Common provisions EPC

Question 1

Who can file?

Answer 1

Anyone (Art 58 EPC)

Question 2

Language of filing

Answer 2

Any language (Art 14(2) EPC).

Question 3

General languages

Answer 3

Art 14 EPC, R3EPC

Question 4

Confirmation copy if filed by fax

Answer 4

Not required (only in case of inferior quality, if EPO sends invitation) (OJ 2019, Art.18, Art.6 and 7)

Question 5

Filing date

Answer 5

Claims are not required (R40(1) EPC).

Question 6

Remedies

Answer 6

Depending on situation:
Further processing (Art 121EPC) or
Re-establishment (Art 122EPC).

R139EPC priority (5wk before pub)

Question 7

Filing by reference to previous application

Answer 7

Possible – R40(1)(c)EPC and R40(2)EPC

Question 8

Renewal fees

Answer 8

Yes, at first for the 3rd year (Art 86 EPC).

Question 9

Representative need for filing

Answer 9

No. Art 133EPC

Question 10

Missing part vs missing elements

Answer 10

Only missing parts are allowed (R.56(1) EPC).

Claims are never missing parts under the EPC. Can be erroneously filed R56a.

Question 11

Prior art

Answer 11

Everything made available to the public before filing (Art.54(2) EPC) (written or oral description, use, or any other way)

Question 12

Technical preparations for publication

Answer 12

End of the day that comes 5 weeks before the expiry of the 18th month (from the earliest priority) (OJ 2007, SE3, D.1).

Question 13

Further search fee (non-unity)

Answer 13

Further search fee payable within 2 months (R.64(1) EPC) (Only payable if applicant wants the other invention(s) to be covered by a search.)

Question 14

Date of notification

Answer 14

R126(2), R127(2) EPC - date on doc

Question 15

Amount applicable in case of fee increase

Answer 15

Due date is irrelevant; the date of payment is set as the relevant date for determining the amount of the fees (GL A-X 5.1.2) –> If due date is 15 March, and there is a fee increase on 1 April, and the fee is only paid 10 April, the new, increased fee is payable.

Question 16

Third party observations

Answer 16

Although lack of novelty and/or inventive step are the most common, third-party observations may also be directed to clarity (Art. 84), sufficiency of disclosure (Art. 83), patentability (Art. 52, 53 or 57) and unallowable amendments (Art. 76, 123). (GL E-VI 3.)

Question 17

Fee reductions

Answer 17

Online filing – Rfees Art2

Search fee refund – Rfees, Art9

Divisional fees (from original…) Rfees Art2

Filing and exam – R6(3) EPC

Question 18

Notification by postal service

Answer 18

R126EPC
Date of notification or any day in excess of 7 post notification

Question 19

Notification by electronic comms

Answer 19

Date of notification or any day in excess of 7 post notification R127EPC

Question 20

Calculation of time periods

Answer 20

Days, week, month, years
R131 EPC

Question 21

Extension of periods

Answer 21

Next working date and closed days R134 EPC

Question 22

Authentic text

Answer 22

Art70(1) EPC

Question 23

Priority

Answer 23

Art87EPC, R52 EPC, R139 EPC

Question 24

Entitlement

Answer 24

Art 61 EPC

Protocol on recognition

Question 25

Transfers/assignments

Answer 25

Arts 71, 72 EPC and R22, 85 EPC

Question 26

Divisional

Answer 26

Art 76 EPC and R36 EPC

Question 27

Criminal acts

Answer 27

R105EPC

Question 28

Debit order

Answer 28

AAD – through OJ and guidelines

AAD - OJ 2019 - Supp publication 4
GfE - A-X-4.3
OJ2022 SP3 —- Visser