examining division. However, the passage in the “Guidelines for Examination in the EPO,” Part C, Ch. III, Sec. 1, relating to this situation specifies the wrong time period: 2 months instead of 1 month. This should be corrected.
“Guidelines for Examination in the EPO,” Part A, Ch. II, Sec. 5.4, summarizes the requirements that have to be met in order to allow the filing of missing parts of the description or missing drawings without the loss of the initially accorded date of filing.
This is a consequence of the fact that the PCT also requires the presence of at least one claim to accord the international filing date; it has incorporated the filing of a missing part of the claims into the Regulations implementing the PCT (see PCT Rule 20.5).
While PCT Member States felt that it was not possible to include “proper” reference filing (as under Art. 5(7) PLT) because Art. 11(1) PCT requires the existence, on the date of receipt of the application, of “a part which on the face of it appears to be a description” and “a part which on the face of it appears to be a claim or claims,” it was nevertheless felt that something needed to be done to help applicants who, by mistake (and not “on purpose,” as in the case of proper reference filings under Art. 5(7) PLT), forgot to include the description or the entire set of claims. To do so, the Regulations under the PCT were amended (PCT Rules 4.18 and 20.6) to allow for the incorporation by reference of missing elements, such as the entire description or the entire set of claims, where those elements were contained in an earlier application the priority of which is claimed in the international application. This “legal fiction” (“the claims were there on the date of receipt of the international application, since ‘ex tunc’ incorporated by reference as of that date”) allowed the PCT to overcome the hurdle in Art. 11 PCT. See Mulder (2011), p. 173–195.
“Guidelines for Examination in the EPO,” Part A, Ch. II, Sec. 5.4.1.
Article 5(6)(b) PLT requires that, upon the incorporation of a missing part of the description or a missing drawing into an already filed application based on a priority application, the priority of this earlier application must have been claimed on the initial filing date.
Mulder and Visser (2010b), p. 44–48.
References
Mulder C, Visser D (2010a) Filing date requirements under the EPC—filing by reference to a previously filed application. epi Information 126–129. See http://www.patentepi.com/patentepi/en/Information/archived_issues.php [accessed 27 December 2012].
Mulder C, Visser D (2010b) Filing date requirements under the EPO—an option to extend subject-matter? epi Information 44–48. See http://www.patentepi.com/patentepi/en/Information/archived_issues.php [accessed 27 December 2012].
Mulder C (2011) Filing date requirements under the Patent Cooperation Treaty: Alignment with the Patent Law Treaty? WIPO Journal 2:173–195. See http://www.wipo.int/export/sites/www/about-wipo/en/wipo_journal/pdf/wipo_journal_2_2.pdf [accessed 27 December 2012].
Mulder C. (2012a) Periods and Remedies Under the EPC: Compliance of the EPC with the PLT: Part I- Extension of Periods and Further Processing. European Intellectual Property Review 12–21.
Mulder C. (2012b) Periods and Remedies Under the EPC: Compliance of the EPC with the PLT: Part II Re-establishment of Rights. European Intellectual Property Review 86–93.
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Mulder, C., Visser, D. Proposals for Streamlining the Filing Date Requirements of the European Patent Convention. IIC 44, 220–230 (2013). https://doi.org/10.1007/s40319-012-0015-0
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DOI: https://doi.org/10.1007/s40319-012-0015-0