Notice relating to filing by reference

The EPO issued a Notice on the website relating to the filing of a certified copy when an application is filed by reference.

Filing by reference is allowed under Rule 40(1), but the applicant is required to file a certified copy of the previous application under Rule 40(3). If such a copy is not filed the “application” is not accorded a filing date, see Rule 40(1). Further processing under Article 121(1) is not available, however the applicant may request re-establishment under Article 122(1). If no filing date is accorded the application shall not be dealt with as a European Patent Application, Article 90(2). According to Rule 40(3) last sentence, R53(2), relating to the filing of a priority document, applies mutatis mutandis.

The notice concerns the situation where the EPO already has a copy of the earlier application in it’s files. Filing of a certified copy is not required if the previous application is:

(a) a European patent application,
(b) an international application filed with the European Patent Office as receiving Office under the Patent Cooperation Treaty (PCT),
(c) a Japanese patent or utility model application,
(d) a Korean patent or utility model application,
(e) a United States provisional or non-provisional patent application.

See the decision in OJ 2009, 236 copied in the OJ 2009 Summary.

Please note that the decision in the above mentioned OJ reference replaces the decision dated 12 July 2007 on the filing of priority documents (Special edition No. 3, OJ EPO 2007, B.1). If necessary update your reference books !

So, what’s the lesson here? Well, failure to file a priority document will not have any effect on a later application other than loss of the priority right. Failure to file the “reference” application will result in that the later application will not be treated as a European Patent Application. As a filing date was not accorded it is not possible to file a new application and claim priority from this "later application". (I hope this is not too confusing)

Official Journal #8 and #9

In view of my holidays probably one of the shortests posts on this Blog:

The Official Journal Summary 2009 has been updated and is available for download.
Click here.

Official Journal #7, 2009

In this OJ a publication of Board of Appeal decision T 307/03 relating to the subject of double patenting.

Headnote:

I. The principle of prohibition of double patenting, namely that the inventor (or his successor in title) has a right to the grant of one and only one patent from the European Patent Office for a particular invention as defined in a particular claim is applicable under the EPC, and can be deduced from the provision of Article 60 EPC stating "The right to a European patent shall belong to the inventor or his successor in title" (see point 2.1).

II. Decision T 587/98 (OJ EPO 2000, 497) to the effect (see its point 3.6) that there is no basis in the EPC prohibiting "conflicting claims" not followed (see point 2.7).

III. A double patenting objection can be raised also where the subject-matter of the granted claim is encompassed by the subject-matter of the claim later put forward, that is where the applicant is seeking to re-patent the subject-matter of the already granted patent claim, and in
addition to obtain patent protection for other subject-matter not claimed in the already granted patent. In particular, where the subject matter which would be double patented is the preferred way of carrying out the invention both of the granted patent and of the pending application
under consideration, the extent of double patenting cannot be ignored as de minimis. To avoid the objection of double patenting the claims of the pending application should be confined to the other subject-matter that is not already patented, to allow the examination procedure to focus on whether a claim to this other subject-matter meets the requirements of the EPC (see points 5.2 to 5.4).

The Board of Appeal found a basis for this decision (which is not in line with T 587/98) in Article 60. This in turn has created an interesting discussion earlier this year on (among others) the IPKat Blog, see here. In particular, see the comment by Derk Visser (Author of "The Annotated EPC").


OJ 2009, 434

The EPO will in Opposition Proceedings no longer automatically transmit copies of documents specified as patent documents. If oral proceedings are to take place,parties are advised to check the electronic file via the Register Plus online service in advance of the hearing to ensure they are in possession of all relevant documents.

(Not so very relevant for the EQE probably)


Not in OJ #7, 2009 but published on the website :

The German Patent and Trademark Office will be closed on the following days (in addition to what has been published in OJ 2009, 72)

28 December 2009
29 December 2009
30 december 2009

Under Rule 134(1) EPC, periods expiring on a day on which at least one of the filing offices of the EPO is not open for receipt of documents are extended to the first day thereafter on which all the filing offices are open for receipt of documents.

Under Rule 134(3) EPC, the provisions of Rule 134(1) EPC apply mutatis mutandis where acts are performed with the central industrial property office or other competent authority of a contracting state.


All the above will be copied to the OJ 2009 Summary and published soon on this website.

Official Journal #6, 2009

Not a lot of new EQE-relevant material in this Official Journal. In summary:

Accession of San marino to the EPC (already reported here).
Accession of Lithuania to the London Agreement (already reported here).

OJ 2009, 400
List of holidays observed by EPO filing offices and the national patent authorities in 2009

The Institute for Industrial Property (INPI) in France has informed us that this year, in addition to the list of holidays published in OJ EPO 2009, 71, it will further be closed on the following days:
Friday, 22 May 2009
Monday, 13 July 2009

Under Rule 134(1) EPC, periods expiring on a day on which at least one of the filing offices of the EPO is not open for receipt of documents are extended to the first day thereafter on which all the filing offices are open for receipt of documents. Under Rule 134(3) EPC, the provisions of Rule 134(1) EPC apply mutatis mutandis where acts are performed with the
central industrial property office or other competent authority of a contracting state.


The OJ 2009 Summary will be updated and published in the download are.

OJ 2009 #5

The Official Journal #5 is available for download from the EPO website.

The OJ 2009 Summary was updated with the items which (tmho) may be relevant for the EQE.

In short, the following can be found in this Official Journal:

• The EQE 2010 will be held from 2 to 4 March 2010. Complete applications must be received by the EPO no later than 17 July 2009. Candidates who sat the 2009 European qualifying examination and handed in at least one answer paper may benefit from an extended closing date: their complete application must be received by the EPO no later than 18 September 2009.
• G2/06 is published, see also the G summary
• An overview of the amendments to the Guidelines (not in the OJ summary)
• Decision to amend the Implementing Regulations R. 36(1), (2), R. 57(a) and R. 135(2). Decision enters into force April 1, 2010
• Decision to Amend the Implementing Regulations R. 63, R. 64(1), R. 69, R. 135(2), R. 137, R. 161. New Rules R. 62a and R. 70(a) are to be added. Decision enters into force April 1, 2010

Happy reading !

Lithuania accedes to the London Agreement

On 22 January 2009, the Republic of Lithuania deposited its instrument of accession to the London Agreement, see OJ EPO 2001, 549. The Agreement entered into force for Lithuania as 15th contracting state on 1 May 2009.

Lithuania does not require proprietors of European patents to supply a translation of the patent specification, irrespective of the language in which the Office granted the patent. However, a translation of the claims into Lithuanian is required.

Questions with respect to the London Agreement may pop up in the DII exam and may be worth a few marks. Read more on the London Agreement here.

This message will be copied to the Official Journal 2009 summary, which can be downloaded here.

OJ 2009 #4

J8/07: Change in language of proceedings ; referral to EBoA

An applicant filed a PCT application in French at the EPO as receiving office. Upon entry in the regional phase before the EPO applicant files an English translation of the PCT application and requests the language of proceedings before the EPO to be changed into English. The request was refused and applicant filed an appeal basically arguing that there is no legal provision in the EPC that does not allow a change in language of proceedings for PCT applications filed in a first official EPO language (in this case French) and later on translated into a second official language (in this case English). The Legal Board of Appeal referred the case to the Enlarged Board of Appeal with the following questions:

The following questions are referred to the Enlarged Board of Appeal:

1. If an international patent application has been filed and published under the Patent Cooperation Treaty (PCT) in an official language of the European Patent Office (EPO), can the applicant, on entry into the regional phase before the EPO, file a translation of the application into another EPO official language which then becomes the language of all subsequent proceedings before the EPO?

2. If the answer to that question is no, can EPO departments use, in written proceedings on a European patent application (or an international application in the regional phase), an EPO official language other than the language of proceedings used for the application?

3. If the answer to question 2 is yes, what criteria must be applied to determine the official language to be used? In particular, must EPO departments agree to any such request from a party or parties?

This referral has been assigned XXXX

OJ 2009, 236 : Copy of priority application

Article 1: Inclusion of a copy of the previous application in the file of a European patent application The European Patent Office shall include free of charge in the file of a European patent application a copy of the previous application from which priority is claimed if the previous application is:

(a) a European patent application,

(b) an international application filed with the European Patent Office as receiving Office under the Patent Cooperation Treaty (PCT),

(c) a Japanese patent or utility model application,

(d) a Korean patent or utility model application,

(e) a United States provisional or non-provisional patent application.

This decision shall enter into force on 1 April 2009 and replaces the decision dated 12 July 2007 on the filing of priority documents (Special edition No. 3, OJ EPO 2007, B.1).

The above text is included in the OJ 2009 Summary available from the download area.