Changes in the European patent legislation since 1st April, 2009.
In today’s date the European Patent Convention (ЕPC) includes thirty five countries as its members, and three so-called «distribution countries», covering thereby territory of all Europe, and even beyond its geographical borders. Thus, as experience shows, to Russian applicants to remind once again that reception of the European patent yet does not mean automatic reception of patent protection in territory of all countries EPC. Desirable protection will be sewn up or is received only in those countries, in which within three months after the publication of the decision on delivery of the European patent so-called validation will be spent, representing filing materials of the application to separate national patent departments in the countries, in which protection (and also if it is necessary, their translation and appointment of national representatives) should be received. About what requirements show national patent departments to directed materials of the application, in more details was mentioned in my article «London agreement: European patent became cheaper» in «Patents and licensees» № 3 for 2008. Page 39-43. It’s necessary to notice in brief, that only in case of filing of the European application in English, validation after patent delivery is spent automatically (without granting of translation materials of the application, and appointment of local representatives) to Great Britain, Germany, France, Switzerland, Liechtenstein, Luxembourg and Monaco. This simplified possibility of validation in the European patent became accessible exclusively grateful to the conclusion of the London agreement.
Changes, about which is important to know while translating РСТ - applications into a regional phase in Europe.
1.) Procedure of filing the petition for manufacturing continuation under the application
One of the most important changes which have come into enforce already since 13th December, 2007, wider use of such tool, as filing of the petition for manufacturing continuation under the application for the European patent in case of admission of one of the target dates. According to ЕPC 2000, the petition for manufacturing continuation can be submitted irrespective of, whether the passed term for administrative (i.e., ЕPD), or legislatively (i.e., ЕPC or Instructions for EPC) is established. Thus, unlike the situation till 13th December, 2007 it is the petition now can be applied, including to the terms missed while translating РСТ - applications into a regional phase in Europe.
As it is known that, according to the Rule of 159 (1) Instructions to ЕPC for translating РСТ - applications into a regional phase in Europe, the applicant within thirty one months from the date of the earliest priority should (including) present EPD translation of the international application (in case of need) in one of ЕPC languages (English, German, French) and to pay duties for filing the application, for instructions of the states, for search carrying out (if an additional report on the European search has to be made), and also to pay the annual duty for the third year of action of the application (if at the moment of translation into a regional phase is subject to payment).
In case of a default by the applicant at least one of the above-stated requirements, ЕPC sent to the applicant (if a representative is not yet appointed) the report about right loss which, underlined on imperfect in time of action and also on possibility of filing the petition for manufacturing continuation under the application.
The petition for manufacturing continuation under the application should be directed no later than two months after sending ЕPD the report on right loss, thus within the same two months it is necessary to makeup the delayed action and to pay duties) for manufacturing continuation under the application. The sum of duty ranges upto 210 euros, and in case of missed term in payment of duties to ЕPD, an addition of 50 % of non-paid duties over the provided are to be paid.
2) Absence in unity of the invention
Unlike from former procedure of advices on absence in unity of the invention with simultaneous instructions on possibility of surcharge duties on carrying out of search in other groups of inventions during the expanded European search, possibility of surcharge for further duties on search carrying out according to the Rule which came into enforce on 13th December, 2007 of 164 Instructions to ЕPC is not provided now.
Now, in case of establishment by the search department on absence of unity of the invention, sends the report on the expanded European search only concerning the first of the revealed groups of inventions. Thus, other groups of inventions cannot be considered within the limits of that application any more neither at a stage of carrying out of search, nor during carrying out substantive examination. If the applicant wishes to continue clerical duties on at least one of not considered during carrying out of the European expanded search of groups of inventions, unique possibility for him remains in filing of the designated application for this group of inventions.
Therefore, if in the result of the search spent at the international stage, there were instructions on absence of unity of the declared invention, it is necessary to recognize that ЕPD will pay attention to this, and will limit the carrying out of expanded European search only concerning the group of inventions mentioned first. In such situation insistently it is recommended to the applicant while transition into РСТ - applications for the European phase in due time to bring respective alterations in the invention formula.
3) Modification in application materials
After translating РСТ - applications into a regional phase in Europe, ЕPD and in an obligatory order reports the applicant that during non-prolonged term in one month after date of this report the applicant can make changes in application materials. This report of ЕPD is combined with instructions on necessity of payment of the duty for points of the formula of the invention, since the sixteenth (for more in detail see below), necessity of which payment is based on edition of the formula valid by the end of the above-stated monthly term. Thus, the applicant is given one more possibility (besides the right of applicant changes in materials of the application at the international stage) to change the formula of the invention with the account of, that within the limits of the application, the group of inventions will be considered only if mentioned in the formula of the invention of the first, and also to optimize the quantity of points of the formula of the invention in view of rather high duties, starting from the sixteenth point.
In case of partial or full non-payment of the aforementioned duty on points of the formula of the invention, this non-payment is considered as refusal of corresponding points of the formula. However this fiction of refusal can be overcome by filing of petition for manufacturing continuation under the application (see above) and payments of corresponding duties with fifty percentage extra charge.
4) Changes of duties since 1st April, 2009.
For the European applications submitted directly in Department or for РСТ – applications, translated into a regional phase in Europe since 1st April, 2009 changes are entered in patent fees, concerning in particular: two-level structure of payment of duties on points of the formula of the invention; lump-sum duty on instructions of the states; so-called «additional duty», as a part of the duty on filing for applications having more than thirty five pages; and also the lump-sum duty on delivery of the patent and the duty for the publication.
In particular, concerning the duty on points of the formula of the invention, since the sixteenth, the duty has remained @ 200 euros for each point from the sixteenth to fiftieth (that already was valid since 1st April, 2008) - However, in comparison with the duty operating earlier @ 200 euros for each point of the formula of the invention, since fifty first, since 1st April, 2009 changes are entered, according to which the duty on each such point of the formula of the invention should be paid already @ 500 euros.
Also, since 1st April, 2009, the lump-sum system of payment is entered for instructions of the states. The system of payment existing upto this dates provided payment of the duty for instructions of the states separately (85 euros) for each state upto seven. On payment of duty for instructions of seven states (595 euros) all states EPC are specified admitted. Unlike it, in the new system of payment of the uniform duty @ 500 euros all states EPC are specified considered. At the desire action of the European patent can be extended to three so-called «distribution countries» (Albania, Serbia. Bosnia and Herzegovina), not being members of ЕPC, thus the duty consist of 102 euros for each of these countries, which should be paid simultaneously with the duty on instructions of member countries of EPC. In case of non-payment of the uniform duty on instructions of the states the application will be recognized by withdrawn.
Further, according to the structure of duties entered since 1st April, 2009, duty on application consists of so-called «basic duty» and «additional duty», which represents the duty in 12 euros for each page of the application, starting from thirty sixth.
For РСТ - applications passing into a regional phase in Europe since 1st April, 2009, an additional duty should be paid within thirty one months from the date of the earliest priority (or application dates). For calculation of the additional duty are taken into consideration materials of РСТ - applications in that kind, as they have been published, including changes under article 19 РСТ and including in addition page for the abstract. Pages of last edition of any changed materials of the application (such as changes under article 34 РСТ, changes while translating into a regional phase) are also considered at calculation of pages for the additional duty if they have been submitted to the Department before the expiration of thirty one months, accordingly, till the moment of payment of the additional duty.
In case of non-payment of the additional duty in time the application for the European patent admits to be withdrawn. However this lack can be corrected by filing the petition for manufacturing continuation under the application (see above), and payments of corresponding duties with fifty percentage extra charge.
Because the duty on payment over thirty five pages of the application since 1st April, 2009 should be paid not spontaneously/directly ahead of patent delivery (as it was before the mentioned date), and as the additional duty together with the duty on application, for applications submitted since 1st April, 2009, before patent delivery it will be necessary to pay only lump-sum duty on delivery and the patent publication (790 euros).
If you have any queries in connection with patenting of inventions or filing of trade marks in Europe, we shall be glad to answer on them to you, and also to represent your interests directly ahead of European Patent Departments.
Sincerely yours,
Mr. Alexander Leonov,
Director General,
Patent attorney of the Russian Federation, Eurasian patent attorney,
(Email: Leonov@ipprolaw.com)
In & on behalf
Mr. Samir Rahman, International Department Manager +7(495)232-39-68
(Email: Samir@ipprolaw.com)
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